Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA927221
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`Filing date:
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`10/09/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92061660
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Pinkette Clothing, Inc.
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`AMANDA V DWIGHT
`DWIGHT LAW GROUP
`2603 MAIN STREET, SUITE 200
`IRVINE, CA 92614
`UNITED STATES
`adwight@dwightlawgroup.com
`949-515-0003
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`Motion to Reopen
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`Amanda V. Dwight
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`adwight@dwightlawgroup.com
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`/ad/
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`10/09/2018
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`20181008 Status Update - Cancellation 92061660.pdf(60720 bytes )
`20181009 Status Update - Exh A-1.pdf(138803 bytes )
`20181009 Status Update - Exh A-2.pdf(319283 bytes )
`20181009 Status Update - Exh B.pdf(98305 bytes )
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`ESTTA Tracking number:
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`ESTTA927221
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`Filing date:
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`10/09/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92061660
`
`Party
`
`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Pinkette Clothing, Inc.
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`AMANDA V DWIGHT
`DWIGHT LAW GROUP
`2603 MAIN STREET, SUITE 200
`IRVINE, CA 92614
`UNITED STATES
`adwight@dwightlawgroup.com
`949-515-0003
`
`Motion to Reopen
`
`Amanda V. Dwight
`
`adwight@dwightlawgroup.com
`
`/ad/
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`10/09/2018
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`20181008 Status Update - Cancellation 92061660.pdf(60720 bytes )
`20181009 Status Update - Exh A-1.pdf(138803 bytes )
`20181009 Status Update - Exh A-2.pdf(319283 bytes )
`20181009 Status Update - Exh B.pdf(98305 bytes )
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Cosmetic Warriors Limited
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`Petitioner,
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`v.
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`Pinkette Clothing, Inc.
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`Respondent
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` ___ )
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`Cancellation No. 92061660
`In re Registration No. 3,816,441
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`STATUS OF CIVIL ACTION
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`In response to the Board’s July 11, 2018, order requesting an update on the status of
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`civil action which occasioned the suspension of this proceeding, Respondent states the
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`following:
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`1.
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`On February 22, 2017, counsel for Respondent in the civil action filed the
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`attached Report On The Filing or Determination of an Action Regarding a Patent or Trademark
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`(“Report”) with the USPTO. This Report includes a copy of the Final Judgment entered in the
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`civil action on February 17, 2017. (Dkt. 15)
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`2.
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`Petitioner filed its Notice of Appeal of the Final Judgment on March 10, 2017.
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`On June 29, 2018 the Ninth Circuit Court of Appeals rendered its opinion on Appeal No. 17-
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`55325 captioned Pinkette Clothing, Inc. v. Cosmetic Warriors Limited, the appeal taken from
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`District Court case No. 2:15-cv-04950-SJO-AJW. The Ninth Circuit Court of Appeals affirmed the
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`district court’s judgement in favor of Applicant Pinkette Clothing Inc.: “[a]s a result of laches,
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`CWL can neither enforce its trademark rights against Pinkette’s use of the LUSH mark on
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`clothing nor cancel Pinkette’s registration for use of the mark on clothing.” A copy of the Ninth
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`Circuit Court’s decision and mandate is submitted herewith as Exhibit A.
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`3.
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`The deadline for filing a petition for writ of certiorari is 90 days after entry of
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`judgement in the court of appeals. 28 USC § 2101(c); Supreme Court Rule 13.1. The Ninth
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`Circuit entered judgment on June 29, 2018. The deadline for filing a cert petition was,
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`therefore, September 27, 2018. No cert petition was timely filed by September 27, 2018. See
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`Exhibit B submitted herewith. Accordingly, the time seek review of the Ninth Circuit’s decision
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`has expired and the District Court’s Final Judgment in favor of Registrant Pinkette Clothing, Inc.
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`stands in its entirety.
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`4.
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`Paragraph 14 of the Final Judgment directs the Director of the United States
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`Patent and Trademark Office to dismiss with prejudice this cancellation proceeding No.
