In March 2009, Willenken secured a victory on behalf of firm client, ISWest, before the U.S. Court of Appeals for the Ninth Circuit.
Four years earlier, the firm filed suit on behalf of ISWest against Milon-DiGiorgio Enterprises (MDE), a competing internet service provider (ISP), alleging that MDE was using a confusingly similar mark, ISPWest, in connection with its business and product offerings. The matter went to trial in November 2006. After two weeks, the firm secured a jury verdict in ISWest’s favor. Subsequently, the district court rejected MDE’s laches defense and issued a broad injunction prohibiting MDE from using the mark ISPWest in a confusing manner.
MDE’s appeal from the trial court’s judgment was appealed to the Ninth Circuit. In its opinion, the trial court affirmed the district court, finding that, as ISWest had argued, MDE had not shown “economic prejudice,” which is one of the elements of a laches defense. The decision, which appears at 559 F.3d 985, represents the first time that the Ninth Circuit has explained what constitutes “economic prejudice” in this context.