How long do I have to file a trademark lawsuit?

Timing in filing a lawsuit is very important. If a plaintiff files too early, the court can say the cause of action is not ripe for review yet and dismiss the case. If the plaintiff files too long after a cause of action occurs, the suit may be barred by laches. The doctrine of laches is based on the idea that it would be inequitable for a party to simply sleep on its rights. Laches is a common law concept which is typically replaced with a statute of limitations when a law is written.

Trademark law in the United States draws from both federal trademark law and state trademark laws, unlike Patent law and Copyright law which are governed exclusively by federal law. A trademark infringement lawsuit is usually brought pursuant to the Lanham Act, 15 U.S.C. § 1051. The Lanham Act contains no statute of limitations, so there is no express limit on how long a trademark owner can wait before filing a trademark infringement lawsuit. But making a defendant liable for trademark infringement which has occurred decades ago seems unfair. So how do the courts resolve issues such as this?

When a federal statute is silent on a point such as statute of limitations, the courts will look to state laws for guidance. The court will use the state laws to fill in the blanks of federal laws.

A case which illustrates how state law is used to fill in the blanks on federal trademark law is Pinkette Clothing, Inc. v. Cosmetic Warriors Ltd., 17-55325 (9th Cir. 2018). In this case the plaintiff is Cosmetic Warriors Limited, a cosmetic retailer that has operated since the 1990s. Cosmetic Warriors started using the brand LUSH on its products before 1996. Cosmetic warriors did produce some clothing with their brand name on it, but it is unclear if any clothing was sold or if it was given to employees to wear in the store. Pinkette Clothing is a clothing retailer, stated in 2003, that sells various retail brands of clothing. One of the Pinkette Clothing brands is LUSH. Pinkette has sold clothing on the website lushclothing.com since 2003. In 2009, Pinkette filed a trademark registration
application for use of LUSH on clothing in the United States which was granted in July 2010.

In December 2014, Cosmetic Warrior filed a trademark registration application for use of LUSH on clothing in the United States, which was rejected because of Pinkette’s preexisting registration. In June 2015 Cosmetic Warrior filed a petition with the Trademark Trial and Appeal Board to cancel Pinkette’s registration. Pinkette filed suit in federal district court requesting a declaratory judgment Pinkette did not infringe on Cosmetic Warrior’s trademark. The district court held that laches barred Cosmetic Warrior infringement and cancellation claims and accordingly entered judgment for Pinkette. Cosmetic Warrior appealed the district court’s decision to the Court of Appeals for the Ninth Circuit.

The Ninth Circuit affirmed the decision of the district court. In its decision the Ninth Circuit stated that unlike Copyright law and Patent law, each of which has its own federal statute of limitations, the federal Lanham Act has no statute of limitations. Rather, the Lanham Act vests courts with the power to grant relief according “to the principles of equity.” 15 U.S.C. §§ 1116, 1117. When analyzing a laches defense, the district court must weigh the plaintiff’s delay and the resulting prejudice to the defendant to determine whether and to what extent laches bars the requested relief, including a request for an injunction. As a result of laches, Cosmetic Warrior can neither enforce its trademark rights against Pinkette’s use of the LUSH mark on clothing nor cancel Pinkette’s registration for use of the mark on clothing.

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