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`92061660. As the civil action which occasioned the suspension of this proceeding is no longer
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`pending, Registrant respectfully requests that the Board (1) lift its suspension; and (2) dismiss
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`this cancellation proceeding with prejudice in compliance with the Final Judgment.
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`Dated: October 9, 2018
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`Respectfully Submitted,
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`By: /ad/
`Amanda V. Dwight
`Dwight Law Group
`2603 Main Street, Suite 200
`Irvine, CA 92614
`(949) 515-0003
`(949) 266-8680
`adwight@dwightlawgroup.com
`Attorneys for Respondent
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`Certificate of Service
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`The undersigned hereby certifies that a copy of this paper has been served upon the
`Attorney of Record for Petitioner via email to the addresses below, on the date indicated
`below.
`
`
`John A. Clifford, Esq.
`Merchant & Gould PC
`jclifford@merchantgould.com, aavery@merchantgould.com, dockmpls@merchantgould.com
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`Dated: October 9, 2018
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`By: /ad/
`Amanda V. Dwight
`DWIGHT LAW GROUP
`2603 Main Street, Suite 200
`Irvine, CA 92614
`(949) 515-0003
`(949) 266-8680 (Fax)
`adwight@dwightlawgroup.com
`Attorneys for Registrant
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` Case: 17-55325, 06/29/2018, ID: 10926602, DktEntry: 43-1, Page 1 of 29
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`(1 of 34)
`
`FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`No. 17-55325
`
`D.C. No.
`2:15-cv-04950-
`SJO-AJW
`
`OPINION
`
`PINKETTE CLOTHING, INC., a
`California corporation,
`Plaintiff-Counter-Defendant-
`Appellee,
`
`v.
`
`COSMETIC WARRIORS LIMITED,
`believed to be a United Kingdom
`limited company doing business as
`Lush Handmade Cosmetics,
`Defendant-Counter-Claimant-
`Appellant.
`
`Appeal from the United States District Court
`for the Central District of California
`S. James Otero, District Judge, Presiding
`
`Argued and Submitted April 12, 2018
`Pasadena, California
`
`Filed June 29, 2018
`
`Before: John M. Rogers,* Jay S. Bybee,
`and Paul J. Watford, Circuit Judges.
`
`Opinion by Judge Bybee
`
`* The Honorable John M. Rogers, United States Circuit Judge for the
`U.S. Court of Appeals for the Sixth Circuit, sitting by designation.
`
`
`
` Case: 17-55325, 06/29/2018, ID: 10926602, DktEntry: 43-1, Page 2 of 29
`
`(2 of 34)
`
`2
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
`
`SUMMARY**
`
`Trademark Infringement
`
`The panel affirmed the district court’s judgment in favor
`of Pinkette Clothing, Inc., which sells LUSH-branded
`women’s fashions, in a case in which Cosmetic Warriors
`Limited (CWL), which sells LUSH-branded cosmetics and
`related goods, sought (a) an injunction restraining Pinkette
`from infringing on CWL’s LUSH trademark and (b) the
`cancellation of Pinkette’s registration of its own LUSH
`trademark.
`
`Distinguishing Perella v. Metro-Goldwin-Mayer, Inc.,
`134 S. Ct. 1962 (2014) (Copyright Act), and SCA Hygiene
`Products v. First Quality Baby Products, LLC, 137 S. Ct. 954
`(2017) (Patent Act), the panel held that laches is available as
`a defense to CWL’s cancellation claim because the Lanham
`Act has no statute of limitations and expressly makes laches
`a defense to cancellation.
`
`The panel held that the district court applied the correct
`standard when it applied the factors set forth in E-Sys., Inc. v.
`Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL’s claim
`for injunctive relief. The panel wrote that analysis of the E-
`Systems factors validates the strong presumption in favor of
`laches created by CWL’s delaying past the expiration of the
`most analogous state statute of limitations. The panel
`concluded that the district court did not abuse its discretion in
`
`** This summary constitutes no part of the opinion of the court. It has
`been prepared by court staff for the convenience of the reader.
