Keith Law, PLLC

Explaining “Laches,” an Equitable Defense to Trademark Infringement

This is a latch, not "laches"

Podcast Episode 8—What is “Laches?”

Podcast Episode Timestamps

00:01 — Topic
00:41 — Laches, and why I’m focusing on it in this episode
01:10 — Statute of limitations for trademark infringement
01:50 — Monetary damages
02:05 — Injunctions
02:35 — Infringement can be considered a continuing tort in Texas
03:03 — Injunctions are equitable remedies, so equitable defenses apply
03:13 — The common equitable defenses
03:33 — What is “laches” and when does it apply?
04:15 — Delay (unreasonable and inexcusable)
05:57 — Undue prejudice
07:09 — The legal effect of laches
08:35 — As often with legal questions, it’s not black or white, but falls on a spectrum of grey
09:11 — Check the show notes
09:28 — Protecting competitive advantages
10:08 — Best wishes and outro

Why This Topic?

During part of episode 1 of the Keith Law, PLLC Podcast, I briefly touched on trademark infringement defenses, including equitable defenses. One of the equitable defenses is called “laches” (generally, unreasonable delay) and it was pointed out that, although I mentioned the word, It might be helpful to explain what it means in more detail. So, in this episode, I’ll try to describe the concept of “laches” in more detail.

What About the Statute of Limitations?

The statute of limitations for trademark infringement varies from state to state. In Texas, the statute of limitations is four years and is the deadline for bringing a lawsuit for monetary damages related to trademark infringement. However, because trademark infringement is treated as a continuing tort, even though there is a four year deadline to seek a money judgment, that is not necessarily the deadline for seeking an injunction—a court order that will include ceasing the infringing activity. (Note, that if the delay in filing suit is because the trademark owner was misled by the infringer, then monetary damages may still be available.)

Equitable Remedies and Defenses

Seeking the injunction for trademark infringement will be subject to the alleged infringing party’s (i.e., the defendant’s) available equitable defenses, if any. Because an action for injunction of infringement is equitable in nature, the availability of injunctive relief is subject to the common equitable defenses—called “laches,” “acquiescence,” and “unclean hands.” This blog post and related podcast focusses on laches.

Laches Defined

Defense of laches requires finding that there was unreasonable delay in asserting right or claim, the delay was inexcusable, and undue prejudice resulted from delay.

Delay

In calculating laches, delay is measured from time trademark owner knew, or in exercise of reasonable diligence, should have known, of the infringement.

Illegitimate Excuses for Delay

A strategy of inaction does not justify sleeping on your rights or provide an explanation for the delay in bringing suit—laches can apply.  Similarly, sending a cease and desist letters does not, as a matter of law, void a laches defense when the objections made in the letter are based on a misrepresentation of the rights to a mark.

Prejudice

The infringing party must prove undue prejudice to benefit from a laches defense. “Whether phrased as ‘reliance’ or ‘prejudice’, the effect is the same—the defendant has done something it otherwise would not have done absent the plaintiff’s conduct.” The plaintiff’s alleged wrongdoing will not bar relief unless the defendant also establishes harm or injury from the plaintiff’s conduct.  Expansion of a business may satisfy the prejudice requirement for laches, but the cost of promoting the mark alone is insufficient.

Effect of Laches

Because laches is a purely equitable defense, it’s completely within the court’s discretion and it depends on the facts of each particular case.  A finding of laches alone generally will not bar injunctive relief in a trademark infringement action (because trademark law is not only designed to protect the brand-value of a business, but also to protect the public from a likelihood of confusion), although it typically will foreclose demand for accounting or damages.   However, a finding of laches or acquiescence may bar injunctive relief if the trademark owner conducted itself in way that induced infringer’s reliance or if injunction would result in substantial prejudice to infringer.  Also, as mentioned above, if the delay in filing suit is because the trademark owner was misled by the infringer, then monetary damages may still be available.

Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.

(Photo by eyeball3000 from Pexels)

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