Trademark Law | Expert Legal Commentary
July 9, 2009
Internet Specialties v. Milon-DiGiorgio: Raising the Standard for a Laches Defense in Trademark Cases
Internet Specialties West v. Milon-DiGiorgio Enterprises, Inc.
By
Olivier A. Taillieu and Laura D. Castner of Zuber & Taillieu LLP
In Internet Specialties West v. Milon-DiGiorgio Enterprises, Inc., 559 F.3d 985 (9thCir. 2009), the U.S. Court of Appeals for the Ninth Circuit upheld the district court's grant of an injunction prohibiting the use of a registered domain name and mark that was determined to be confusingly similar to a pre-registered domain name of a competitor. The primary and most notable part of the opinion appears to raise the standard for evidence supporting a successful laches defense in a trademark infringement case. The Court held that where efforts to promote the infringing mark do not create specific brand awareness or public association between the mark and its owner, the infringer cannot claim that it has been prejudiced and therefore cannot support a laches defense.
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About the Authors
Olivier A. Taillieu is a Partner of Zuber & Taillieu LLP, focusing on intellectual property litigation and arbitration.
Laura D. Castner is a Counsel of Zuber & Taillieu LLP, focusing on intellectual property litigation and arbitration.
Image Credit: ©iStockphoto.com/melhi
View a PDF of the judicial opinion