`
`
`
` Case: 17-55325, 06/29/2018, ID: 10926602, DktEntry: 43-1, Page 3 of 29
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`(3 of 34)
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
`
`3
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`applying laches to bar CWL’s cancellation and infringement
`claims.
`
`The panel held that the district court did not abuse its
`discretion in declining to apply the doctrine of unclean hands
`to preclude Pinkette from asserting laches, and that the
`inevitable confusion doctrine is inapplicable. The panel also
`held that evidence of Pinkette’s LUSH mark in Canada was
`not relevant to the infringement-related questions for which
`the jury was the sole trier of fact, and that any error in
`excluding the disputed evidence from the jury’s hearing was
`harmless because CWL was allowed to present all of its
`evidence to the district court after the jury was dismissed.
`
`Rejecting CWL’s argument that the words “other than
`clothing” in the district court’s judgment is inconsistent with
`the jury’s verdict and in error, the panel concluded that the
`judgment, read as a whole, accurately reflects the court’s
`disposition of the case.
`
`COUNSEL
`
`Rachel Zimmerman Scobie (argued), Ian G. McFarland,
`Heather J. Kliebenstein, and John A. Clifford, Merchant &
`Gould P.C., Minneapolis, Minnesota, for Defendant-Counter-
`Claimant-Appellant.
`
`Kevin M. Bringuel (argued), Sarah Silverton, David Crane,
`Tiffany Hansen, Enoch Liang, and James Lee, LTL Attorneys
`LLP, South San Francisco, California, for Plaintiff-Counter-
`Defendant-Appellee.
`
`
`
` Case: 17-55325, 06/29/2018, ID: 10926602, DktEntry: 43-1, Page 4 of 29
`
`(4 of 34)
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`4
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
`
`OPINION
`
`BYBEE, Circuit Judge:
`
`Cosmetic Warriors Limited (“CWL”) sells LUSH-
`branded cosmetics and related goods, while Pinkette Clothing
`sells LUSH-branded women’s fashions. CWL seeks both a
`permanent injunction restraining Pinkette from infringing on
`CWL’s LUSH mark and cancellation of Pinkette’s
`registration of its own LUSH mark. The district court held
`that laches barred CWL’s infringement and cancellation
`claims and accordingly entered judgment for Pinkette.
`
`The Lanham Act recognizes laches as a defense to a
`petition for cancellation of a trademark registration.
`15 U.S.C. § 1069. Although such a petition may be filed “[a]t
`any time,” § 1064 limits the grounds for cancellation after
`five years have passed from the date of registration—i.e.,
`after the mark becomes incontestable. Id. § 1064. Relying on
`Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962
`(2014), and SCA Hygiene Products v. First Quality Baby
`Products, LLC, 137 S. Ct. 954 (2017), CWL argues that
`laches cannot bar a cancellation claim if it is brought within
`the five-year period specified in § 1064.
`
`We write principally to address what effect, if any,
`Petrella and SCA Hygiene had on applying laches to a
`trademark cancellation claim. In Petrella, the Supreme Court
`held that laches could not bar a copyright infringement claim
`brought within the Copyright Act’s three-year statute of
`limitations. 134 S. Ct. at 1967. And in SCA Hygiene, the
`Court held that laches could not bar a patent infringement
`claim brought within the Patent Act’s six-year statute of
`limitations. 137 S. Ct. at 959. We conclude that the principle
`
`
`
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`(5 of 34)
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`5
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`at work in these cases—a concern over laches overriding a
`statute of limitations—does not apply here, where the
`Lanham Act has no statute of limitations and expressly makes
`laches a defense to cancellation. As CWL’s other arguments
`on appeal are also without merit, we affirm the judgment of
`the district court.
