Most trademark attorneys will recommend to their clients that they subscribe to some form of watch service. A watch services is exactly what it sounds like, it is a service that watches for potentially infringing marks. Companies that offer watch services offer different types of watches and different timings. For example, you can elect to watch the Principal Register of the United States Trademark Office or you can elect to watch common law sources like the Internet generally. Watch services are great business development tools for lawyers, but is it something that every trademark owner should be subscribing to?
In TPI Holdings, Inc. v. TrailerTrader.com, LLC and Trailer Central, LLC, the Trademark Trial and Appeal Board had to decide whether TPI Holdings waited too long to bring its cancellation proceeding against Trailer Central’s Supplemental Registration for TRAILERTRADERS.COM. The elements of a laches defense are: (1) unreasonable delay in assertion of one’s rights against another; and (2) material prejudice to the latter attributable to the delay. See Lincoln Logs Ltd. v. Lincoln Pre-Cut Logs Homes Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992). As to when a laches period for any unreasonable delay begins to run in a cancellation proceeding, the Trademark Trial and Appeal Board looks to the timing of a petitioner’s awareness of the registration, or underlying application.
In the TailerTrader.com case, TPI Holdings learned of the TRAILERTRADERS.COM Supplemental Registration on or around October 29, 2012 (6 days after the Supplemental Registration issued) from its counsel who learned about the Supplemental Registration through a trademark monitoring service. With this knowledge, TPI Holdings then waited four years to bring its cancellation proceeding. Upon learning of the Supplemental Registration, TPI Holdings sent a demand letter that Trailer Center rebuked, and TPI Holdings did nothing for 4 years.
As searchers, what can we learn from this? If we are working with a client that is already using a mark, and a trademark search reveals a prior registered mark or prior pending application that is a concerning reference, your client needs to consider taking action against that reference or possibly risk being prevented from taking action at a later time.