Re: Statute of limitations

With all due respect to the answers that have gone before, the "owner" may have abandoned it by simply failing to police the goods/services sold under the mark for those seven years.

That is, the owner needs to do some policing of goods/services under a mark to make sure that those are being sold under the level of quality the owner implicitly guarantees to the public under the mark. If the owner has done nothing during that time to assure that level (which can be high or low, doesn't matter as long as it is some level) then he or she may well be deemed to have abandoned the mark.

Re: Statute of limitations

Mr. Chovanes' statements are correct. I have subsequently emailed and spoken to the questioner, and the issue here is definitely acquiescence. Additional research is required, but it does not appear that the acquiescence will be fatal to an infringement suit in this case. I'm sure it will be argued, but I think the case will survive summary judgment.

The questioner is a member of a charitable organization in PA (and other states), who is the owner of an incontestable federal trademark registration. The junior user of the mark is another charitable organization located in many other states, including TX and FL. There is some confusion between the two groups, and the junior user's use of the same name has tarnished the reputation of the trademark owner. Additionally, the junior user has basically told the trademark owner to 'go pound sand' in response to cease and desist letters.

The trademark owner does not seek monetary damages, only declaration of their prior rights and injunction against further use.

I will be helping to get this case underway (no charge at this point). If an attorney in PA would like to join the effort, I'm sure the trademark owner would be very grateful for the help. I would also welcome the collaboration!

Re: Statute of limitations

No-Permission can be granted or withdrawn at will.

Of course, it is always advisable to grant permission via written contract.

Call or email for further assistance.

Re: Statute of limitations

It depends on what you mean by "allows."

1. You could mean the registered mark owner has acquienced in someone's unauthorized use of the mark. A defendant could use this as a defense to an infringement suit. The defense is called laches, estoppel, and/or acquiescence. See 15 USC 1115(9).

2. Abandonment is also a defense to an infringement suit, but it does not necessarily involve acquiescence to another's use of the mark. With this defense, the defendant challenges the trademark owner's rights by arguing that the registrant itself has discontinued use of the mark. See 15 USC 1115(2).

3. If by "allows" you meant the mark owner gave permission for the other use, then the other attorney is right. One may grant and withdraw permission for another to use their mark at any time.

You shouldn't assume that a mark owner has abandoned his or her rights to relief. As stated above, there are defenses to an infringement suit. But, nothing precludes the mark owner from filing suit.

You should have an intellectual property attorney review all the facts of your case and advise you of you rights, responsibilites, options, and possible defenses.

Good luck to you.