`
`I. BACKGROUND
`
`A. CWL’s Use of the LUSH Mark on Cosmetics and Related
`Goods
`
`In the mid-1990s, CWL began selling cosmetics through
`a mail-order catalogue and brick-and-mortar retail store
`located in the United Kingdom. The first edition of its
`catalogue was titled “Cosmetic House” but asked customers
`to submit suggestions for a new name. One customer
`recommended “Lush.” CWL adopted the name and began
`selling a variety of products under the LUSH mark, including
`makeup, bath and body products, spa treatments, and
`fragrances. The first LUSH retail store in Canada opened in
`1996, and the first such store in the United States opened in
`2002. Today, CWL has about 940 LUSH retail stores in
`49 different countries.
`
`From the beginning, LUSH retail staff wore LUSH-
`branded aprons. There is no evidence, however, of CWL’s
`making any clothing sales to end consumers in the United
`States until at least 2004. Between 2004 and 2013, CWL sold
`fewer than 1,000 LUSH-branded t-shirts, tank tops, or
`sweatshirts in the United States. It appears these sales were
`part of the company’s promotional “swag program,” and it is
`not clear how many of the sales were to end consumers rather
`than employees.
`
`
`
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`(6 of 34)
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`6
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`CWL has multiple trademark registrations in the United
`States, including registrations for use of LUSH on perfumes
`and hair services and for use of LUSH TIMES on
`publications. Though CWL has never had a registration in
`the United States for use of LUSH on clothing, it did have
`such a registration in Canada (specifically, for use on t-shirts)
`until recently. The Canadian registration was filed in 2002,
`but was later cancelled on the grounds that CWL’s sales of t-
`shirts at cost for promotional purposes did not qualify for
`trademark protection.
`
`CWL actively polices the LUSH mark, and its log of
`trademark-enforcement matters reflects over 130 such
`disputes. CWL has investigated, for example, Lush Day Spa
`Salon in Minnesota in 2012; Lush Salon & Day Spa in
`Tennessee in 2013; and Lush Aveda Salon and Spa in Illinois
`in 2014. CWL has also successfully opposed the registration
`of numerous marks, such as LUSH BERRY, LUSHPOP, and
`HYDRA LUSH. And CWL has filed a number of
`infringement actions. See, e.g., Cosmetic Warriors Ltd. v.
`Nailush LLC, No. 17-1475, 2017 WL 5157390, at *1 (D.N.J.
`Nov. 6, 2017); Cosmetic Warriors Ltd. v. Lush Boutique,
`L.L.C., No. 09-6381, 2010 WL 481229, at *1 (E.D. La. Feb.
`1, 2010).
`
`B. Pinkette’s Use of the LUSH Mark on Clothing
`
`In 2003—after CWL had already entered the United
`States—Edward Kim, his sister Erica Kim, and their cousin
`Daniel Kim started Pinkette Clothing, a company that sells
`young women’s clothing under different labels. One of those
`labels is LUSH. The Kims testified that they brainstormed
`the name together by picking words out of a dictionary,
`ultimately deciding on the adjective “lush” because it
`
`
`
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`(7 of 34)
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`7
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`described what their brand “aspire[d] to be,” namely,
`“appealing, attractive, prosperous, and abundant.”
`
`After landing on the LUSH name, the Kims began
`researching internet domain names, and in the process,
`discovered that CWL sold LUSH-branded cosmetics at
`lush.com. They checked whether CWL sold clothing on its
`website, determined that it did not, and ultimately selected
`lushclothing.com as Pinkette’s domain name.
` From
`September 2003 onward, Pinkette has sold women’s clothing
`under the LUSH mark to retailers in the United States and
`Canada—principally to Nordstrom but also to retailers such
`as TJ Maxx and Bloomingdale’s.
`
`In May 2009, Pinkette filed a trademark registration
`application for use of LUSH on clothing in the United States.
`The application was published for opposition in the
`Trademark Official Gazette. A trademark watch service
`notified CWL’s outside counsel of the application, but CWL
`claims that it did not become aware of Pinkette’s use of the
`LUSH mark, much less its trademark application, until years
`later. There was no opposition to Pinkette’s application, and
`Pinkette’s LUSH mark was registered in July 2010, thereby
`putting CWL on constructive notice of Pinkette’s claim to
`ownership. See 15 U.S.C. § 1072 (“Registration of a mark on
`the principal register . . . shall be constructive notice of the
`registrant’s claim of ownership thereof.”).
