Vaad L'Hafotzas Sichos, Inc. v. Kehot Publication Society
697 F. App'x 63
| 2d Cir. | 2017Background
- Merkos (Kehot Publication Society) sued Vaad and Zalman Chanin for trademark infringement over the “Kehot” logo; Vaad counterclaimed. The district court conducted a bench trial and issued judgment in 2016.
- District court found Merkos owned the Kehot logo (affirming the PTO) but denied injunctive relief to Merkos based on laches; post-trial the court amended factual findings to call the mark strong and find a likelihood of confusion but still refused to enjoin Vaad because of laches.
- Merkos sent at least one written objection to Vaad in 1995 (possibly 1994); Merkos first sued Vaad in 2011, at least 16 years after the 1995 letter.
- Vaad began branding some publications in 1998 and contends it believed in good faith it could use the mark; district court found Vaad acted in good faith.
- The district court applied New York’s six-year statute of limitations (fraud analog) for laches purposes and concluded a presumption of laches arose from Merkos’s delay; the Second Circuit affirmed.
Issues
| Issue | Merkos’s Argument | Vaad’s Argument | Held |
|---|---|---|---|
| Whether laches bars Merkos’s request for injunctive relief | Delay excusable (progressive encroachment, communications with Vaad); confusion so high laches should not apply | Delay (>6 years) creates presumption of laches; Vaad prejudiced; acted in good faith | Affirmed: laches applies; Merkos’s long delay (≥13–16 years) and Vaad’s good-faith use justify laches, barring injunctive relief |
| Appropriate statute of limitations analogue for laches | Not disputed | District court used NY six-year fraud limitations | Affirmed: six-year period appropriate; Merkos’s suit filed well after that period |
| Ownership of the Kehot trademark (PTO decision) | Merkos owns and controls Kehot mark; PTO decision correct | Vaad contests substantial evidence for PTO finding; argues mark could be a certification mark | Affirmed: substantial evidence supports PTO and district court that Merkos owns the mark; mark functions as a trademark regardless |
| Whether Vaad’s conduct supports unclean hands/bad faith to defeat laches | Vaad acted in bad faith/intentional infringement | Vaad acted with honest belief and good faith | Affirmed: district court’s finding of Vaad’s good faith stands; unclean hands not shown |
Key Cases Cited
- Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037 (2d Cir. 1980) (elements of laches defense)
- Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187 (2d Cir. 1996) (use of analogous state statute for laches presumption)
- Dickinson v. Zurko, 527 U.S. 150 (1999) (substantial evidence standard for agency factfinding)
- Halo v. Yale Health Plan, Dir. of Benefits & Records Yale Univ., 819 F.3d 42 (2d Cir. 2016) (standard of review for summary judgment affirming agency)
- Hermès Int’l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104 (2d Cir. 2000) (unclean hands and bad faith in trademark cases)
- Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999) (intentional infringement and intention to confuse as basis for unclean hands)