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| The Everett, Washington hair salon's name/logo |
Self-help
guru Napoleon Hill once wrote that "procrastination is the
bad habit of putting off until the day after tomorrow what should have been
done the day before yesterday." A number of parties involved in a trademark dispute in the state of Washington may agree with that statement more than they would care to.
According
to recent reports,
when Jesse Skittrall purchased the small Absolut Hair and Makeup salon in Everett,
Washington in 2009, he was informed by Gayle Pratt, the former owner of the
salon, that Vodka giant Absolut had sent a formal cease and
desist letter in 2005, but didn't follow up on its demand that the salon change
its name.
Consequently,
Pratt evidently concluded that the matter was not being pursued by the vodka
maker, and the hair salon management changed hands.
However,
at the end of July 2013, the vodka maker finally followed up, and
reportedly gave Skittrall until January 1, 2014 -- 6 months -- to
completely change the salon's name, or else face a federal lawsuit for
trademark infringement.
Skittrall
has appealed to the community to raise money, and appeared on local radio
stations, complaining that the vodka company had "come out of
nowhere."
On GoFundMe.com, Skittrall apparently seeks as
much as $20,000 to fund the name change, but as of today, has raised only $125. It is not clear why it would cost $20,000 for the business to change its name, but the salon would obviously need new signage, a new website and new business cards.
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| The Vodka Maker's Trademark |
On
the crowd funding site, Skittrall claims that "I bought the
business with this name and existing signage and was not aware of any trademark
issues."
But the
former owner disputes Skittrall's characterization, saying that she fully
informed him of the unresolved trademark dispute back in 2009.
But what
of the vodka maker's apparent delay in following up?
Precedent
from the Ninth Circuit Court of Appeals, which governs Washington,
lays out a clear duty for a trademark owner to act diligently once it has sent
a cease and desist letter that has become unresolved.
Otherwise,
the trademark owner might face the possibility that its delay in protecting its
rights may rise to the level of being "estopped by laches." The
doctrine is sometimes just referred to as "laches," which comes from
the French for "laziness."
The Latin
phrase "Vigilantibus non dormientibus æquitas subvenit (Equity aids
the vigilant, not the sleeping ones (that is, those who sleep on their
rights))" is often quoted to help explain the doctrine.
In other
words, the vodka maker's delay in pursuing the 2005 matter against the hair
salon could have led the former and new owners to reasonably infer that the
alcohol beverage company had lost interest in protecting its rights in this
instance.
To the
extent that the salon owners relied upon that delay to their detriment and
suffered prejudice, courts may hold that delay against the trademark owner, not
the salon.
The Ninth
Circuit Court of Appeals had said in Brookfield Communications v. West Coast Entertainment in 1999:
"Although
we have applied laches to bar trademark infringement claims, we have done so
only where the trademark holder knowingly allowed the infringing mark to be
used without objection for a lengthy period of time. See E–Systems,
Inc. v. Monitek, Inc., 720 F.2d 604, 607 (9th Cir.1983). In E–Systems, for
example, we estopped a claimant who did not file suit until after the allegedly
infringing mark had been used for eight years where the claimant had known of
the infringing use for at least six years. See id.; see also Carter–Wallace,
Inc. v. Procter & Gamble Co.,434 F.2d 794, 803 (9th Cir.1970). We
specifically cautioned, however, that “had defendant's encroachment been
minimal, or its growth slow and steady, there would be no
laches.” E–Systems, 720 F.2d at 607; accord Carter–Wallace, 434
F.2d at 803 n. 4."
In this case, the delay would appear to be from 2005 to 2013: approximately eight years. There is no clear evidence of progressive encroachment, as
the local hair salon appears to be largely the same as it was in 2005, despite having new management.
Furthermore, Washington's statute of limitations may also apply here, which enforces a three year statute of limitations to trade name disputes.
Consequently, the vodka maker may face a problem if the hair
salon simply refuses to change its name, and invokes these doctrines in its
defense.
The lingering problem for the salon, of course, is that estoppel
by laches is a defense that can only be asserted in a lengthy court proceeding,
after factual discovery has been exchanged. And invoking such equitable defenses obviously costs
time and money, and litigation comes with no guarantees.
In
conclusion, had all the parties more clearly resolved their original dispute back in
2005, more costly headaches for all involved might have been avoided.
