Trademark Law Briefs

Seller Agency Council, Inc. v. Kennedy Center for Real Estate Education, Inc., 2010 U.S.App. LEXIS 18446 (9th Cir. 2010)

Appellant Kennedy Center for Real Estate Eduction, Inc. (KCREE) entered into an agreement with Realty U., Inc. to form a new company, Seller Agency Council, Inc. (SAC).  The business involved real estate education and accreditation.  KCREE was to assign its trademarks to SAC after shares were issued to KCREE for those shares.  After entering this agreement, SAC began using the trademarks though shares had not been issued. At some point, KCREE learned that SAC earnings were being diverted to Realty U.  Approximately 9 months after entering into the agreement, KCREE wrote a cease-and-desist letter revoking KCREE’s consent to SAC to use the trademarks.  The trial court ruled that SAC acquiesced to use of the trademarks after the cease-and-desist letter by virtue of Kennedy’s requests that SAC take specific actions to record accreditation of students.  In finding acquiescence, the trial court used a modified laches test developed by the 11th and 2nd Circuit.

The 9th Circuit approved of this test:

“The elements of a prima facie case for acquiescence are as follows: (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 was not excusable; and (3) the delay caused the defendant undue prejudice.”  The third prong requires reasonable reliance by the junior user on the affirmative act by the senior user, which requires examination of both the content of the affirmative act and the context in which that act was performed.

The 9th Circuit remanded the case for a determination of reasonable reliance. (more…)

Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 2010 U.S.App. LEXIS 9277 (9th Cir. 2010)

Au-Tomotive Gold (”Auto Gold”) sells marquee license plates which have the Volkswagen VW symbol attached.  Auto Gold purchased the VW symbols from an authorized Volkswagen distributor and sold the marquees with packaging that disclosed no relationship between Auto Gold and Volkswagen.  Auto Gold therefore claimed that the First Sale doctrine meant that there was no trademark infringement.  The Court disagreed, holding that where non-purchaser confusion is likely post purchase, the doctrine does not apply.  (more…)

Matsunoki Group v. Timberwork Oregon, Inc. et al. , 2010 U.S. Dist. LEXIS 37760 (N.D. Cal, 2010)

The court granted summary judgment in favor of defendants where plaintiff (the alleged successor to the Haiku Homes trademarks) had mailed a cease & desist to defendants in 2001, but filed suit in 2008.  In California, a 4 year presumption applies to Laches based on the statute of limitaiton for California common law trademarks.  Plaintiff alleged that the cease & desist only referred to common law rights and not to the registered trademarks, however the cease & desist directly referred to federal trademark law.  Additionally, the fact that litigation was not “worth while” until recently, when plaintiff learned defendants were allegedly stealing clients,does not justify the wait. ” The court noted, a trademark holder is not entitled to wait until an infringer grows large enough to ‘constitute a real threat’ before suing for trademark infringement. [citation ommitted]”

Defendant also received summary judgment on plaintiff’s copyright claims because plaintiff could not demonstrate a written assignment of the copyright from an alleged predecessor.

ATM Expresss, Inc. v. ATM Express, Inc, 2009 U.S. Dist. LEXIS 83756 (S.D. Ca. 2009)

Plaintiff began using name in 1997.  Defendant began using name in 1999.  Plaintiff learned of Defendant’s use in 2001, filed for trademark in 2003, and sued defendant in 2007.  Court ruled in favor of Defendant’s Motion for Summary Judgment based on its laches defense. (more…)

Internet Specialties West, Inc. v. Milon-Digiorgio Enterprises 2009 US App. LEXIS 5454 (March 17, 2009)

Ruling: Laches runs from when the plaintiff knew, or should have known, about the likelihood of confusion between domain names- which means being aware of potential conflict.  A plaintiff cannot wait for the evidence of actual conflict.  However, for a successful laches defense, the defendant must still show prejudice from the delay which means not just that its business has grown but that it has invested in the actual brand identity of the mark.  (more…)