Monday, October 31, 2011

Common Questions: When Should I Enforce My Trademark Rights?

The short answer is: as soon as possible after you learn about potential infringement.

In the current economy, some trademark owners may be reluctant to incur litigation costs or to pursue enforcement actions against potential infringers, when they believe the cost of pursuit might outweigh the potential value of a license agreement or a settlement with the other party.

If trademark owners delay enforcing legitimate rights, however, they risk losing the ability to enforce their rights because of the delay. There are risks associated with a decision to not enforce the rights against a particular infringer, or to delay enforcement (generally). In other words, the trademark owner's claims could be dismissed for failing to take corrective action promptly.

There are three basic doctrines that result in a loss of enforcement ability, if they are alleged successfully: acquiescence, laches and/or waiver. These three doctrines usually appear as affirmative defenses to an infringement lawsuit when trademark owners try to sue a specific infringer.


Acquiescence occurs when a trademark owner exhibits some measure of agreement or implied consent to a potential infringer's use of a substantially similar mark. See, e.g., Profitness Phys. Ther. Center v. Pro-Fit Orthopedic and Sports Phys. Ther. P.C., 314 F.3d 62, 67 (2d Cir. 2002) ("The elements of acquiescence are: (1) the senior user actively represented that it would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim; and (3) the delay caused the defendant undue prejudice.") (internal quotations omitted); Bunn-o-Matic Corp. v. Bunn Coffee Service, Inc., 88 F. Supp. 2d 914, 925 (C.D. Ill. 2000) ("To establish acquiescence, Bunn-NY must show that Bunn-IL by word or deed conveyed its implied consent to Bunn-NY's use of the Bunn mark."). This implied consent can come in the form of refusing or declining to file suit against a specific infringer or failing to otherwise object to an infringing use of the mark.


Laches is defined as "neglect to assert a right or claim which, taken together with lapse of time and other circumstances causing prejudice to adverse party, operates as bar in court of equity." Black's Law Dictionary. In other words, the delay caused harm to the defendant, and thus bars the owner's ability to sue the defendant for infringement.

In order to get a case dismissed successfully under a laches theory, a defendant is not required to prove any intent to consent to the defendant's specific use. Bunn-o-Matic Corp. v. Bunn Coffee Service, Inc., 88 F. Supp. 2d 914, 925 (C.D. Ill. 2000) ("Laches does not require proof of intent. . . . To prove laches, Bunn-NY must show (1) an unreasonable lack of diligence by the party against whom the defense is asserted and (2) prejudice arising therefrom."). Compared to acquiescence, where a defendant must show implied consent of a trademark owner, "laches implies a merely passive consent." Profitness Phys. Ther. Center v. Pro-Fit Orthopedic and Sports Phys. Ther. P.C., 314 F.3d 62, 67 (2d Cir. 2002) (citations omitted).


Finally, a defendant can assert that a trademark owner waived its right to sue for infringement in this specific case. Wavier generally requires "the intentional relinquishment of a known right." U.S. v. King Features Entm't, 843 F.2d 394, 399 (9th Cir. 1988). However, waiver is harder to prove than either acquiescence or laches because "it involves not sleeping on one's rights but intentionally relinquishing them." RE/MAX Int'l, Inc. v. Trendsetter Realty, LLC, 655 F. Supp. 2d 679, 711 n.12 (S.D. Tex. 2009). It also requires supporting evidence that "so clearly" indicates an intent to relinquish a known right that any other reasonable explanation is simply excluded. Allstate Fin. Corp. v. Dundee Mills, Inc., 800 F.2d 1073, 1075 (11th Cir. 1986).


Failure to oppose a junior user's similar trademark or simply failing to enforce one's own trademark rights in a timely manner can result in an inability to pursue infringement remedies against others. It can result in consumer confusion about the source of goods or services provided in connection with the similar marks, and undermine the value of the trademark owner's brand.

Because trademark owners necessarily have invested money and resources in developing their brands, and the consumer's good will associated with those brands, it's good practice to ensure that some enforcement mechanism is in place to protect these valuable assets. Trademark owners generally should avoid positioning themselves in any way that causes these defenses to become viable means to dismiss the lawsuit they've chosen to pursue.

(Note that there may be many reasons why enforcement of a trademark at a particular time should or should not be undertaken, each of which should be reviewed carefully with your attorney(s) in the context of the circumstances presented.)

