It’s not a law (as in statute), if that’s what you’re asking. It is however part of the legal environment where trademarks reside. And, to be clear, it is not the act of defending the trademark that is the issue, but the prevention of a trademark becoming a generic reference to a class of goods which may or may not have a certain trade origin.
The wiki section on generic trade marks is rather a good summary on this.
In corporate law, “doing your job.” Heh.
No, just no.
He said: “[the law] says you have to show that you are actively protecting your trademark.”
Please do not bring up genericide. It’s not relevant here.
He is talking about laches (I think). He seems to imply that the law (what law? Italian?) requires a trademark owner to know about potential infringement as soon as it happens. :dubious:
I think that, in the context of internet discussion, when people bring up the “oh noes they have to defend it or they’ll lose the trademark!” point, they’re talking about generification. You don’t see the same point come up in respect of copyright and patents, for example.
If that’s true, on this board, I think that we should address the root of this “they have to protect it” meme. You could say that it’s a completely baseless meme and dismiss it out of hand, but there is kind of a kernel of truth in that meme - if people use the mark “escalator” to refer to all kinds of moving stairways and not Escalator brand moving stairways, and the owner of the Escalator mark doesn’t do anything about it, the “Escalator” mark could easily become generic. The owners should therefore do everything they can (including TM actions) to prevent this from happening.
This situation is unlike copyright and patent, for example, when you can choose when you want to enforce your rights, and even if you never enforce your rights, there is never any danger that you will lose your rights. I seem to recall that, at least in English law, there is positive case law to state that a patent owner will not lose their rights due to non-enforcement (although I can’t recall what the case is right now… some poetic comment about budding roses or something).
Laches, on the other hand, would only be effective against that particular defendant. I don’t think that that could be extended to “they’ll lose the TM”, which is the meme. People (even in this thread!) seem to latch on to the company sending out C&D letters in general, and not to each and every potential defendant, stating that that will be sufficient to “stop the company from losing the TM”. Sounds more like generification than laches to me…
Gah. Missed my edit window. Anyway, the idea of the distinctiveness of trademarks is part of TRIPs, so it’s as universal a “law” as you can have. I think it’s reasonable to talk about laws which are widely implemented in very similar forms in jurisdictions all over the world.
I just remembered, save for the limitation period, of course. Depending on jurisdiction, I think it’s generally 6 years from date of infringement.
I’m always curious, when I read this particular line of thinking, what you would do if your lawyer refrained from telling you about a right that it was to your substantial benefit to exercise, because of his/her concern that if he did so you might use his services (and pay him fees) in exercising your right. Would you thank him for his extreme probity or sue him?
You’re so generous! 
But when you give with one hand you take away with the other because generification is completely irrelevant in this thread. So … what are you saying? That the person who brought it up doesn’t know what they are talking about? I will agree with you on this point. 
I have seen it come up, even here on this board.
Yes, I know, SOMEONE ONE THE INTERNET IS WRONG! But this meme has become all anyone knows about trademark law, and it’s not even really correct. So, yeah, people here should be told. There is a kernal of truth to it, but … it’s just not correct. Agree with you here too.
Disagree with you here. Laches applies to copyright and patent law. Read case law from Europe Asia and the Americas. You can’t always just sit on your rights.
It’s not just TRIPS but Paris convention, Madrid protocol, and other international treaties. But that’s just a surface interpretation of uniform regulation. Scratch the surface and you’ll see the differences in how those laws are applied in both the courts and in the executive branches. It’s nowhere near to uniform at the moment.
I think you confused yourself a bit when you started out talking about generification and then finished up by talking about limitation periods for filing suit. They are almost completely unrelated. And the company in question is Italian, why would they file an imaginary suit in America if the law there was against them? 
They think the lawyers are strongly advising the client to litigate when the actual need to litigate is insignificant. Not an absurd idea. I’m sure it has happened.
A good lawyer would bring any suspected infringement to the attention of the client and then ask the client if they want a legal opinion of the potential threat.
People are saying that if the company doesn’t defend it’s TM rights, they lose those rights. I’m saying that that’s a misunderstanding of genericification, as that’s the only context in which if you don’t enforce your rights (loosely speaking) you lose those rights.
Well… Not in my experience. Might be possible.
Laches operates as an equitable defense against a single defendant. You wouldn’t say that, even if one defendant did succeed on a laches defense against TM infringement, that plaintiff could no longer enforce their TM rights in an unrelated suit. In layman’s terms, you wouldn’t say that the plaintiff “lost his TM”, in other words. That’s why I’m not convinced that the meme is about laches. Laches would be more akin to the limitations period (which is why I brought it up in the subsequent post - sorry, a bit scatterbrained today).
