No One’s Immune to MedImmune

A couple of years ago, the Supreme Court handed down its MedImmune decision, changing the declaratory judgment landscape in the patent world. Now, a scum-sucking infringer can bring a declaratory judgment action against a patentee who has the temerity to think about patent enforcement. The trademark community, apparently unaffected, continued on as before. Well, no longer! The courts are now applying MedImmune to trademark cases.

In the most recent such case, Express Scripts Inc. v. Intel Corp., Express filed an “intent-to-use” application for registration of the mark INTELLACT. Since the application was based upon an “intent to use” the mark in the future, it was clear that Express had not yet begun use of the mark. Intel, concerned about possible infringement or dilution of the INTEL mark, wrote to Express, stating its concerns but noting that it preferred an amicable settlement which would not disrupt Express’ business. There was no threat of any legal action by Intel.

A week later, Express filed a declaratory judgment action, alleging that its mark was now in use and seeking a judgment that its INTELLACT mark did not infringe the Intel mark. Intel moved to dismiss the suit, arguing that it was unaware of any use of the Express mark and, hence, its letter could not be construed as threatening legal action. Without such a threat, there was no “controversy” between itself and Express and, as a result, Express lacked the requisite “standing” to bring a declaratory judgment action.

Wrong, said the Court! Because the INTELLACT mark was in use, Express was faced with the choice of abandoning the mark or continuing its use, which potentially violated Intel’s rights. Even though Intel was unaware of this use, its letter had created “an immediate and actual controversy,” creating standing for Express to sue. However, the Court went on, “[w]ere [Express] not currently using the mark, the Court might well agree with Intel that declaratory relief would not serve any purpose for [Express]."

THE LESSON TO BE LEARNED: Look before you leap; check ALL the facts before contacting a party with potentially adverse interests.