One of the most critical pieces of advice that all business owners should follow is to sufficiently police unauthorized uses of their trademark rights. Failure to do so can result in companies losing much of the value in their trademarks. Importantly, unauthorized uses of trademark rights must be addressed soon after notification of such infringement. Two recent 11th Circuit (i.e., Georgia, Florida, Alabama) cases explain why waiting to enforce unauthorized uses of trademark rights can be detrimental.

Case 1 – Wreal LLC v. Amazon.com (2016)

Wreal LLC is an adult content streaming provider that attempted to prevent Amazon.com LLC from using a mark. The Eleventh Circuit ruled that Wreal LLC failed to show that the company would suffer irreparable harm unless Amazon.com was barred from using the Fire TV name. Wreal LLC argued that Amazon’s Fire TV name was close to Wreal’s FYRETV trademark.Part of the Eleventh Circuit’s reasoning that no irreparable harm was done is that Wreal LLC waited five months to make a request to prevent Amazon.com. The Eleventh Circuit went so far as to describe Wreal LLC as “on a meandering evening stroll” rather than “in a race against time” to stop Amazon.com.

Advice from the Wreal LLC Case: If a company believes that another company is infringing on its trademark, it is a wise idea to immediately notify the courts of potential infringement.

Case 2 – Groucho’s Franchise Systems LLC v. Grouchy’s Deli, Inc. (2017)

In this case, the 11th Circuit affirmed summary judgment in favor of the defendant, Grouchy’s Deli. Groucho’s Franchise Systems, a restaurant chain franchisor argued that Grouchy Deli’s name infringed on Groucho’s registered service mark. The 11th Circuit, however, found that Groucho’s complaint was barred by laches.The 11th Circuit also found that Groucho’s failed to provide an explanation why the company waited until 2014 to sue Grouchy’s Deli even though Groucho’s learned about the infringement by Grouchy’s Deli a decade before.

Advice from the Groucho’s Franchise Case:: Much like the wisdom that can be gleaned from Wreal LLC, businesses should use the ruling in Groucho’s to suggest that companies should not wait to notify a court of law once the company becomes aware of potential infringement.

Obtain the Assistance of a Seasoned Trademark Attorney

If you think that your trademark is being infringed, or you have received notice that you might be infringing someone else’s trademark, seek the assistance of a seasoned trademark attorney.

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