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.