Trademark Infringement

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7^th Circuit Court of Appeals

Case Name: Hyson USA et al v. Hyson 2U et al

Case No.: 14-3261

Officials: FLAUM, RIPPLE, and SYKES, Circuit Judges

Focus: Trademark Infringement

Judge prematurely dismissed case in pleading stage of litigation on equitable doctrine

“Generally speaking, acquiescence is an equitable doctrine that permits the court to deny relief in an action for trademark infringement if the evidence shows that the owner of the mark has, through his words or conduct, conveyed his consent to the defendant’s use of the mark. See Magic Touch, 124 F.3d at 885; Piper Aircraft Corp. v. Wag-Aero, Inc., 741 F.2d 925, 932–33 (7th Cir. 1984); see also SunAmerica Corp. v. Sun Life Assurance Co., 77 F.3d 1325, 1334 (11th Cir. 1996); see generally RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 29. The defense prevents the trademark owner from impliedly permitting another’s use of his mark and then attempting to enjoin that use after the junior user has invested substantial resources to develop the mark’s goodwill. See Magic Touch, 124 F.3d at 885. We’ve noted (as have other courts) that “acquiescence is related to the doctrine of laches, by which equity comes to the aid of an innocent user and grants him refuge from a claimant who has calmly folded his hands and remained silent while the innocent user has exploited and strengthened the mark.” Id. (internal quotation marks omitted). Indeed, our acquiescence cases import aspects of laches analysis, looking to the reliance interests of the junior user, the senior user’s delay in enforcing his rights, and the prejudice to the junior user if the senior user’s rights are enforced. See, e.g., Piper Aircraft, 741 F.3d at 932–33; Magic Touch, 124 F.3d at 885–86; Seven-Up Co. v. O-So-Grape Co., 283 F.2d 103, 106 (7th Cir. 1960) (formally decided under the doctrine of laches but also discussing acquiescence).”

Reversed

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Attorney Derek A. Hawkins is the managing partner at Hawkins Law Offices LLC, where he heads up the firm’s startup law practice. He specializes in business formation, corporate governance, intellectual property protection, private equity and venture capital funding and mergers & acquisitions. Check out the website at www.hawkins-lawoffices.com or contact them at 262-737-8825.