Trademark Law | Expert Legal Commentary
December 31, 2009
Wham-O v. Manley Toys: No Fed. Jurisdiction to Declare a Mark Nongeneric
Wham-O, Inc. v. Manley Toys, Ltd.
By
Jeffrey J. Zuber and Laura D. Castner of Zuber & Taillieu LLP
A California district court dismissed a declaratory judgment action brought by a trademark owner, seeking to skip a TTAB proceeding and get the Court to declare that its trademarks had not become generic and thus subject to cancellation.The Court held that in the absence of an actual infringement claim, there was neither jurisdiction nor a “justiciable case or controversy” and therefore the Court had no authority to decide the declaratory judgment action. The court's decision, Wham-O, Inc. v. Manley Toys, Ltd., No. 2:08-cv-07830-CBM (C.D. Cal. Aug. 13, 2009), relied on the Supreme Court’s decision in MedImmune Inc. v. Genentech Inc., 549 U.S. 118 (2007), which lowered the threshold for proving a case or controversy, indicating that perhaps the MedImmune standard is quite not as liberal as some practitioners may have believed.
To continue reading this article, subscribe now
It's FREE and only takes seconds
About the Authors
Jeffrey J. Zuber is a Partner of Zuber & Taillieu LLP, focusing on intellectual property litigation and arbitration.
Laura D. Castner is a Counsel of Zuber & Taillieu LLP, focusing on intellectual property litigation and arbitration.
Image Credit: ©iStockphoto.com/cerae
View a PDF of the judicial opinion