Statute of Limitations and Laches in Trademark Infringement: U.S., California, and the 9th Circuit

Grasping the time constraints for lodging a trademark infringement claim is vital for both trademark owners and accused infringers. In the U.S., there’s no federal statute of limitations that specifically applies to trademark infringement under the Lanham Act. Instead, courts use either the state law trademark infringement statute of limitations if there is one, or a claim that is similar to trademark infringement, which in some cases may be for fraud or unfair competition. To make things even more interesting, when discussing trademark infringement claims, particularly around their enforceability, we also need to address—if only briefly—the equitable doctrine of laches.

1. Statute of Limitations for Trademark Infringement in the U.S.

In contrast to copyright or patent law, the Lanham Act does not lay down a period of limitations for claims of trademark infringement. Courts, whether federal or state, therefore turn to the relevant state law and apply its limitations period. Many courts apply the limitations period for fraud or unfair competition, which generally runs from three to six years, however there are other considerations discussed below.

Key Points:

• The Lanham Act has no federal statute of limitations.
• Courts often use state analogs, usually with a 3-6 year timeframe.
• The “discovery rule” might extend the time period in cases of concealed infringement.

2. The Doctrine of Laches in Trademark Infringement

Even if a claim is made in the time allowed by the statute of limitations, it may nevertheless be precluded by the doctrine of laches. Laches is an equitable defense that, if proven, keeps a trademark owner from enforcing his rights if the owner has unreasonably delayed taking that action (and for a duration that the law does not permit), and the delay has prejudiced the alleged infringer.

Elements of Laches Courts Consider:

• Unreasonable Delay – The trademark proprietor realized or ought to have realized there was an infringement taking place and failed to take action promptly. Therefore, the Courts will look at the length of time of the delay, plaintiff’s knowledge or should have known of the infringement.
• Prejudice to the Defendant – The delay harmed the alleged infringer in ways such as continued investment in branding, marketing, or product development.

Courts examine laches on a case-by-case basis. They consider how long the delay was and whether it was excusable.

3. Statute of Limitations and Laches in California

California courts frequently use the unfair competition four-year statute of limitations (Cal. Bus. & Prof. Code § 17208) when applying trademark infringement claims. If a claim is made after this period, enforcement may be barred by laches even if the statute of limitations doesn’t apply.

4. The 9th Circuit’s Approach to Laches

Applying laches rigorously in trademark cases is the specialty of the 9th Circuit. Courts in this jurisdiction consider not only how long the delay has been but also what the reasons for it are, usually laying a burden on the plaintiff to explain and justify the delay.

• Jarrow Formulas, Inc. v. Nutrition Now, Inc. (9th Cir. 2002) – While not trademark infringement, the court decided that a claim for false and misleading statements under § 43(a)(1)(B) of the Lanham Act could not succeed after a seven-year delay in filing the claim (time from the initial accusation to filing the complaint), and that such a delay was unreasonable and barred by laches.
• Grupo Gigante S.A. De C.V. v. Dallo & Co., Inc. (9th Cir. 2004) – The court maintained that laches is a valid defense in trademark cases and that a trademark owner who knows of an alleged infringement but waits or was forced to act is in a poor position to claim that an infringer should be stopped.

Key 9th Circuit Principles:

• The 9th Circuit frequently views the limitations statute as a measuring stick for deciding if a delay is not reasonable.
• Judges determine if a defendant has been hurt because a plaintiff was slow to act.
• Laches can keep a wrongdoer from being ordered to pay, but it might not always prevent a judge from telling a wrongdoer to stop doing a harmful act, depending on the situation.

5. Practical Considerations for Trademark Owners

Proactive Trademark Enforcement:

• Carry out surveillance on potential infringers and come down on them like a ton of bricks if they infringe.
• Keep a diary of all conversations and keep all evidence that has to do with suspected infringement.
• If it seems like you really need to use the law to protect your rights, consider having counsel prepare a cease-and-desist letter to the alleged infringer. But be keenly aware of the statute of limitation period in your state or the relevant jurisdiction, and be prepared to hire counsel to file a complaint before the relevant deadline or date.

Defenses for Alleged Infringers:

Defend against claims using the legal principle of laches if the claimant has sat on his or her rights for an unreasonable amount of time. To do this:

• Assemble evidence that demonstrates the trademark owner’s delay and failure to enforce the mark in a timely manner.
• Seek out anything that might be useful in proving the plaintiff was not just inactive but was affirmatively leading the defendant to believe that the mark was not enforceable.

Conclusion

The time limit for bringing suit and the doctrine of laches are very important in trademark infringement litigation in the United States, particularly in California and the 9th Circuit.

They are defenses for an alleged infringer when the owner of the mark has not been sufficiently vigilant in enforcing the mark, and when the mark owner has been too slow in suing for infringement.