Podcast Episode 16—What is “Acquiescence?”
Podcast Episode Timestamps
00:00 — What is “acquiescence” in the context of trademark infringement?
00:06 — Intro
00:30 — This quick episode follows up on the “what is laches?” episode—covering equitable defenses to trademark infringement.
01:14 — What are equitable remedies? An injunction is one type.
01:33 — The three elements of an acquiescence defense.
01:56 — Element 1: assurance
02:37 — A couple examples where acquiescence has been used
02:54 — Is silence enough to constitute assurances?
03:25 — Element 3: undue prejudice
04:05 — The takeaway from this episode
04:47 — Final thoughts and reminder to check the show notes
05:16 — Outro
Why This Topic?
During part of episode 1 of the Keith Law, PLLC Podcast, I briefly touched on trademark infringement defenses, including equitable defenses. One of the equitable defenses is called “laches” (generally, unreasonable delay) and it was pointed out that, although I mentioned the word, It might be helpful to explain what it means in more detail. So, in episode 8, I tried to describe the concept of “laches” in more detail.
Another of the equitable defenses is called “acquiescence,” and in this brief blog post and podcast episode, I will go over the elements of this defense to a trademark infringement claim.
Equitable Remedies and Defenses
Seeking the injunction for trademark infringement will be subject to the alleged infringing party’s (i.e., the defendant’s) available equitable defenses, if any. Because an action for injunction of infringement is equitable in nature, the availability of injunctive relief is subject to the common equitable defenses—called “laches,” “acquiescence,” and “unclean hands.” This blog post and related podcast focusses on acquiescence.
In general, an acquiescence defense requires that a defendant satisfy three elements: (1) it received assurances from the plaintiff that the defendant could use the mark; (2) it relied on such assurances; and (3) it would experience undue prejudice if it now had to cease use of the mark.
“Acquiescence” involves a plaintiff’s explicit or implicit assurances to a defendant that induces reliance. As distinguished from laches, acquiescence constitutes a defense only on a finding of conduct (express or implied) on the plaintiff’s part amounting to assurances that the plaintiff will not assert trademark rights against the defendant. Acquiescence involves the plaintiff’s active consent.
Acquiescence has been successfully asserted in cases in which the prior owner of a surname used as a mark did not object to its assignment or use by another person, or in which one party has acquiesced in another person’s use of a mark by promoting the other party’s use.
It has at times been said that permission to use a mark may also be inferred from silence. But, a 2020 opinion out of a federal trial court in the Eastern District of Texas persuasively argues that silence has never been sufficient to satisfy the first element of an acquiescence defense to trademark infringement. According to the court, arguments to the contrary improperly interpreted past judicial decisions.
“Undue prejudice” required to establish an acquiescence defense in a trademark infringement case means that the defendant has taken steps, such as making significant investment decisions or building a large part of its business, based on the presumption that it had permission to use the plaintiff’s mark, and that this investment or capital would be lost if the defendant could no longer use the mark. It is not enough that the defendant will bear costs in removing the infringing mark that it has been using. Although a defendant may be prejudiced if it relies on the plaintiff’s mark to expand its business, prejudice is rarely, if ever, found merely because the defendant used the infringing mark in commerce (or spent money on products that use the mark).
It’s important to be careful not to take any action that may be interpreted (or misinterpreted) as granting permission to use your business’s trademarks. Otherwise, if another business relies on such assurances, the defense of “acquiescence” may prevent you from stopping them from using it later on if you decide it would be valuable to do so—for example, if you are interested in selling your business and the buyer wants to know that it has exclusive rights to your business’s intellectual property.
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.