IP Tech Knowledgy

A trademark owner can bring an infringement action even if there has been a relatively long delay after discovering the infringement. The catch is that if the owner waits too long, it may not be able to recover monetary damages, but  still can likely obtain an injunction to stop future infringement.  

The Lanham Act, which governs federal trademark cases, does not provide a defined statute of limitations.  Instead, the time in which a federal trademark infringement lawsuit must be filed is based on the theory of laches. At its core, laches is an equitable defense available to an alleged infringer when the trademark owner has unreasonably and inexcusably delayed in filing suit, and that delay creates a detriment to the defendant. Frequently, the period for laches is based on a state’s similar statute of limitations for a state trademark action or unfair competition action. Comparable state statutes are often three years. Some are longer. However, because laches is a flexible equitable remedy, courts are not always strict in applying a deadline as short as a state’s similar statutory deadline. Courts aim for fairness before precluding a plaintiff from bringing a trademark infringement action.  

Notably, a defense of laches applies to the aspect of a lawsuit seeking monetary damages but does not usually negate a trademark owner from obtaining injunctive relief. The law has evolved to reflect the concept that it is appropriate to preclude the trademark owner from obtaining damages if the owner waits too long to sue, but the defendant still should still be prevented from continuing to confuse consumers and perpetuating the harm to the trademark owner. 

However, being an equitable remedy, certain extenuating circumstances will even support a laches defense and allow a defendant to continue its usage, such as when a plaintiff may have abandoned a mark, or the defendant, at a great expense, expanded significantly after the owner’s unreasonable delay. Also, if the plaintiff at some point affirmatively acquiesced to the defendant’s usage, an owner’s injunction and damages claim may be nullified due to the prior actual consent.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com