Monday, January 9, 2012, 4:43 PM

When Is A DJ Action Appropriate For Trademark Infringement?

Many are familiar with a declaratory judgment action in the context of patent infringement.  The typical scenario involves demand letters from a patentee and the desire of another person or company to develop, market, and sell a product that is the subject of those letters.  This often results in a declaratory judgment or "DJ" action filed by the recipient of the letters seeking an order that the accused product does not infringe the asserted patent.  The action may also seek an order that the patent asserted is invalid and unenforceable.

The same scenario can unfold with respect to trademarks although the occurence of DJ actions involving trademarks appears to be less than with patents.  One reason for that may be that it is often easier to determine priority of use with respect to trademarks instead of complicated claim construction and infringement analyses involved with patents.  However, there are situations where the parties do not contest priority and that issue is not dispositive of the dispute.  The parties likely dispute whether there is a likelihood of confusion with respect to the relevant consuming public.  When that is the case, the party receiving demand letters may be well off to file a DJ action seeking to clear the air over whether they can continue to use a mark.

In a case filed January 4, 2012 in the Middle District of Georgia, Turner Furniture Holding Corp. ("TFH") filed a DJ action after receiving multiple demand letters from Turner Furniture Company of Tifton, Inc. ("TFCT") (Civil Action No. 7:12-cv-0004).  This case involves descendants of the original "Mr. Turner" both claiming rights to the Turner name in conjunction with furniture. TFH brought the DJ action after (it alleges) TFCT began issuing demand letters to TFH's clients and business contact and thus interfering with its business relationships.  If such situations arise, that might be the tipping point at which a threatened party begins to notice a real-world effect of the demands and a DJ action is approrpriate.  In the Turner Furniture case, the DJ complaint seeks a declaration that the plaintiff's rights are valid and enforceable while the defendant's rights are invalid and not enforceable.  The complaint also seeks a declaratory judgment that the plaintiff TFH's use of the Turner name does not infringe any of defendant's rights, to the extent they exist. 

Thus, when a company needs to "clear the air" on the use of its trademark, a DJ action may the right course of action.


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