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When you spot someone infringing on your trademark, how long can you wait to attack it before you lose your ability to stop it?
What’s your trademark? Your business name and the names of your products and services might qualify.
While you can strengthen your trademark rights by registering your trademark with the federal or state government, you can enforce an unregistered trademark against an infringer.
An infringer is someone who starts using a confusingly similar trademark to promote the sale of the same product or service or a similar one.
There are some recent cases on this delay issue, and I’d like to say they provide concrete guidance on how long you can wait, but the reality is that you never know with certainty how long you have. Assume that time’s running out and that you need to act fast.
In the law, this concept is called “laches.” It means that, once you know of a trademark infringer, you need to act within a reasonable time to stop it.
There is no specific statute of limitations on trademark infringement claims. Instead, when a court considers an argument that a trademark plaintiff waited too long to act, it weighs two things: how long did the trademark owner wait after it knew (or should have known) of the infringement, and how badly was the alleged trademark infringer harmed by the delay?
The bigger the harm from delay, the shorter amount of delay a court will permit.
The primary idea is that, if the alleged infringer had been confronted right away, it might not have made investments in a bad trademark. Examples of such investments are business expansion, advertising expenditure or perhaps just achieving increased sales.
It’s pretty rare for laches to stop a trademark claim when the claim is made within six months of when the trademark owner learned of the problem. But there are rare cases where the court held that waiting even about three months to sue was too long because of the extent of prejudice the defendant suffered because of the delay.
Also, if you want a court to immediately stop the infringement pending a full trial of the case, you need to get to court right away. Waiting even a few weeks can take that option off the table.
At the other end of the spectrum, there’s a recent decision by the Fourth Circuit Court of Appeals (it covers Virginia) that held that a delay of as much as 20-30 years might not be too long where the defendant might not suffer any significant prejudice from being forced to stop using an infringing mark and where the plaintiff and defendant only sometimes operated in the same geographic market.
Then there’s a recent arbitration decision about a domain name. It concerned an effort by Victoria’s Secret to recover the domain name VictoriasSecrets.com.au (that’s an Australian domain name) that is being used by an Australian brothel.
The artitrator said this is a clear case of cybersquatting, but because Victoria’s Secret waited almost seven years to sue after initially sending a complaint letter to the brothel, it could not recover the domain name.
The moral is to be paranoid. Because you don’t know whether a court will say you waited too long to act, you should assume any delay might be fatal.
Have your lawyer contact the infringer immediately to try to get it to agree to stop. If the target won’t agree, you need to sue quickly after that.
And what if you just let it go? Your trademark rights begin to crumble.
Due to laches, at some point you lose your ability to stop that infringer. You’ll have to live with the consumer confusion and lost sales that will occur.
Also, when you allow (or must tolerate) such infringements, the power of your trademark shrinks. Others become legally entitled to mimic your trademark ever more closely. Your trademark, which is your brand, will stand out less to consumers.
Eventually, if you let things go far enough, you will lose your trademark entirely. A court might hold that your trademark has become just a generic name for the product or service (think Aspirin, which used to be a Bayer trademark). Or it might just say that you are deemed to have abandoned your trademark through neglect.
When it comes to your trademarks, with minor exceptions there essentially is no governmental army or police force to protect you. You alone are responsible for defending your trademark from weakening and loss. Like other kinds of attacks, the longer you wait to confront the trademark attacker, the lower your chance of success.
by John B. Farmer
Written on August 10, 2012
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