Failing To Assert Trademark Rights in Timely Fashion Will Give Opponent Doctrine of Laches Affirmative Defense

Failing to assert your trademark rights within a timely fashion will prejudice you down the road.  The doctrine of laches, an affirmative defense in trademark proceedings, is used by courts or the TTAB to refuse to hear a claim or recognize a right that was not asserted within a reasonable amount of time.  The Trademark Trial and Appeal Board has used the doctrine of laches to refuse a petition for cancellation that was filed 62 months after a registration was issued.

In Klise Manufacturing Co. v. Braided Accents, Braided Accents received registration for its BRAIDED ACCENTS mark for building materials made out of wood.  The mark featured a braided rope logo.  Klise petitioned for cancellation, arguing that Braided’s logo would cause confusion with Klise’s previously registered mark ACCENT for trim mouldings made of wood, and non-metal decorative mouldings.  Braided argued that Klise’s claim was precluded by the doctrine of laches because it had filed to assert its rights for 62 months after the registration was issued for BRAIDED ACCENTS.

The Board examined the two marks and found that though the DuPont factors favored the inference that the two marks are similar, there have been no instances of actual confusion in the nine years that the parties have used their marks concurrently in commerce.  Still, the Board found a likelihood of confusion because the marks were used in the same trade channels and because the goods are similar.
Finally, the court found the laches defense to be valid:

In order to prevail on the affirmative defense of laches, respondent is required “to establish that there was undue or unreasonable delay [by petitioner] in asserting its rights, and prejudice to [respondent] resulting from the delay.” Bridgestone/Firestone Research Inc. v. Automobile Club de l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462-1463 (Fed. Cir. 2001). See also Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992). The laches defense, if successful, will serve as a bar against a petition for cancellation grounded on likelihood of confusion unless confusion is inevitable. Ultra-White Co., Inc. v. Johnson Chemical Industries, Inc., 465 F.2d 891, 175 USPQ 166, 167 (CCPA 1972)….

In view of the above, we find that the length of delay is significant and that prejudice to respondent would result should its registration be cancelled because, during this time of delay, respondent continued to invest in and expand its business.

In so holding, the court said that Klise had actual knowledge of the BRAIDED ACCENTS mark as early as 1998.  Since Klise had actual knowledge, and because Braided had expanded its business in reliance on the use of its mark, the Board found that prejudice to Braided would result if the petition for cancellation were accepted.

When used in connection with their respective identified goods, respondent’s BRAIDED ACCENT (with braided rope design) so closely resembles petitioner’s registered ACCENT mark, as to be likely to cause confusion. However, respondent’s affirmative defense of laches is applicable and, thus, petitioner’s likelihood of confusion claim is barred by this equitable defense.

If you believe that your trademark rights have been infringed it is important to act immediately.  Please contact an attorney with experience in this area so that you do not lose your ability to preempt a doctrine of laches affirmative defense.