Brinks Hofer Gilson & Lione recently announced that U.S. District Judge Milton I. Shadur ruled in favor of its client, the city of Chicago, in a trademark infringement case, <em>Rudolfo Garcia v. City of Chicago</em>, involving the city’s Graffiti Blasters program.
The Court granted the city’s motion for summary judgment on laches grounds, which asserts that an opposing party has “slept on its rights” because it delayed too long in bringing suit, and is therefore no longer entitled to relief on its original claim. The case was dismissed with prejudice, thus ending the matter.
In October 2007, plaintiff Rudolfo Garcia sued the city of Chicago, claiming infringement of its service mark “Graffiti Blasters,” the name of his business, which removed graffiti from buildings and other sites and was alleged to have been in operation since 1985. A service mark differs from a trademark in that the mark is used to identify a service rather than a product.
The city showed that Garcia filed this case 14 years after he first became aware of the city’s use of the Graffiti Blasters name and 10 years after he sent a cease and desist letter to the city. The court noted that the city’s activities in building the GRAFFITI BLASTERS name were “staggering.” By the time Garcia filed suit, the city had cleaned more than 1,000,000 sites, invested significantly in the promotion of the Graffiti Blasters name and program and had garnered widespread goodwill and renown, according to the firm.
The court found that Garcia’s 10-year silence between his exchange of communications and the commencement of his suit in 2007, coupled with the city’s considerable activities and expenditures in the interim, provided a “poster child for a laches defense,” according to the opinion.
Brinks shareholder Philip A. Jones said the challenge was how best to make the laches defense, and how best to support this defense.
“Through paper discovery we were able to get some good evidence that supported when the plaintiffs first knew of the city’s use of the mark, which was pretty important to the laches defense,” he said.
He said he hopes this case helps people understand that “laches is a valid defense for a trademark case … If you have the facts and can support it when moving through summary judgment, that [defense] can be an effective vehicle for the client.”
Besides Jones, the Brinks attorneys representing the city in this matter were John T. Gabrielides and Joshua Frick.