Trademark owners that neglect enforcing their trademark rights can lose their ability to enforce their trademark rights in the future due to laches as a defense or loss of a distinctive trademark in a crowded field.
When trademark owners neglect enforcing their trademark rights, they risk losing their rights altogether for two reasons: 1) the longer a third party uses an infringing trademark, the more defenses available in a future lawsuit, and 2) the more infringing trademark uses by third parties creates a “crowded field,” making the trademark less distinctive and more difficult to target any infringer.
Laches Defense in Trademark Infringement Lawsuit
When a trademark owner knows of an infringer but does not act for years before enforcing their rights, the third party infringers can claim “laches” as a defense to the trademark infringement claim. Laches is the legal term for essentially saying, “hey, if this alleged trademark infringement is such a problem, why did you wait years to make it an issue? It is not fair to stop me from using the alleged infringing trademark after I used it for years!” Laches is a powerful defense, and the longer an owner snoozes on their enforcement rights, the stronger the laches defense comes.
In a courtroom setting, the party accused of trademark infringement can use laches as a defense if they can show the case was brought after an “unreasonable delay” that causes prejudice to the alleged trademark infringer. There is no golden rule of how long an “unreasonable delay” is, but waiting over a couple of years to bring a trademark claim to a third party’s attention is not a good place to be in for a plaintiff in a trademark lawsuit. The second part of the test, i.e. whether the alleged infringer will be “prejudiced,” balances how long the alleged infringer has used the mark, how much they invested in it, how popular it is and more to determine whether it is fair to make them stop using the infringing trademark after an unreasonable time has passed.
Trademark Distinctiveness and Crowded Fields
The second issue regarding ignoring trademark enforcement is trademark owners risk many third parties using their trademark or similar ones. The more third parties that use infringing trademarks, the harder it becomes to successfully stop anyone of them individually because a) each third party will point to all the other third parties to show the trademark is not distinctive, and b) stopping all the third parties is not financially possible at some point.
Distinctive trademarks are trademarks that are made up words like KODAK or words not related to the field, i.e. APPLE for computers. However, even a distinctive trademark such as APPLE could lose its distinctiveness if competitors started using APPLE (or something like APPLE SEED) as a trademark to sell related services and products. The more third parties that use similar trademarks and the more crowded the trademark becomes in the field, the less distinctive the trademark becomes. When a trademark loses distinctiveness in the field, it can no longer be enforced against competitors.
If your trademark does not standout in a crowded field, you cannot enforce it against infringers
One example of this is APPLE tried to claim that it owned trademark rights to any trademark that was “i-PRODUCT” due to their trademark rights to “iPHONE,” “iPOD,” and iPAD.” However, they were not able to successfully win trademark cases against companies that use similar iPRODUCTNAME because it became a very common way to name a product in the technology field.
Two iPRODUCT trademarks that Apple cannot stop via trademark infringement lawsuit
To avoid losing a potential trademark case due to a laches defense or because the trademark is not distinctive due to substantial third party use, it is important to enforce trademark rights.
If you need help enforcing your trademark rights, contact us for a free trademark consultation today.