Federal trademark law requires trademark owners to police their marks. This means that trademark owners must diligently enforce their rights to prevent their marks from being used by others without permission.
Although there’s no fixed statute of limitations for a federal trademark infringement lawsuit, an infringer can raise a defense known as “laches.” The laches doctrine is based on the theory that those who “sleep on their rights” may lose those rights.
In order to establish laches as a defense, the defendant must show (1) that the plaintiff’s delay in filing suit was unreasonable and (2) that the defendant would suffer prejudice caused by the delay if the suit were to continue.
A recent case addressed the validity of the laches defense in a cancellation proceeding. Cosmetic Warriors, which sells LUSH-branded cosmetics, filed a cancellation proceeding against Pinkette Clothing, which sells LUSH-branded women’s fashions.
Pinkette holds a trademark registered with the US Patent & Trademark Office (“PTO”) for use in connection with clothing. Cosmetic Warriors has a number of registrations for LUSH – mostly relating to cosmetics, toiletries and salon services – but none are for clothing.
After Cosmetic Warriors’ own trademark application for use of LUSH on clothing was rejected by the PTO due to a likelihood of confusion with Pinkette’s LUSH mark, Cosmetic Warriors filed a petition with the Trademark Trial and Appeal Board (“TTAB”) to cancel Pinkette’s registration.
Pinkette then sued Cosmetic Warriors in federal court, seeking a judgment that it didn’t infringe Cosmetic Warriors’ trademark rights, or, alternatively, that laches bars Cosmetic Warriors’ claims. Cosmetic Warriors counterclaimed for trademark infringement and cancellation of Pinkette’s registration.
Arguing the defense of laches, Pinkette contended that it should be allowed to continue using its LUSH mark because at the time Cosmetic Warriors filed the petition to cancel, Pinkette had already been using the LUSH mark for nearly 12 years and had held its federal registration for nearly 5 years. The district court agreed and held that the doctrine of laches barred Cosmetic Warriors’ claims.
Cosmetic Warriors appealed, arguing that laches is not a proper defense since it brought its cancellation claim within the five-year period before a mark becomes incontestable, and even if laches were a proper defense, the district court improperly evaluated the defense in this case.
The Court of Appeals for the Ninth Circuit reviewed the relatively recent Supreme Court cases holding that laches can’t bar copyright infringement claims brought within the Copyright Act’s three-year statute of limitations or patent infringement claims brought within the Patent Act’s six-year statute of limitations.
It noted that, unlike the copyright and patent laws, the trademark laws don’t include a statute of limitations and the trademark statutes expressly make laches a defense to cancellation.
The Ninth Circuit went on to uphold the district court’s application of the laches doctrine in this case, ruling in Pinkette’s favor and holding that laches barred Cosmetic Warriors’ claims.
As the above case makes clear, it’s important for trademark owners to police their marks and to enforce their rights within a reasonable time frame.
Please feel free to contact us if you have any questions about registering or enforcing your trademarks.
