Legal Question in Intellectual Property in Texas

I have a couple of questions. 1) Does a trademark owner ever "sleep on his rights and lose ability to enforce?" I ask because my

friend has been selling an item on ebay for years and never had a problem. He says he will stop if he receives a cease-and-desist letter but

5 years have gone by and nothing. So he continues to sell - a lot and lots of money.

I can't say exactly what he sells but for illustrative purposes, let's call it a Donald Duck warm-up suit.

I know lots of Official Donal Duck products are sold but is it possible the trademark owner just does not care about my friend's listings.

Also, 2) is there any chance of criminal action if no cease and desist letter was sent?

thanks

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Asked on 2/13/14, 12:44 pm

1 Answer from Attorneys
Bruce Burdick Burdick Law Firm

Yes, there are "laches and estoppel" defenses if a trademark owner knows of an infringement and fails to take action. However, just because someone infringes does not mean the tm owner knows of it. Obviously the tm owner cannot do anything until the tm owner becomes aware of the infringement. And, some tm owners do not bother with small timers. If your friend (who is really YOU, right?) is doing this in a big way, then there is a large liability building.

Yes, there is always a chance of criminal action, but that is done by Government not by a company, although the company might have sufficient political connections to get the US Attorney, for example, to charge the criminal violations. The penalties for criminal trademark and copyright can be enormous, in the millions and they are felonies with multi-year sentences possible.

Your "friend" better see an IP attorney and get the defenses going on this to mitigate risk.

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Answered on 7/24/14, 2:24 pm


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