Why You Should Be Vigilant About Your Trademark Rights

It is imperative that intellectual property owners police and protect their trademarks from unauthorized use...

It is imperative that intellectual property owners police and protect their trademarks from unauthorized use.  Recently, in a precedential decision by the Trademark Trial and Appeal Board (“TTAB” or “Board”), the TTAB held that Advance Magazine Publishers Inc. (“AMP”), which owns Vogue Magazine, had waited too long to challenge the registration of the “eVogue” trademark by a third party and that, as such, AMP had effectively squandered its right to oppose the registration. 

Vogue Alleges Customer Confusion Over Mark

The dispute stemmed from Fashion Electronics, Inc.’s (“FEI”) attempt to register the mark “eVogue” for a  variety of consumer electronic devices and related accessories. Importantly, Fashion Electronics had been using the mark since January 2006 in connection with, among other things, cell phone accessories, including cell phone covers, cell phone Bluetooth accessories, power banks, and battery chargers. Notably, Fashion Electronics owned a prior registration for the standard-character mark “eVogue” that registered on January 15, 2008, but the mark abandoned due FEI’s failure to properly file renewal documents.  FEI then filed the subject trademark application on October 4, 2018. 

AMP opposed the 2018  application on two grounds. First, AMP  argued that the “eVogue” mark so resembles its previously used and registered “Vogue” mark (used for a variety of goods and services including magazines and online media content in the fields of lifestyle and fashion, and software in the field of lifestyle and fashion for use with digital electronic devices) that when used in connection with the applicant’s goods, it was likely to cause confusion under Section 2(d) of the Trademark Act. AMP further argued that its mark was famous and that the “eVogue” mark was likely to cause dilution by blurring pursuant to  Section 43(c) of the Trademark Act.

TTAB Rejects AMP’s Arguments

The TTAB ultimately rejected AMP’s arguments and applied the laches doctrine.  Laches is an equitable defense under which a legal right or claim will not be enforced if a significant delay in asserting the right or claim has prejudiced the opposing party. The rationale behind the doctrine is that “sitting” on your legal rights for an unreasonable period of time is inherently unfair to the defendant.

In the context of a trademark opposition or cancellation proceeding, the laches defense must be tied to a party’s registration of a mark rather than to its use of the mark. In view of this timing element, laches generally does not apply in opposition proceedings. However, a laches defense may be premised upon opposer’s failure to object to an applicant’s earlier registration of the same mark for substantially the same goods and services.

Where a laches defense is asserted based on an expired prior registration, the period of delay begins on the issue date of the prior registration and ends with the cancellation of the prior registration. To prove laches, in addition to showing unreasonable delay, an applicant must show that it has suffered material prejudice because of the delay. “[I]n determining whether a party has too long ‘slept on its rights’ it is necessary to show that the party knew or should have known that it had a right of action, yet did not act to assert or protect its rights.” Bridgestone/Firestone Rsch. Inc. v. Auto. Club de l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1463 (Fed. Cir. 2001).

In this case, the TTAB found that because the prior registration was for the same mark and some of the goods are substantially the same, laches was an available defense as to those goods. The Board further found that the applicable period of delay, on which Fashion Electronics could rely, was from January 15, 2008 (the issuance date of the prior registration) to August 17, 2018 (the cancellation date of the prior registration). “This is more than a 10-year period of delay, during which time Applicant continuously used its registered mark, but never received any cease-and-desist, objection, or any letter threatening litigation pertaining to [Applicant’s] use and ownership of the ‘EVOGUE’ mark, whether from Opposer or otherwise,” the TTAB wrote.

The TTAB held that the 10-year delay supported application of the laches defense.  “We find Opposer’s delay of ten years and seven months (including the grace period and 30 days prior to cancellation) between the issuance date of Applicant’s registration of the EVOGUE standard character mark and its cancellation to be unreasonable and to support a defense of laches,” explained the TTAB. 

The TTAB also concluded that Fashion Electronics would suffer prejudice because it had spent millions of dollars and substantial time and effort advertising and promoting the mark since 2006.  “Loss of Applicant’s rights in EVOGUE resulting from its inability to re-register the mark for its various cell phone accessories would result in economic prejudice and would be a detriment to Applicant due to the delay,” explained the Board. 

Key Takeaway

The TTAB’s recent decision highlights the importance of aggressively and vigilantly pursuing your trademark rights without undue delay. If you wait an unreasonable amount of time to either oppose a trademark or pursue an infringer, the laches defense may be problematic.   Please contact us if you have any questions regarding this important intellectual property concept.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Albert J. Soler, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.