Surefoot LC v. Sure Foot Corp

In this case, two companies with similar names find themselves in the midst of a trademark dispute. Over the course of several years, Sure Foot Corp. has repeatedly accused Surefoot LC, of infringing on its trademark, occasionally threatened litigation if Surefoot LC failed to change its name, and filed five administrative petitions opposing Surefoot LC’s attempts to obtain trademark registrations. Faced with uncertainty about its right to use the “Surefoot” mark, Surefoot LC filed a declaratory judgment suit against Sure Foot Corp., asking the district court to determine once and for all whether it was infringing on Sure Foot Corp.’s rights. Applying our then-governing precedent, the district court dismissed the suit for failing to present a justiciable case or controversy under Article III because it found Surefoot LC had no reasonable apprehension of an imminent lawsuit from Sure Foot Corp. After the district court issued its judgment, however, the Supreme Court, in MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (2007), expressly rejected the “reasonable apprehension of imminent suit” test on the ground that it imposed an additional hurdle inconsistent with the Court’s Article III jurisprudence. This appeal calls upon us to assess and apply MedImmune’s teachings for the first time. In doing so, we conclude that a
triable case or controversy within the meaning of Article III exists; accordingly, we are obliged to reverse and remand this matter to the district court for further proceedings.

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