CHICAGO (LAWFUEL) – Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the United States, today announced that Judge Milton I. Shadur of the U.S. District Court for the Northern District of Illinois has ruled in favor of its client, the City of Chicago, in a trademark infringement case, Rudolfo Garcia v. City of Chicago, involving the City’s well-known 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.
“This decision confirms that the City is free to continue to use the well-known GRAFFITI BLASTERS name for its graffiti removal service without fear that it is infringing the rights of the plaintiff,” said Philip A. Jones, a shareholder at Brinks Hofer Gilson & Lione and lead attorney for the City. “The court recognized that the delay in filing suit was so long that the City would be unfairly prejudiced if the case were allowed to continue.”
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.
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.
The Brinks attorneys representing the City of Chicago in this matter were Philip A. Jones, John T. Gabrielides and Joshua Frick.
Started by Mayor Daley in 1993, Graffiti Blasters offers a free graffiti removal service to private property owners. The City’s Department of Streets & Sanitation crews remove gang-related, street art and other types of signage vandalism with “blast” trucks or paint crews that erase or cover up markings. Graffiti Blasters recently celebrated its 15th anniversary in operation and boasts that it has cleaned more than 1.6 million instances of graffiti vandalism. The program has become one of the most popular municipal services offered by the City of Chicago and a role model for other cities.
Founded in 1917, Brinks Hofer Gilson & Lione is based in Chicago with five other offices across the country serving the intellectual property needs of clients from around the world. The firm is one of the largest IP law firms in the country, with more than 180 attorneys, scientific advisors and patent agents specializing in intellectual property litigation and all aspects of patent, trademark, copyright, trade secret, unfair competition, intellectual asset management, and technology and licensing agreements. Brinks routinely handles assignments in fields as diverse as electrical, chemical, mechanical, biotechnology, pharmaceutical, nanotechnology, Internet and computer technology, as well as in trademarks or brand names for a wide variety of products and services. For more information, please visit www.usebrinks.com.
