Trademark and Laches: Enforcing Your Trademark #trademark #ip

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Blog posts cannot substitute for legal advice. If the topics discussed in this post are relevant to a real case you have, please consult an attorney.

If trademark holders don’t maintain control over their marks, the law dictates that they’ll lose them. This results in some pretty aggressive behavior by mark holders that is often unfairly criticized by the public. The public needs to understand that businesses often can’t afford to lose that investment.

A trademark or service mark is a right to exclude competitors from using a catch phrase, logo, or other brand identifier (or one that’s confusingly similar) in connection with the competitor’s goods or services. A mark’s distinctiveness is defined by how strongly that association between the mark and the goods or services is to the average consumer. The distinctiveness of a mark can be derived from its very nature (e.g., how catchy it is), but also from its frequent and consistent use. That is, having a constant reminder of the association . Obviously, if a competitor uses that mark (or one confusingly similar), the mark will lose its distinctiveness. Because the purpose of granting the mark is not to reward the mark holder, but rather to provide the general public with a means to tell one brand from another, a mark that has no distinctiveness is useless. Accordingly, it’s well-settled that doctrine of laches applies to marks (unlike copyright). Laches commands that an unreasonable delay in enforcing one’s rights will result in a loss of those rights, so if mark holders don’t send out cease-and-desist letters and/or sue infringers, they’ll lose their investment and possibly have to start over again.

Mark holders are in a catch-22. If they pursue infringers, they’re characterized as heartless, greedy money-grabbers, but if they don’t, they could lose a lot … maybe everything. The truth is often somewhere in between those two extremes. As Mr. Vargas says, have a heart.

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Rob Bodine is a Virginia attorney focusing his practice on real estate and intellectual property law. He’s currently Virginia counsel with Cardinal Title Group, a Virginia title insurance and settlement company. Rob is also a licensed title insurance agent in Maryland and Virginia.