Trademark Law Updates | New Judicial Opinions
March 2, 2009
Ill District Court Dismisses “Graffiti Blasters” Service Mark Suit for Laches
Rudolfo Garcia v. City of Chicago
No. 07 C 5828, U.S. District Court for the Northern District of Illinois, 3/2/2009
For sleeping on his rights, the U.S. District Court for the Northern District of Illinois has dismissed plaintiff Rudolfo Garcia’s claims that the City of Chicago infringed his service mark “Graffiti Blasters,” the name of his business that removed graffiti from buildings and other sites. Specifically, the district court held that Garcia’s delay between his acquiring knowledge of City’s usage of the name in 1993 until he filed suit in 2007 is almost five times the three year statute of limitations that is drawn by analogy from the Illinois Consumer Fraud and Deceptive Business Practices Act (“ICFDBPCA”). And in terms of laches, the district court added, Garcia’s 10-year silence between the 1997 exchange of communications and the filing of suit in 1997, coupled with the City’s enormous activities and expenditures in the interim, all indicated that the City’s laches defense was meritorious. In so stating, the district court dismissed Garcia’s action with prejudice.
By way of background, Garcia sued the City for the claimed infringed of his alleged service mark rights in the name “Graffiti Blasters” for the removal of graffiti from buildings and other sites in the Chicago area – an activity that each of them had concededly pursued for many years (Garcia since 1985, the City since 1993) under the identical name.
The City in response moved for summary judgment under Fed. R. Civ. P. (“Rule”) 56 on laches grounds.
In his Brief, Garcia admitted that it took him four years, from 1993 to 1997, after learning about the City’s use of the mark, during which time the City had already cleaned more than 200,000 buildings and had spent a huge sum for such use, before he even complained about it.
Sustaining the city’s motion to dismiss, the district court noted that Garcia filed the instant suit fourteen years after he first became aware of the City’s use of the mark, and 10 years after he sent a cease and desist letter to the City.
The district court cited the City’s argument that allowing Garcia to enforce his claimed rights against the City, 14 years after the City expanded its program and invested millions of dollars into the program, could unfairly prejudice the City. This is laches as a matter of law. Opinion, p.2, citing defendant’s Memorandum.
Citing Chattanoga Mfg., Inc. v. Nike, Inc., 301 F.3d 789, 792-99 (7th Cir. 2002) ( also involving a 14-year delay), the district court found that there was no genuine issue of material fact, and the City was entitled to a judgment as a matter of law pursuant to Rule 56.
Accordingly, the district court dismissed the action with prejudice.
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