Metropolitan News-Enterprise


Monday, July 2, 2018


Page 3


Ninth Circuit:

California Time-Bar Applies to Federal Trademark Infringement

Noting the Lack of a Statute of Limitation in Lanham Act, Appeals Court Says a Finding of Laches Can Be Based on Whether the Action Would Have Been Timely for State Trademark Violation


By a MetNews Staff Writer


A panel of the Ninth U.S. Circuit Court of Appeals on Friday affirmed the dismissal of a trademark infringement case brought against a local clothier, saying that because the Lanham Act contains no statute of limitation and expressly makes laches a defense to cancellation, state law should be consulted in determining if the action is timely.

The defendant in the case is Pinkette Clothing, Inc., a Los Angeles company that sells clothing under the “LUSH” label. Plaintiff Cosmetic Warriors Limited (“CWL”) markets cosmetics under a brand with the same name.

Pinkette registered a trademark for use of the name on clothing in 2010, eight years after the United Kingdom-based CWL began selling cosmetics in the United States. CWL attempted to register the LUSH name as a trademark for use on clothing in 2014, but its application was rejected due to Pinkette’s preexisting mark.

Petition to Cancel

CWL in 2015 filed a petition to cancel Pinkette’s use of the trademark. In response, the clothier filed an action in federal court seeking a declaratory judgment that it had not infringed CWL’s trademark rights or, in the alternative, that CWL was barred by laches from asserting its claim.

U.S. District Judge S. James Otero of the Central District of California awarded judgment to Pinkette, holding that laches barred the British company from obtaining relief.

Circuit Judge Jay S. Bybee wrote the opinion affirming Otero’s judgment. Bybee rejected CWL’s analogy to U.S. Supreme Court cases such as Petrella v. MGM, a 2014 case which held laches was unavailable in copyright infringement cases.

“The Supreme Court has held that laches is not available as a defense to claims for copyright or patent infringement brought within the limitations periods prescribed under the Copyright and Patent Acts,” Bybee wrote.

Analogous State Law

Those acts provide specific statutes of limitations, he noted, while the Latham Act, applicable to trademarks, does not. He said it was, therefore, necessary to look to the most closely analogous state law.

The California statute of limitations for trademark infringement is four years, Bybee pointed out, noting that CWL had waited nearly five years after Pinkette’s registration of the mark before bringing suit.

“Because CWL delayed beyond the expiration of the most analogous state statute of limitations, a strong presumption in favor of laches arises,” he wrote.

The case is Pinkette Clothing, Inc. v. Cosmetic Warriors Limited, 17-55325.


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