Pinkette Clothing, Inc. v. Cosmetic Warriors Ltd.
894 F.3d 1015
9th Cir.2018Background
- Cosmetic Warriors Ltd. (CWL) operates the LUSH brand for cosmetics worldwide; it has U.S. registrations for cosmetics but no U.S. registration for LUSH on clothing.
- Pinkette Clothing (founded 2003) independently adopted LUSH for women’s clothing and secured a U.S. federal registration for LUSH on clothing in July 2010.
- CWL claims it did not learn of Pinkette’s U.S. use/registration until late 2014; CWL filed a TTAB cancellation petition in June 2015 (≈4 years, 11 months after Pinkette’s registration).
- Pinkette sued for a declaratory judgment and pleaded laches as a defense; a jury found likelihood of confusion (advisory on laches), but the district court held laches barred CWL’s cancellation and infringement claims and entered judgment for Pinkette.
- CWL appealed, arguing (among other things) that Petrella and SCA Hygiene preclude laches as a defense to a cancellation petition filed within five years under 15 U.S.C. § 1064.
Issues
| Issue | Plaintiff's Argument (CWL) | Defendant's Argument (Pinkette) | Held |
|---|---|---|---|
| Whether laches is available to bar a cancellation petition filed within five years of registration under § 1064 | Petrella and SCA Hygiene bar laches where the petitioner files within the statutory five-year period (analogous to statutes of limitations) | The Lanham Act has no statute of limitations and expressly authorizes equitable defenses (including laches) to cancellation | Laches is available; Petrella and SCA Hygiene do not compel a different result |
| Whether the district court abused its discretion applying laches to bar cancellation and injunction claims | Court applied wrong standard for injunctive relief and misweighed equitable factors | District court correctly applied E-Systems factors to delay and prejudice and properly weighed the equities | No abuse of discretion; laches bar affirmed |
| Whether Pinkette’s alleged bad faith (knowledge of CWL) triggers unclean hands and prevents laches defense | Pinkette knew of CWL (domain, Canadian filing) and acted in bad faith, so it cannot assert laches | No clear-and-convincing evidence of willfulness or bad faith; Pinkette acted in good faith | Unclean hands not established; district court did not abuse discretion |
| Whether evidence of Pinkette’s Canadian filings was properly excluded from the jury | Such evidence is probative of bad faith and confusion and should have been before the jury | Canadian filings are of limited relevance to U.S. territorial rights and risk confusing the jury; court admitted it to judge post-trial | Exclusion from jury was within discretion and any error was harmless (court considered it post-jury) |
Key Cases Cited
- Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) (Supreme Court: laches cannot bar copyright claims within the Copyright Act limitations period)
- SCA Hygiene Prod. v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017) (Supreme Court: laches cannot bar patent claims within the Patent Act limitations period)
- La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867 (9th Cir. 2014) (two-step laches analysis invoking analogous state statute and equitable E-Systems factors)
- E-Systems, Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983) (articulating factors for laches analysis in trademark cases)
- Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088 (9th Cir. 2004) (laches presumption when analogous statute of limitations has expired and discussion of prejudice from delay)