Trademark infringement litigation typically centers around requests for injunctive relief. Although monetary relief is regularly sought, damages are awarded in only a small percentage of cases. Because the courts’ equitable powers are called upon, the principles (and maxims) of equity are frequently invoked, including unclean hands (“he who comes into equity must do so with clean hands”) and laches (“equity aids the vigilant, not those who slumber on their rights”). Because the consuming public’s interest in not being exposed to confusingly similar trademarks is held to be paramount to the interests of the private litigants, an interesting body of laches case law has arisen regarding the circumstances in which a plaintiff’s delay in taking action is so inexcusable that it can be barred from all relief.
There are two types of injunctions that come into play in trademark cases: preliminary and permanent. Not surprisingly, the delay that can bar a preliminary injunction or temporary restraining order is much shorter than that which will bar permanent relief; the former is measured in weeks or months, the latter in years or even decades.
Many trademark cases involve requests for preliminary injunctions, and the courts typically take a particularly hard look at how quickly plaintiffs have acted to seek this extraordinary relief. The reason is that in order to prove entitlement to preliminary injunctive relief, a plaintiff must prove that it is likely to succeed on the merits of its infringement claim and that it is suffering irreparable harm. The courts have found that a delay of even a few months between the time a plaintiff “knew or should have known” of the alleged infringement and the filing of a motion for a preliminary injunction can bar the relief, as such delay undercuts the claim that a party is suffering immediate irreparable harm.
The U.S. Court of Appeals for the Second Circuit has for many years been the strictest court in the country on this issue and has been willing to reverse the issuance of a preliminary injunction where it finds the plaintiff has inexcusably delayed. It should be noted that in this context, the plaintiff’s delay is the sole focus, and the courts do not even inquire into whether the defendant has suffered prejudice as a result of the delay, typically the second prong of the laches inquiry. Thus, in the seminal decision of Citibank N.A v. CityTrust,1 the Second Circuit reversed the entry of a preliminary injunction, finding that the plaintiff had delayed for 10 weeks after receiving actual notice of the defendant’s use, that it “should have known” of defendant’s use months earlier, and that, as a result, the plaintiff’s claim of irreparable harm was rebutted by its delay in seeking relief.
Since the Citibank reversal in 1985, the district courts within the Second Circuit have taken a hard line on the plaintiff’s need to quickly seek preliminary injunctive relief or else lose the presumption that irreparable harm is occurring. Thus, studies establish that courts within the Second Circuit are significantly less lenient than the district courts in other circuits.2 Delays of up to six months or more are sometimes excused in other courts, but within the Second Circuit, delays of more than three months are rarely excused.
When a defendant asserts a laches defense on the merits of a trademark infringement claim, it bears the burden of proving inexcusable delay, and
SERVING THE BENCH
AND BAR SINCE 1888
VOLUME 251—NO. 57
WEDNESDAY, MARCH 26, 2014
Laches in Trademark Infringement:
How Long Can You Sleep on Rights?
PATENT AND TRADEMARK LAW
ROBERT C. SCHEINFELD is the partner-in-charge of, and head of the intellectual property group in, the New York office of Baker Botts.
Robert C. Scheinfeld
its own prejudice resulting from that
delay. Even where a laches defense is
held to apply, some courts are hesitant
to find that it bars all relief, including
an injunction. That is because of the
public interest and the concern that
consumers will suffer confusion in
the absence of an injunction, despite
the plaintiff’s seeming lack of concern
regarding confusion during the many
years it delayed in taking action. However,
the longer the delay, the more
willing the courts appear to be to find
that laches will bar all relief, including
a permanent injunction.
How Long Is Too Long?
The answer to this question is “it
depends.” Trademark cases are highly
fact-specific in nature, and as a result,
there is no specific time period, such
as a statute of limitations, which the
practitioner can look to in determining
whether laches applies, and if so,
what relief will be barred. However,
some guidelines can be gleaned from
the case law. In order for laches to
apply on the merits of a claim and
with respect to permanent relief, the
plaintiff’s delay will likely need to have
been for several years. For laches
to bar all relief, the delay will likely
need to be longer than three years,
although a delay of less than four years
has resulted in all relief being barred.
