Trademarks, Servicemarks and the Costs of Delay

In a recent opinion, Judge Shadur gave new life to the “laches” defense to trademark and servicemark infringement.  Judge Shadur granted summary judgment to the City of Chicago and dismissed Rudolfo Garcia’s claim for servicemark infringement of the name “Graffiti Blasters.”  See. Rudolfo v. City of Chicago, 2009 U.S. Dist. Lexis 7437 (N.D. Ill.).

Judge Shadur focused on the following facts: 1) Rudolfo was aware of the City of Chicago’s use of “Graffiti Blasters” for fourteen (14) years before filing suit; 2) Rudolfo waited ten (10) years  after his lawyer sent a Cease & Desist letter to the City of Chicago; 3) the City of Chicago immediately responded with a letter disputing Rudolfo’s rights to “Graffiti Blasters”; 4) the City of Chicago cleaned over 200,000 buildings and expanded the program by investing millions into it after Rudolfo’s delay; and 5) Rudolfo’s delay was approximately five times the three year statute of limitations for violations of the Illinois Consumer Fraud and Deceptive Business Practices Act. 

Judge Shadur held that considering these facts and circumstances Rudolfo had slept on his rights and unreasonably delayed in brining suit against the City of Chicago.  This ruling reaffirms the need for trademark and servicemark owners to police infringing uses of their mark and timely file claims to ensure the strength and validity of their mark. 

Attached is the case for your consideration: name_rudolfo_garcia_and_city

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