Wednesday, October 26, 2011

New Bill Introduced in the House to Combat Online Piracy

Today, a bipartisan group within the House of Representatives introduced a bill entitled, Stop Online Piracy Act (H.R. 3261) to combat online piracy. This Bill apparently acts as a counterpart to the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 ("PROTECT IP Act," S. 968) introduced in May 2011 in the Senate (see current status here). Sponsors of the House Bill include House Judiciary Committee Chairman Lamar Smith (R-Texas), Ranking Member John Conyers (D-Mich.), IP Subcommittee Chairman Bob Goodlatte (R-Va.), Rep. Howard Berman (D-Calif.), Rep. Marsha Blackburn (R-Tenn.), Rep. Mary Bono-Mack (R-Calif.), Rep. Steve Chabot (R-Ohio), Rep. Ted Deutch (D-Fla.), Rep. Elton Gallegly (R-Calif.), Rep. Tim Griffin (R-Ark.), Rep. Dennis Ross (R-Fla.), and Rep. Lee Terry (R-Neb.).

The House issued a press release today to announce the Bill's introduction. I haven't had time to review the Bill in detail yet, but will post an update when available about the contents of the bill and differences from the Senate's version.

My prior posts about the PROTECT IP Act, including hearings held by both the Senate and the House can be found here.

Tuesday, October 25, 2011

PSB&N Trademark Practice Group Launches New Web Site and Blog

The PSB&N Trademark and Copyright group has just launched its new website and blog, with an eye toward providing an information source on recent developments in the trademark, copyright and unfair competition fields. Of particular note are the primers describing the trademark application process in the U.S. and in foreign markets. Bios for the group and the site contributors are available. The group's blog, Beyond Confusion, can be separately accessed and you can subscribe directly to receive updates as they become available.

And, yes, this is my firm and my department, so I'm personally quite pleased about the new site. We hope you'll visit.

Monday, October 24, 2011

Common Questions: Can I Copyright My Idea?

In a word, no. Ideas are not copyrightable. Instead, the way that such ideas are expressed can be subject to copyright protection, to registration in the Copyright Office, and to enforcement against infringers.

The Copyright Act provides that copyright protection exists "in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." 17 U.S.C. § 102.

Qualifying Works

Now, what is an "original work of authorship" for practical purposes? There are several specifically defined options for this definition – including literary works, motion pictures, works of visual arts, sound recordings, and architectural works. For purely practical purposes, these means that books, screenplays, scripts, musical lyrics and arrangements, recordings of musical or dramatic performances, paintings, sculptures, photographs, and the like can be "works of authorship."

If you have questions about a specific type of work, check out the Copyright Office's Fact Sheets and Circulars – these provide quick answers to questions that are commonly asked. For instance, there's a Circular for Ideas, Methods and Systems (Cir. 31) and for Names, Titles or Short Phrases (Cir. 34). The first are more properly addressed in the context of patent law, while the second are more properly considered in trademark law. Also see the Copyright Office's FAQs – they cover a number of common questions, including "Can I copyright the name of my band?"

Fixed in a Tangible Medium of Expression

Another key hurdle in determining whether you have a copyrightable work is to ensure that it is "fixed in a tangible medium of expression." While an original dance performance qualifies as "an original work of authorship," if it's not recorded in some tangible medium (DVD, CD, videotape, 16mm film, etc.) it can't be protected under the Copyright Act. (Theoretically, perhaps it also can't be copied exactly.) The Copyright Act explains that a work is "fixed" for these purposes "when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." 17 U.S.C. § 101.

Copyright exists at the moment of creation – unlike patents, registration of the right is not required in order to have the right exist. However, the Act requires that copyrights must be registered before the owner has standing to file suit against an infringer. 17 U.S.C. § 411(a) (". . . no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title"). Some courts have interpreted this requirement to permit suit after the application has been filed, while others require that the owner wait until a Certificate of Registration has been issued by the Copyright Office before filing suit. (The Copyright Office provides some additional reasons why you should register your copyrights with the Office.)

Other Considerations

Even if you overcome these two hurdles ("original work of authorship" and "fixed in a tangible medium of expression"), there are other requirements for obtaining and maintaining registration that are not covered in this brief note. If you have specific questions, you can find some answers on the Copyright Office's site, but if not, you should consult with a practitioner in this area to review and discuss your circumstances.