In one “outlier” decision, discussed
below, an injunction was found to be
appropriate after a 13-year delay.
In Golden West Brewing Co. v. Milonas
& Sons,3 a three-year delay was
held to bar monetary relief, but not
an injunction. In Columbia University
v. Columbia/HCA Healthcare Corp.,4 a
three-and-a-half-year delay was found
sufficient to bar all relief. Similarly, in
Grupo Gigante SA v. Dallo & Co.,5 the
U.S. Court of Appeals for the Ninth
Circuit found a four-year delay sufficient
to bar all relief, and in Conopco
v. Campbell Soup6 the Second Circuit
reached a similar conclusion due to
a five-year delay. Similar conclusions
have been reached by courts with
respect to delays of six (Valvoline
Oil v. Halvoline Oil),7 seven (see,
e.g., American Dietaids Co. v. Plus
Products)8 and eight years (see, e.g.,
Landers, Frary & Clark v. Universal
Interestingly, there are two circuit
court rulings which involved nine-year
delays and which reached different
results on the question of whether
laches barred all relief. In Layton Pure
Food Co. v. Church & Dwight Co.,10 the
U.S. Court of Appeals for the Eighth
Circuit upheld the grant of an injunction
despite the plaintiff’s nine-year
delay. But this decision dates from
1910 and therefore may have limited
applicability in today’s economy.
In Chattanoga Mfg. v. Nike,11 the U.S.
Court of Appeals for the Seventh Circuit
found that plaintiff’s nine-year
delay in taking action against Nike’s
famous JORDAN trademark was so
“egregious” that all relief was barred,
despite the fact that plaintiff had priority
of use of the JORDAN trademark
and continued to sell JORDAN clothing.
Thus, when viewed in the context
of the above decisions, in which delay
of less than four years has been held
to bar all relief, and longer delays
have resulted in the same conclusion,
the Nike decision would appear
to reflect the “modern” view of the
The one “outlier” decision referred
to above is the Seventh Circuit’s decision
in James Burroughs v. Sign of
Beefeater.12 There, the court held that
a 13-year delay did not bar injunctive
relief. This decision, however, can be
explained by several unique facts. It
was the second time the Seventh Circuit
had reversed the district court,
and in the first appeal the appeals
court had instructed the district
court to enter an injunction, which
it refused to do, finding for the second
time that such relief was barred
by laches. Also, there was evidence
of actual consumer confusion resulting
from the parties’ concurrent use
of the BEEFEATER trademark, and
the defendant had expanded its use
of the mark by opening additional
BEEFEATER restaurants even after
suit was filed. The sui generis nature
of the inquiry is evidenced by the
fact that in its Nike decision more
than two decades later, the Seventh
Circuit did not cite or distinguish Burroughs,
and found that a nine-year
delay barred all relief.
A plaintiff’s delay in taking action is a
potential factor in all trademark litigation.
Even a very short delay can result
in a denial of preliminary relief. A longer
delay and a showing of defendant’s
prejudice resulting from that delay
would seem to be required for a laches
defense to be successful. But the case
law demonstrates that delays as short
as three-and-a-half years can serve to
bar all relief, and delays of four or more
years will likely lead to this result.
1. 756 F.2d 273, 276 (2d Cir. 1985).
2. Edelman, Delay in Filing Preliminary Injunction Motions:
A Five Year Update, 85 Trademark Rep. 1 (1995).
3. 104 F.2d 752 (9th Cir. 1939).
4. 964 F.Supp. 733 (S.D.N.Y. 1997).
5. 391 F.3d 1088 (9th Cir. 2004).
6. 95 F.3d 187 (2d Cir. 1996).
7. 211 F. 189 (D.N.Y. 1913).
8. 412 F.Supp. 691 (S.D.N.Y. 1976) aff’d. 551 F.2d 299 (2d
9. 85 F.2d 46 (2d Cir. 1936).
10. 182 F. 35 (8th Cir. 1910).
11. 301 F.3d 789 (7th Cir. 2002).
12. 572 F.2d 574, 578-79 (7th Cir. 1978).
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A plaintiff’s delay in taking action
is a potential factor in all trademark