Merit Healthcare Int'l v. Merit Medical Systems, 16-55290

Background

Merit Healthcare sued seeking a declaratory judgment that it could use MERIT and MERIT‑plus‑suffix trademarks without infringing Merit Medical’s marks; the district court dismissed for lack of an "actual controversy."
Merit Healthcare’s complaints identified various MERIT marks and USPTO rejections but did not specify which marks were used on which products, by which party, to which customers, or in which geographic channels.
The complaints acknowledged roughly 30 years of coexistence between the parties without apparent conflict and did not allege Merit Medical planned to change the status quo.
Merit Healthcare relied on USPTO refusals of some MERIT‑suffix applications and on correspondence from Merit Medical (May 2014 emails/letter) and certain discovery/Rule 26(f) statements as evidence of a justiciable controversy.
The district court and the Ninth Circuit held these allegations insufficient: similarity of marks alone, USPTO actions, and Merit Medical’s requests for information or reservation of rights did not create a reasonable, imminent threat of suit.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether an "actual controversy" exists under the Declaratory Judgment Act	Merit Healthcare: similarity of marks and USPTO refusals plus correspondence and discovery statements create reasonable apprehension of suit	Merit Medical: no concrete threat; merely informational correspondence, USPTO actions, and coexistence negate imminent controversy	No; complaint fails to allege a substantial, immediate controversy between adverse parties
Whether similarity of marks/goods alone can establish justiciable controversy	Merit: Similar marks and overlapping goods justify declaratory relief	Merit Medical: similarity alone insufficient without geographic/customer overlap or evidence of likely confusion	No; similarity without alleged overlap or real conflict is insufficient
Whether USPTO rejections create controversy between the private parties	Merit: USPTO refusals show a dispute implicating Merit Medical’s rights	Merit Medical: USPTO actions are agency decisions, not adversary acts by Merit Medical	No; USPTO actions do not establish an actual controversy with Merit Medical
Whether correspondence/discovery statements create reasonable apprehension of suit	Merit: Emails, letters, and declarations of counsel’s statements show Merit Medical threatened suit	Merit Medical: requests for information and reservation of rights are not threats; no explicit litigation threat tied to specific uses	No; the communications were not explicit or concrete threats sufficient to create jurisdiction

Key Cases Cited

MedImmune, Inc. v. Genentech, 549 U.S. 118 (2007) (actual‑controversy requirement for declaratory judgments demands substantial, immediate dispute)
Moss v. U.S. Secret Serv., 572 F.3d 962 (9th Cir. 2009) (reasonable‑apprehension analysis for declaratory relief)
Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) (likelihood of confusion factors and importance of geographic/trade overlap)
Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007) (explicit/implicit threat of litigation required to support declaratory jurisdiction)
Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542 (9th Cir. 1989) (apprehension must be caused by defendant’s actions)
Prasco LLC v. Medecis Pharm. Corp., 537 F.3d 1329 (Fed. Cir. 2008) (case or controversy must arise from defendant‑caused, real and immediate injury)
Northstar Fin. Advisors, Inc. v. Schwab Inv’rs, 779 F.3d 1036 (9th Cir. 2015) (treatment of new allegations in amended complaints when assessing jurisdiction)
Wilderness Society, Inc. v. Rey, 622 F.3d 1251 (9th Cir. 2010) (consideration of jurisdictional facts at the time of the original complaint)
SanDisk Corp. v. ST Microelectronics, Inc., 480 F.3d 1372 (Fed. Cir. 2007) (examples of explicit threats creating justiciable controversies)

AFFIRMED.