February 2014: Trademark Litigation Update

Trademark Laches: An Effective Exit in the Right Circumstances. Delay-based defenses in trademark cases are rarely an effective way for a defendant to exit a case before discovery. Statute of limitations defenses almost never dispose of so-called continuing tort cases, where every new act of alleged infringement is often held to start its own limitations clock running. Instead, the statutory period in these cases usually works only to limit the time frame for the plaintiff’s recovery for damages, even if the plaintiff waited decades to bring suit.

In cases based on a single instance of infringement, the defense of laches can result in a complete dismissal in trademark cases, barring all past damages and prospective relief, such as injunctions. See, e.g., Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 840 (9th Cir. 2002); Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 190, 192-93 (2d Cir. 1996); Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 824 & n.3 (7th Cir. 1999). It is generally more difficult to establish laches in a continuing tort case than a statute of limitations defense in a case premised on a single occurrence, such as a personal injury, where the defendant needs only to prove that the date of the occurrence, or the date it was discovered or should have been reasonably discovered, is outside of the limitations period. This is because laches applies only where the defendant can prove that the plaintiff unreasonably delayed in bringing suit and that prejudice would result.

In most jurisdictions, laches is presumed to apply if the delay is longer than the statute of limitations period. See, e.g., Conopco, 95 F.3d at 191; Santana Prods. v. Bobrick Washroom Equip., Inc., 401 F.3d 123, 139-41 (3d Cir. 2005); Lyons Partnership, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 799 (4th Cir. 2001); Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 408 (6th Cir. 2002); Hot Wax, Inc., 191 F.3d at 821; Jarrow Formulas, 304 F.3d at 837; Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir. 1997). Even in a jurisdiction that does not apply the presumption, or where the plaintiff has offered some evidence to rebut it, a long delay can decrease the level of prejudice the defendant needs to prove. See, e.g., Goodman v. McDonnell Douglas Corp., 606 F.2d 800, 807 (8th Cir. 1979); accord Hot Wax, Inc., 191 F.3d at 824; Miller v. Glenn Miller Productions, Inc., 454 F.3d 975, 1000 (9th Cir. 2006).

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