Suing First: Declaratory Judgment Actions in Trademark Disputes
By Casey Scott McKay ·
A cease-and-desist letter is not only a demand. It is an invitation to be sued in a forum the sender did not choose. This article explains declaratory judgment practice in trademark disputes - when a recipient may sue first, what the Supreme Court's decision in MedImmune did to the old reasonable-apprehension test, and why almost any letter that threatens litigation now creates a justiciable controversy. It covers the first-filed rule and the anticipatory-filing exception that swallows a great deal of it, the discretion district courts retain to decline a declaratory action even when jurisdiction exists, and the personal jurisdiction problem a declaratory plaintiff faces when the mark owner's only contact with the forum is the letter itself. It explains how a covenant not to sue can moot a case entirely, and how narrow a covenant has to be to fail. It closes with what all of this means for the party writing the letter, because the drafting choices that make a demand effective are often the same ones that hand the recipient a lawsuit.
IP and Technology > Trademarks | Article | Published 22 November 2025 - Updated 16 February 2026 | Casey Scott McKay - marksy.us
Summary. A cease-and-desist letter is not only a demand. It is an invitation to be sued in a forum the sender did not choose. This article explains declaratory judgment practice in trademark disputes — when a recipient may sue first, what the Supreme Court's decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) did to the old reasonable-apprehension test, and why almost any letter that threatens litigation now creates a justiciable controversy. It covers the first-filed rule and the anticipatory-filing exception that swallows a great deal of it, the discretion district courts retain to decline a declaratory action even when jurisdiction exists, and the personal jurisdiction problem a declaratory plaintiff faces when the mark owner's only contact with the forum is the letter itself. It explains how a covenant not to sue can moot a case entirely, and how narrow a covenant has to be to fail. It closes with what all of this means for the party writing the letter, because the drafting choices that make a demand effective are often the same ones that hand the recipient a lawsuit.
Keywords: declaratory judgment act · 28 usc 2201 · medimmune v genentech · actual controversy · all the circumstances test · reasonable apprehension of suit · already v nike · covenant not to sue · mootness · surefoot · first-filed rule · anticipatory filing · kerotest · wilton v seven falls · forum shopping · cease and desist letter risk · personal jurisdiction over mark owner · section 1119 cancellation · declaratory plaintiff fees
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