Pattishall IP Blog

December 1, 2010

Ninth Circuit Articulates Its Version of the Acquiescence Defense to Trademark Infringement

Filed under: Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:13 pm

Categories: Trademark (General)
Tags: Phillip Barengolts, Trademark Infringement, Acquiescence, 9th Circuit

by Phillip Barengolts, Trademark Attorney

Acquiescence has long been accepted as a defense to a claim of trademark infringement in most jurisdictions.  The Ninth Circuit recently articulated its definition of the defense in Seller Agency Council, Inc. v. Kennedy Center for Real Estate Education, Inc., No. 08-56791 (9th Cir. 2010).[1]

Specifically, the Ninth Circuit found that acquiescence “limits a party’s right to bring suit following an affirmative act by word or deed by the party that conveys implied consent to another.”  Accordingly, it held that the elements of an acquiescence defense are: (1) the trademark owner actively represented that it would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused the defendant undue prejudice.  Prejudice must involve reliance on the trademark owner’s affirmative act or deed, and the reliance must be reasonable.  The reasonableness of the reliance depends on the content of the affirmative act and the context in which that act was performed.  By contrast, to establish a laches defense in the Ninth Circuit a defendant must, first, establish that the plaintiff’s delay in bringing suit was unreasonable and, second, that the defendant was prejudiced by the delay. (more…)

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