`
`In August 2010, Pinkette filed a trademark registration
`application for use of LUSH on clothing in Canada. That
`application was rejected in December 2010 for being
`confusingly similar to CWL’s LUSH mark. Four years later,
`Pinkette began an anonymous cancellation proceeding against
`CWL’s Canadian registration for use of LUSH on t-shirts. As
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`8 n
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`oted above, that action was successful in 2017—though it
`remains on appeal in Canada.
`
`C. Procedural History
`
`CWL claims it had no actual knowledge of Pinkette’s use
`of the LUSH mark until late 2014. In December 2014, CWL
`filed a trademark registration application for use of LUSH on
`clothing in the United States, which was rejected on account
`of Pinkette’s preexisting registration. It was not until June
`2015—approximately four years and eleven months after
`Pinkette’s registration issued—that CWL finally filed a
`petition with the Trademark Trial and Appeal Board
`(“TTAB”) to cancel Pinkette’s registration.
`
`After CWL filed its cancellation petition, Pinkette filed
`this action in federal court, seeking a declaratory judgment
`that it did not infringe on CWL’s trademark rights, or
`alternatively that laches bars CWL from asserting its rights
`against Pinkette. CWL counterclaimed for trademark
`infringement and cancellation of Pinkette’s registration,
`among other claims. On the parties’ joint motion,
`proceedings before the TTAB were stayed pending resolution
`of this case.
`
`The district court determined that a jury would decide
`CWL’s infringement and cancellation claims and serve in an
`advisory capacity as to Pinkette’s laches defense, which
`would be decided by the court. Pinkette moved in limine to
`exclude from the jury any reference to its Canadian trademark
`registration application and cancellation petition. CWL
`opposed, arguing
`that Pinkette’s actions
`in Canada
`demonstrated its knowledge of the likelihood of confusion
`between the two companies’ marks and, hence, its bad faith
`
`
`
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`(9 of 34)
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`9
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`in continuing to use the LUSH mark in the United States.
`The district court granted Pinkette’s motion but allowed CWL
`to present the disputed evidence to the court after the jury was
`dismissed.
`
`Following a five-day trial, the jury returned a special
`verdict finding for CWL on its infringement and cancellation
`claims but finding (in an advisory capacity) for Pinkette on its
`laches defense. The parties then presented additional
`evidence regarding laches, at the conclusion of which the
`court rendered an oral decision holding that laches barred
`CWL’s claims. Nevertheless, CWL moved for judgment in
`its favor, requesting a permanent injunction prohibiting
`Pinkette from using the LUSH mark and an order directing
`the TTAB to cancel Pinkette’s registration. The district court
`denied CWL’s motion in a written decision and entered
`judgment for Pinkette on all claims. CWL timely appealed.
`
`II. ANALYSIS
`
`CWL raises four issues before us. First, was laches a
`proper defense where CWL brought its cancellation claim
`within the five-year period specified in 15 U.S.C. § 1064(1)?
`Second, assuming laches could be asserted, did the district
`court properly apply laches to CWL’s cancellation and
`infringement claims? Third, did the district court abuse its
`discretion when it excluded reference to Pinkette’s Canadian
`trademark application from the jury? Fourth, did the district
`court properly limit CWL’s trademark to cosmetics and goods
`other than clothing? We address each question in turn.
`
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`(10 of 34)
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`10
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`A. Availability of Laches as a Defense
`Cancellation Claim
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`to CWL’s
`
`The Lanham Act, 15 U.S.C. § 1051 et seq., provides for
`the registration of trademarks. Id. § 1052. The owner of a
`registered mark is entitled to a presumption that the mark is
`valid, id. § 1057(b), and after five years, the registered mark
`ordinarily becomes incontestable, id. § 1065. The right to the
`mark, however, is subject to “equitable principles, including
`laches, estoppel, and acquiescence.” Id. § 1115(b)(9); see
`also id. § 1069 (“In all inter partes proceedings equitable
`principles of laches, estoppel, and acquiescence, where
`applicable may be considered and applied.”).
