Before you sue someone for trademark infringement under the Lanham Act or Anticybersquatting Piracy Act, you better make sure you've been protecting your rights all along.
In a case recently decided in the United States District Court for the Southern District of Florida, Miami Division, a court again lent credibility to the argument that a trademark owner’s failure to timely protect its trademark rights can result in a waiver of those rights altogether. In Southern Grouts & Mortars, Inc. vs. 3M Company , Plaintiff Southern Grouts & Mortars sued Defendant 3M under the Lanham Act and the Anticybersquatting Consumer Protection Act over its “DIAMOND BRITE” registered trademark. 3M registered an allegedly infringing domain name www.diamondbrite.com which was the primary driver for the trademark infringement lawsuit.
The court found that the Plaintiff was barred from pursuing its trademark infringement and cybersquatting claims under the doctrine of laches, which is an equitable defense which penalizes Plaintiffs who fail to assert their rights in a timely fashion. The Defendant 3M filed a motion to dismiss the case based on the defense of laches, which the court granted. The court found that there was delay in asserting trademark rights, that the delay by Plaintiff was inexcusable and that 3M was prejudiced as a result of the failure of Plaintiff to assert its trademark rights in a timely fashion. Specifically, the court found that the Plaintiff merely sent emails and letters over a course of five years despite its full knowledge of the alleged trademark infringement and domain name dispute with 3M. The court concluded that the delay would prejudice 3M because of the fact that eight years worth of evidence would have to be accumulated.
The lesson to be learned here is one that we have been telling our trademark clients for a long time. You must proactively protect your trademarks in cyberspace. That means you must monitor domain registrations and keyword advertising which might diminish your trademark, send trademark infringement notice letters and threat letter where appropriate and pursue these matters under the UDRP or the ACPA in a timely fashion. Trademarks are worth a lot of money. Companies must learn to protect their marks or risk losing their rights altogether.