In Part III and our post titled “Trademark Law on Trade Dress (Product Packaging),” we hammered on the concept of trade dress/product packaging and how it is protected under Trademark Law. One thing worth noting is that trade dress refers to the commercial feel & look of a service or product that is used to distinguish and identify the source of that service or product. Another thing is that product packaging and product designs are both considered trade dress. Finally, under Trademark Law, trade dress protection depends on whether it is (1) distinctive and (2) nonfunctional. To move this discussion forward, we have switched gears to focus on “Limitations on Trademark Protection,” which is basically all about individual power to control how one’s mark is used. Accordingly, this blog post and Part IV of the miniseries is a review of the concept of “acquiescence,” the first limitation on trademark protection.
Acquiescence – The First Limitation on Trademark Protection
Under trademark law, acquiescence arises when an individual knowingly watches as another person infringes on their right but raises no objection, while, at the same time, another individual acts contrary to their rights without malice aforethought and knowledge. The acquiescence of a trademark’s owner to the use of its mark by a defendant is often considered an affirmative defense to a dispute on trademark and infringement issues on such marks. Forming the three elements of an acquiescence defense, the plaintiff must convince and demonstrate to a court that:
- The plaintiff played an active role in representing the wish not to assert a claim or right-
- The delay occurring between one asserting a claim or right and seeking active representation was not excusable-and-
- The defendant suffered undue prejudice due to the delay.
However, it is crucial to note that an acquiescence defense is never supported by a finding of mere silence on the trademark owner’s part. Further, based on the reasonable assumption that one was permitted to use a mark, undue prejudice may result, particularly if substantial progress or investment has been made by the defendant. Nonetheless, in the case where a defendant would incur costs to discontinue using the mark and/or has merely used the mark for commercial purposes, the potential for undue prejudice is unlikely.
In the next blog post and Part V of the series, we shall move forward to “laches,” the second “Limitation on Trademark Protection.”
Stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.