Trademark Practice Alert

Allegations of Likelihood of Confusion and Irreparable Damage in Cancellation Petition and statement made in settlement Sufficient to Establish Standing for Declaratory Judgment Action

A strongly  worded cancellation petition  couched in the language of trademark infringement, along with statements in settlement discussion requesting that the registrant cease use of a mark, were sufficient to establish a “real or reasonable apprehension” of an infringement suit sufficient to establish standing for a declaratory judgment action, even where there had been no stated  threat of litigation.  

The decision demonstrates the importance of careful drafting  and care in conversations with opposing counsel to avoid escalation of an office dispute to the federal courts.  Mauro Pet Care, LLC v. Natural Dog Acquisition, LLC, 2:20-cv-03698-RGK-kS (August 21, 2020, CDCA).

To learn more about the issues raised by this client bulletin, please contact Julia Anne Matheson at jmatheson@potomaclaw.com or Janet Satterthwaite at jsatterthwaite@potomaclaw.com.

This publication is distributed with the understanding that the author publisher and distributor of this publication and/or any linked publication are not rendering legal, accounting, or other professional advice or opinions on specific facts or matters and, accordingly, assume no liability whatsoever in connection with its use. Pursuant to applicable rules of professional conduct, portions of this publication may constitute Attorney Advertising.