Several important decisions in trademark infringement actions have highlighted a significant lesson for any entity seeking to protect its trademarks: timing matters, and the failure to assert your mark or address unauthorized uses could lead to the relinquishment of all rights in that mark. The importance of confronting potential infringers on a timely basis is rooted in the consumer protection goals of trademark law. The general purpose of the law is to ensure that consumers are made aware of the source of particular goods and services. When a company fails to ensure the integrity of its brand, it may lose the rights associated with owning the trademark.

This legal justification is aptly demonstrated in the case of Thomas Kenneth Abraham d/b/a Paddle Tramps Manufacturing Co. v. Alphi Chi Omega (2013), where Greek organizations accused a paddle manufacturer of trademark infringement for using Greek letters and crests in its advertising materials. One of the doctrines employed by the court was laches, which is an equitable defense that provides that a plaintiff “unreasonably and inexcusably delayed” asserting a cause of action and that delay caused prejudice to the defendant. When this defense is applied, the court does not evaluate the merits of the action, as the plaintiff is barred from bringing the claim. In this case, the Greek organizations contacted the manufacturer in 1990 about a licensing agreement, and might have been aware of such use as far back as 1961 when the company began making paddles displaying the letters and crests of many fraternities. According to the court, the delay in pursuing an action for trademark infringement was excessive and unjustified.

Similarly, in the more recent case of Fitbug v. Fitbit, the plaintiff’s assertion of trademark infringement was barred by the application of the laches doctrine. Both plaintiff and defendant are manufacturers of electronic tracking devices, with Fitbit being the second company to launch its products in September, 2008. The court determined that September, 2008 was the date upon which Fitbug became aware of Fitbit’s activities, and thus the filing of a trademark lawsuit in 2013 was unreasonably delayed. While the court did not provide a decisive time limitation, it determined that 4.5 years was “presumptively untimely.”

Connors & Associates provides expert legal advice in the areas of patent, trademark and copyright law, and can provide thorough, experienced guidance through all stages of your intellectual property matter. Contact John Connors and his team of associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

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