`
`The Lanham Act also authorizes “any person who
`believes that he is or will be damaged . . . by the registration
`of a mark” to petition to cancel the registration.1 Id. § 1064.
`If a petition for cancellation is brought before the mark
`becomes incontestable, “any ground that would have
`prevented registration in the first place qualifies as a valid
`ground for cancellation,” including that there exists a
`“likelihood of confusion between the mark sought to be
`canceled and a mark for which the party seeking cancellation
`can establish either prior use or prior registration.”
`Cunningham v. Laser Golf Corp., 222 F.3d 943, 946 (Fed.
`Cir. 2000); see also 15 U.S.C. §§ 1052(d), 1064; J. THOMAS
`MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR
`COMPETITION § 20:53 (5th ed.) (“MCCARTHY”). Here, the
`jury found a likelihood of confusion between the parties’
`
`1 Petitions for cancellation are typically heard by the TTAB. But
`where, as here, an action brought in federal court involves a registered
`mark, the district court may order cancellation of the registration.
`15 U.S.C. § 1119.
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`(11 of 34)
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`11
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`marks, and absent Pinkette’s laches defense, CWL would
`have been entitled to judgment in its favor on its cancellation
`claim.
`
`The Supreme Court has held that laches is not available
`as a defense to claims for copyright or patent infringement
`brought within the limitations periods prescribed under the
`Copyright and Patent Acts. SCA Hygiene Prods. v. First
`Quality Baby Prod., LLC, 137 S. Ct. 954, 959 (2017) (Patent
`Act); Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct.
`1962, 1967 (2014) (Copyright Act). CWL argues that,
`because it filed its cancellation petition with the TTAB before
`Pinkette’s trademark registration became incontestable under
`15 U.S.C. § 1064, laches is not available as a defense to its
`cancellation claim and that the district court therefore erred
`in applying laches here.2
`
`We begin with a brief overview of the relevant decisions.
`In Petrella, Frank Petrella owned the copyright to a
`screenplay used in MGM’s Academy Award-winning film
`Raging Bull. 134 S. Ct. at 1971. Frank registered the
`copyright to the screenplay in 1963, and his daughter and
`heir, Paula Petrella, renewed the registration in 1991. Id. at
`1970–72. Seven years later, Paula informed MGM of her
`belief that its exploitation of Raging Bull infringed on her
`copyright. Id. at 1972. Another eleven years after that, she
`filed her copyright infringement suit. Id. She acknowledged
`the applicable three-year statute of limitations and sought
`relief only for acts of infringement that occurred during the
`
`2 We review whether laches is available as a potential defense in a
`particular action de novo, and we review the district court’s application of
`laches for abuse of discretion. In re Beaty, 306 F.3d 914, 920–21 (9th Cir.
`2002).
`
`
`
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`three years prior to her suit. Id. The district court, however,
`granted summary judgment for MGM based on laches. Id.
`
`The Supreme Court explained that, because federal
`copyright law did not originally include a statute of
`limitations for civil suits, federal courts used to rely on
`analogous state statutes of limitations to determine the
`timeliness of federal infringement claims and sometimes
`invoked laches to abridge the state law prescription. Id. at
`1968. This practice accorded with the general rule that
`“[w]hen Congress fails to enact a statute of limitations, a
`[federal] court that borrows a state statute of limitations but
`permits it to be abridged by the doctrine of laches is . . .
`merely filling a legislative hole.” Id.
`
`Eventually, however, Congress filled the gap it had
`previously left open by enacting a three-year statute of
`limitations for copyright infringement. The Copyright Act
`now states: “No civil action shall be maintained under the
`provisions of this title unless it is commenced within three
`years after the claim accrued.” 17 U.S.C. § 507(b). When
`combined with the “separate-accrual rule”—under which the
`statute of limitations runs separately for each successive act
`of infringement—the effect of § 507(b) is that a copyright
`infringement “is actionable within three years, and only three
`years, of its occurrence” and “the infringer is insulated from
`liability for earlier infringements of the same work.”
