In Part IV and our post titled “Acquiescence – The First Limitation on Trademark Protection,” we hammered on the concept of “acquiescence” and mentioned that 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. We also added that 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. It is also worth noting the three elements of an acquiescence defense, which comprise things a plaintiff must convince and demonstrate in court. To move this discussion forward, we have hammered on “laches,” the second limitation on trademark protection in this blog post and Part V of the miniseries.
Laches – The Second Limitation on Trademark Protection
By definition, laches is a doctrine or defense on equity that individuals will not be entitled to bring an action in a court of law if they delay too long to assert an equitable right. Thus, it implies a lack of activity and diligence in making a legal claim concerning a given matter or asserting a legal right or privilege.
In the U.S., the Trademark Act of 1946, also known as the Lanham Act, is the federal statute that governs unfair competition, service marks, and trademarks. It turns out that there is no statute of limitations for trademark infringement provided under the Lanham Act, which took effect on July 5, 1947. However, pursuant to 15 U.S.C. § 1115(b)(9), the fact that laches is a defense to a claim on trademark infringement is expressly provided by the Lanham Act. Essentially, the laches defense comprises two elements:
- The delay in making a legal claim on the part of the plaintiff was unreasonable-and-
- The defendant suffered prejudice as a result of the delay (evidentiary prejudice and/or expectations-based prejudice).
It is worth noting that both prospective injunctive relief and monetary damages may be awarded following the establishment of laches in a legal suit.
In the next blog post and Part VI of the series, we shall move forward to “Fair Use,” the third “Limitation on Trademark Protection,” and hammer on both “Nominative Fair Use” and “Descriptive Fair Use.”
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.