Pinkette Clothing v. Cosmetic Warriors
In Pinkette Clothing, Inc. v. Cosmetic Warriors
Limited, dba Lush Handmade Cosmetics (“CWL”), CWL filed a trademark
infringement suit against Pinkette, seeking
cancellation of its trademark registration because of the likelihood of
confusion as to the use of the label “LUSH” on clothing. The U.S. Ninth Circuit Court of Appeal
affirmed the district court’s judgment in favor of Pinkette, and found that CWL
waited too long to bring its case and that the unreasonable delay prejudiced
its opponent.
To
understand the court’s holding, a brief procedural summary is essential. Pinkette filed a trademark registration for
the use of the “LUSH” mark on clothing (sold in major department stores and
smaller fashion boutiques) in 2009. CWL,
who operates over 900 “LUSH Fresh Handmade Cosmetics” retail stores throughout
the world, asserted that Pinkette’s use of “LUSH” was confusingly similar to
that of CWL’s use of the “LUSH” mark (which has been used since 1995). CWL claimed it was not aware of Pinkette’s
LUSH mark until years after Pinkette’s mark was registered (while it did not
oppose Pinkette’s registration of the LUSH mark in 2010, because Pinkette’s
LUSH mark was registered, CWL was on constructive notice of Pinkette’s claim to
ownership). CWL claims to have no actual
knowledge of Pinkette’s use of the LUSH mark until late 2014 and, shortly
thereafter, it filed a petition to cancel Pinkette’s registration with the
Trademark Trial and Appeal Board. Pinkette
also filed an action in federal court seeking declaratory judgment (regarding
not infringing on CWL’s trademark rights or, alternatively, that laches bars
CWL from asserting rights against Pinkette).
In
affirming the district court’s ruling, the Ninth Circuit Court of Appeal found that
the district court did not abuse its discretion in applying laches to bar CWL cancellation
and infringement claims against Pinkette because
CWL waited too long to bring its case after it “should have known about its
claims.” The Lanham Act contains no
statute of limitations, and thus, courts apply a presumption in favor of the
defense of laches if the plaintiff’s delay is longer than the most analogous state
statute of limitations. In trademark cases, even if the defense is
asserted within the most analogous state limitations period, the laches defense
may still apply - this is unlike with patents and copyrights which have a
federal statute of limitations. In this
case, California’s analogous four-year statute of limitations for trademark
infringement was the most analogous statute of limitations, and the court found
that because the delay was beyond four years, a “strong presumption in favor of
laches” applied. The court further
concluded that due to the laches defense, CWL can neither enforce its trademark
rights against Pinkette’s use of LUSH on clothing nor cancel Pinkette’s
registration for use of the mark on clothing.
This case sheds light on the often forgotten
equitable defense of laches and reminds all that it still applies in trademark
cases even though the Supreme Court has eliminated it in the last few years in
copyright and patent cases.
Authored by Jennifer T. Poochigian