`Petrella, 134 S. Ct. at 1969–70.
`
`The Court held that laches could not bar Petrella’s
`copyright infringement claim for acts of infringement within
`the last three years, noting that it had “never applied laches to
`bar in their entirety claims for discrete wrongs occurring
`within a federally prescribed limitations period.” Id. at 1975.
`
`
`
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`
`The Court reasoned that this result was necessary to protect
`the regime put in place through the combination of § 507(b)
`and the separate-accrual rule. Id. at 1978. Notably, the Court
`differentiated between the Copyright Act and the Lanham
`Act: “In contrast to the Copyright Act, the Lanham Act,
`which governs trademarks, contains no statute of limitations,
`and expressly provides for defensive use of ‘equitable
`principles, including laches.’” Id. at 1974 n.15 (quoting
`15 U.S.C. § 1115(b)(9)).
`
`In SCA Hygiene, SCA Hygiene Products and First Quality
`Baby Products disputed the validity of SCA’s patent on an
`adult diaper. 137 S. Ct. at 959. The two parties corresponded
`on the subject in 2004. Id. Later the same year, without
`notifying First Quality, SCA asked the Patent and Trademark
`Office (“PTO”) to reexamine the validity of its patent in light
`of First Quality’s patent. Id. The PTO did so and confirmed
`the validity of SCA’s patent in 2007. Id. SCA nevertheless
`waited until 2010 to file its patent infringement suit against
`First Quality. Id. The district court granted summary
`judgment for First Quality based on laches. Id.
`
`On appeal, the Supreme Court elaborated on its reasoning
`in Petrella, which
`rested on “separation-of-powers
`principles” and “the traditional role of laches in equity.” Id.
`at 960. With respect to the former: “When Congress enacts
`a statute of limitations, it speaks directly to the issue of
`timeliness and provides a rule for determining whether a
`claim is timely enough to permit relief. . . . [A]pplying laches
`within a limitations period specified by Congress would give
`judges a ‘legislation-overriding’ role that is beyond the
`Judiciary’s power.” Id. With respect to the latter: “Laches is
`a gap-filling doctrine, and where there is a statute of
`limitations, there is no gap to fill.” Id. at 961.
`
`
`
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`Applying Petrella, the Supreme Court held that laches did
`not bar SCA’s patent infringement claim brought within the
`Patent Act’s six-year statute of limitations. Id. at 959, 963.
`The Patent Act states: “Except as otherwise provided by law,
`no recovery shall be had for any infringement committed
`more than six years prior to the filing of the complaint or
`counterclaim for infringement in the action.” 35 U.S.C.
`§ 286. Similar to the Copyright Act’s three-year statute of
`limitations, the Patent Act’s six-year statute of limitations
`“represents a judgment by Congress that a patentee may
`recover damages for any infringement committed within six
`years of the filing of the claim.” SCA Hygiene, 137 S. Ct. at
`961. In short, the Patent Act’s statute of limitations leaves no
`gap for laches to fill.
`
`CWL does not argue that Petrella and SCA Hygiene
`preclude application of laches to its trademark infringement
`claim—presumably because the Lanham Act prescribes no
`statute of limitations for such a claim. See Petrella, 134
`S. Ct. at 1974 n.15. Instead, CWL only argues that those
`cases preclude application of laches to its cancellation claim
`because it filed that claim before Pinkette’s mark became
`incontestable. Thus, from the outset, CWL’s argument
`presents an asymmetry found in neither Petrella nor SCA
`Hygiene: CWL would have us hold that, even where
`prejudicial delay otherwise precludes one party from
`enforcing its trademark rights against another party, the first
`party may still have the second party’s registration stricken
`from the register. This is not the result required by either the
`Lanham Act or the Supreme Court’s decisions.
