Does Laches Remain A Viable Defense To Trademark Infringement Claims After The Supreme Court’s Petrella Decision?

Here’s another interesting post from our summer law clerk Ashley Franco:

On May 19, 2014, in Petrella v. MGM, the Supreme Court held that the equitable defense of laches is not a complete bar to a copyright infringement claim brought within the three-year statute of limitations provided under the Copyright Act. You can read more about the Petrella decision in our prior post about the case, which is found here: https://affinitylaw.wordpress.com/2014/05/19/us-supreme-court-holds-laches-not-a-complete-bar-to-copyright-infringement-claim/

The defense of laches often can be a strong defense in trademark infringement cases as well as copyright infringement cases. Is the defense of laches still a viable defense in trademark infringement cases after Petrella?

By way of definition, the doctrine of laches is an affirmative defense available to defendants who are sued for intellectual property infringement, when the plaintiff has unreasonably delayed in bringing his or her suit. The doctrine of laches consists of three elements (1) unreasonable lapse of time (2) neglect to assert a right or claim (3) to the detriment of another. If a defendant proves all three, then the plaintiff’s claim is barred by the doctrine of laches. The doctrine of laches can be a very valuable defense for the infringement defendant because although the plaintiff might have a strong case, he/she/it can be barred from relief if the plaintiff didn’t sue soon enough.

In Petrella, the Court held that the doctrine of laches was not be a complete bar to a copyright infringement claim otherwise filed within the statute of limitations because the Copyright Act provides an express statute of limitations (three years) for copyright infringement claims.

Trademark infringement claims are governed by the Lanham Act, which has no express statute of limitations for trademark infringement claims. On the contrary, courts usually analogize to state law limitations periods for trademark infringement claims.

Applying the reasoning in Petrella to trademark law, the doctrine of laches should still be a complete defense to belatedly-filed trademark infringement claims since there is no express statute of limitations in the Lanham Act. Indeed, in footnote 15 of the Petrella decision, the Supreme Court itself suggests that the Petrella decision is consistent with the Lanham Act. Consequently, laches still should be a strong defense to a trademark infringement claim filed by a plaintiff who unreasonably waited too long to file suit.

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