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Laches as a Defense to Trademark Infringement

on Friday, 22 February 2019 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

Businesses are often confronted with trademark issues surrounding the similarity of their brands creating potential trademark infringement. But trademark infringement is usually anything but a black-and-white analysis. In evaluating whether a trademark infringes another mark, the standard used is whether the junior mark (i.e. the mark second to the market) is likely to cause confusion for consumers as to the source of goods or services offered under the senior mark. This analysis is based on a number of factors including the relatedness of the goods offered under the marks, the channels of trade of the goods sold under the marks, and the target consumer audience for the goods. With these numerous fact specific inquiries, a definitive answer as to whether a junior mark infringes a senior mark can be difficult, and even in scenarios where infringement is unlikely, a senior user may attempt to enforce its rights. This gives rise to a common question for junior users: “How long do I have to use a mark (that is unlikely to infringe) before my use of the mark is unchallengeable by the senior user?”

Federal case law helps give insight into the answer to this question. In Fitbug v. Fitbit, a federal court held that Fitbug was precluded from enforcing its trademark rights against Fitbit under the legal theory of laches, the court stating that Fitbug had waited too long to enforce its rights.1 Both Fitbit and Fitbug sell portable electronic fitness tracking devices. Fitbug, the senior user, entered the United States market in 2005 with its Fitbug tracker. Fitbit, the junior user, began using its name in the United States market in 2008, and began to sell its tracker in 2009. While Fitbug was aware of Fitbit’s products and name from the outset in 2008, it failed to take any action in enforcing its rights until 2011 and did not file suit until 2013. In applying the laches doctrine, the court held that Fitbug unreasonably delayed in bringing its trademark infringement claim against Fitbit in a manner that unreasonably prejudiced Fitbit. Because of this delay and the prejudice it would cause Fitbit, Fitbug was precluded from continuing with its claim.

Applying similar logic in Pinkette Clothing v. Cosmetic Warriors, a federal court held that the senior user of the mark “Lush” was barred from bringing a claim against a junior user of the “Lush” mark as over four years had passed from the time the senior user had constructive knowledge of the junior user’s use of the Lush mark.2 While there is no definitive time period of use by a junior user that will bar a senior user from bringing an infringement claim, recent case law indicates that if the marks coexist for over four years, where the senior user knows of the junior user, difficulty arises for the senior user in bringing a claim.

AriAnna C. Goldstein


1 Fitbug Limited v. Fitbit, Inc. 78 F.Supp.3d 1180 (N.D. Cal. 2017).
2 Pinkette Clothing, Inc. v. Cosmetic Warriors Limited, 894 F.3d 1015 (9th Cir. 2018).

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