Andrew Gold on Laches, Common Law Trademark Rights, and Anti-Cybersquatting Safe Harbors
Two bands have shared a common name, the "Wailers," for many years. One band is famous, one is not. The un-famous band (Plaintiffs) has been using the name since 1959. The famous band has been using variants on the name since as early as 1964. Each band has been performing continuously until the present time, and the un-famous Wailers knew about their more famous namesakes since the 1970's. The famous Wailers registered the domain name "Wailers.com" in 1998, but never sought to register the mark with the United States Patent and Trademark Office. The un-famous Wailers sought registration of the name "Wailers" with the USPTO in 1999. Plaintiffs obtained registration of the mark in 2003. After decades of apparently peaceful coexistence between the bands, in 2007 the un-famous Wailers filed suit against their more famous brethren. Summarizing the Ormsby v. Barrett case, Andrew M. Gold writes:
In what should have come as no surprise to the Plaintiffs, the court granted Defendants’ motion for summary judgment, finding (1) that Plaintiffs had waited too long to invoke any exclusive rights they might have once had, (2) Plaintiffs’ trademark registration did not “wipe out” Defendants’ prior, non-registered common law rights, and (3) Defendants’ registration of the domain name “Wailers.com” fell within the “safe harbor” provisions under the Anti-Cybersquatting Consumer Protection Act afforded to good faith registrants.
In their lawsuit, Plaintiffs alleged causes of action for trademark infringement and unfair competition under the Lanham Act (15 U.S.C. § 1114(1) and 1125(a)); dilution under the Federal Trademark Dilution Act (15 U.S.C. § 1125(c)); violation of the Anti-Cybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)); and common law unfair competition.
Defendants moved for summary judgment on all of the causes of action, arguing that Plaintiffs’ claims were barred by the doctrine of laches. Among other things, Defendants noted that Plaintiffs admitted that they had been aware of a group known as the Wailers since as early as the 1970’s [sic]. Defendants also pointed out that they had registered the domain name “wailers.com” in 1998, nine years before the lawsuit.