Imaginary suit? I thought they just issued a C&D. Anyway, I just wanted to address the “they’ll lose the TM” meme in this thread. No sense in allowing ignorance to propagate. If nothing else, people in this thread have hopefully learned that you can’t just lose your trademark for not enforcing it, unless the TM has become generic (because of your inaction or in spite of it), and that if you let people think that they can use your TM, you might be prevented from suing them.
Didn’t that Jared guy promote Subway sandwiches without Subway’s involvement for a while before they brought him in-house? Did they have to sue him?
It occurs to me that I should bring my tangent back on the point of this thread. Nobody has to sue anybody. But, companies like to maintain control of their brands. Some companies do it by suing people who are using their trade marks and getting too close to sounding like sponsorship, like Nutella. Some companies do it by gaining control over those people by hiring them (Subway).
It is however exceedingly unlikely that a company has to sue someone so that they don’t lose their trade mark.
2 girls, one tub of Nutella.
They could have bought her out. They could have hired her.
Nutella has been around since forever, and it’s only lately due to bloggers and pinners that it has become the phenomenon that it has. Same as Sriracha.
Stupid corporate monkeys.
Okay, then you’re also wrong, along with the others.
There are many circumstances, besides generification, where you can lose your rights to enforce a trademark by not enforcing them. I’m not going to list them all here. There’s a lot.
What might be possible? That I told you I’d seen as a fact that someone on this board claimed that ‘if you don’t use it then you lose it’ was a fact for all IP law, might be possible?
Whoop there it is.
“an equitable defense against a single defendant?”
You have stumped me, and I can’t read anymore until you explain what you mean.
Educate me, then. I’m not aware of any. Having a specific claim barred due to estoppel, laches, limitations, sure. But losing a trade mark, having it invalidated? Not that I’m aware. I’d like to know what these ways are.
And your quoted post was in response to the following post.
Whoa, trademark. Sure, people confuse trademark and the rest of IP all the time. But you could have looked for a better example.
You brought up laches, which is an equitable remedy akin to the statue of limitations. Wiki has a reasonable summary. Laches (equity) - Wikipedia
It bars a plaintiff from claiming against a particular defendant, but does not bar the same plaintiff from claiming on the same right against a separate defendant. And it as an equitable remedy would certainly not be able to invalidate a trade mark.
What do you understand by laches, and how would laches cause a person to “lose his TM”? I’d like an example, if you could. I’ve already given examples of how generification can cause a person to “lose his trademark” I.e. invalidated due to lack of distinctiveness.
I’m just not seeing a claim barred by laches or estoppel or similar being described as “lost the TM”. But if you think that’s the correct interpretation, that’s your prerogative.
Incidentally, as an equitable remedy, I would not expect Europe or the other civil law jurisdictions to have such a remedy. But a lawyer in the civil tradition might be able to correct me on that.
Well, given that Nutella has rescinded their C&D order and is going to allow the site to stay open, it’s clear that they don’t believe not suing her will cause them to lose their trademark.
OK, but you owe me.
Don’t misquote me. There are rules about that on this board, and yes the removal of small, seemingly insignificant, words matters.
Go back to the (my) original question.
"Which law, specifically, says this? "
Do you know what the answer is?
I know (vaguely) what the answer is in the US, but more importantly I know why the answer is what it is and why it might differ for the next case brought to trial, and why it might again differ depending on where it is brought to trial.
The point is, I don’t agree that the law of any country (and the company in this issue is an Italian based company) says that trademark owners have to aggressively defend their marks. It’s just not that simple. It’s just not true. It could cause a lot of trouble to people who take it to heart. That’s what pisses me off. Have you ever heard of commercial disparagement?
Your linking to the wikipedia page on laches seemed like you’d never heard the term before. Maybe it was helpful to some people who don’t know how to search wikipedia by keywords. Well done! It didn’t really do anything for me though. I’m not sure what you were trying to do? - Imply that I don’t understand the subject that I brought up? Go you, by linking to wikipedia!
“But you could have looked for a better example”?
OK, I’ll pass the task to you. Please find a better example that someone on this message board believes that all IP law must be aggressively defended. You obviously think there is a better example out there to find, so go find it.
et al. The legal system involved is the Italian one. While I’m not familiar with it, I’d bet dollars to Donuts™ its treatment of trademark protection is going to be different from the American one.
Why the fuck are you guys arguing when you guys both agree that the common wisdom (about fighting a trademark always being necessary) is wrong? If you can’t be bothered to provide citations for your part of the argument, why even bother getting involved? If you’re going to correct someone, correct them, instead of just giving wishywashy statements about how they are wrong.
Either show some balls and say what these other cases may be instead of hiding because you are afraid you may get it wrong. Or, yes, just let it go, since you both largely agree.