`
`“Unlike both Copyright law and Patent law, each of
`which has its own federal statute of limitations, the federal
`Lanham Act has no statute of limitations.” MCCARTHY
`
`
`
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`
`§ 31:33. Rather, the Lanham Act vests courts with the power
`to grant relief according “to the principles of equity.”
`15 U.S.C. §§ 1116, 1117. Moreover, § 1069 expressly makes
`laches a potential defense “[i]n all inter partes proceedings”
`before
`the PTO,
`including cancellation proceedings.
`15 U.S.C. § 1069 (emphasis added); see also McCarthy
`§ 20:74. Importantly, § 1069 makes no distinction between
`proceedings against contestable versus incontestable marks.
`
`Nothing in § 1064 alters the straightforward application
`of § 1069 to permit laches as a defense to cancellation. There
`is no question that § 1064 is not a statute of limitations in the
`usual sense of barring an action entirely once a defined period
`expires. Incontestability merely limits the grounds on which
`cancellation may be sought. A petition brought within five
`years of registration (against a contestable mark) may assert
`any ground that would have prevented registration in the first
`place—most commonly that the registered mark creates a
`likelihood of confusion with the petitioner’s preexisting
`mark. 15 U.S.C. § 1064. By contrast, a petition brought five
`years after registration (against an incontestable mark) may
`only assert one of several enumerated grounds for
`cancellation,
`including genericism,
`functionality,
`abandonment, or fraudulent procurement. Id.
`
`Moreover, § 1064 does not implicate the same concerns
`identified in Petrella and SCA Hygiene. The statutes of
`limitations at issue in those cases state categorically that “[n]o
`civil action shall be maintained,” 17 U.S.C. § 507(b), or “no
`recovery shall be had,” 35 U.S.C. § 286. Such language
`represents a clear directive from Congress and leaves no gap
`for laches to fill. The Lanham Act, on the other hand,
`provides that a petition for cancellation may be brought “[a]t
`any time” but affords different grounds for cancellation
`
`
`
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`PINKETTE CLOTHING V. COSMETIC WARRIORS
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`depending on whether the petition is brought within five
`years of registration.3 15 U.S.C. § 1064. Applying laches to
`a cancellation claim against a contestable mark neither
`overrides a clear directive from Congress nor fills a gap
`where there is none to fill. See SCA Hygiene, 137 S. Ct. at
`960–61.
`
`Finally, although Petrella and SCA Hygiene are recent
`decisions, the idea that laches will not bar a claim for legal
`relief brought within the applicable statute of limitations is
`not. See, e.g., United States v. Mack, 295 U.S. 480, 489
`(1935) (“Laches within the term of the statute of limitations
`is no defense at law.”); Wehrman v. Conklin, 155 U.S. 314,
`326 (1894) (“Though a good defense in equity, laches is no
`defense at law. If the plaintiff at law has brought his action
`within the period fixed by the statute of limitations, no court
`can deprive him of his right to proceed.”); Cross v. Allen,
`
`3 The Third Circuit has interpreted § 1064’s “[a]t any time” language
`to mean that laches cannot bar a cancellation claim based on any of the
`enumerated grounds for cancelling an incontestable mark. Marshak v.
`Treadwell, 240 F.3d 184, 193 (3d Cir. 2001) (holding that laches could not
`bar cancellation claim brought more than five years after registration).
`Other courts have reached the opposite conclusion, reasoning that “[t]he
`words ‘[a]t any time’ demonstrate only that the act imposes no statute of
`limitations” and “have nothing to do with what equitable defenses may be
`available.” Pro-Football, Inc. v. Harjo, 415 F.3d 44, 48 (D.C. Cir. 2005)
`(permitting laches as a defense to cancellation claim brought more than
`five years after registration); accord Bridgestone/Firestone Research, Inc.
`v. Auto. Club de L’Ouest de la France, 245 F.3d 1359, 1360 (Fed. Cir.
`2001) (same). Interestingly, combining the Third Circuit’s rule with
`CWL’s argument here would result in laches never being a defense in
`cancellation proceedings—a part
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