Be aware: Laches at the Trademark Trial and Appeal Board

By Laura Beléndez-Ferrero, Ferraiuoli LLC

Laches is an equitable defense available to trademark owners when a plaintiff has unreasonably delayed in bringing a valid claim against them. In a recent precedent setting opinion, the Trademark Trial and Appeal Board (TTAB) addressed the laches defense and granted partial summary judgment based on this defense.

In Ava Ruha Corp. v. Mother’s Nutritional Ctr.., Canc. No. 92056067 and 92056080 (TTAB Jan. 29, 2015), Ava Ruha Corporation (“Ava”) filed petitions to cancel the MOTHER’S NUTRITIONAL CENTER (“Center”) character and design mark alleging likelihood of confusion, fraud, and dilution. After several procedural issues, both parties filed motions for summary judgment on respondent’s laches defense.

The TTAB first addressed whether Ava unreasonable delayed to bring its claim against Center’s trademarks. The TTAB explained that the earliest date for determining whether there has been an undue delay varies in accordance to petitioner’s actual knowledge of the existence of the trademark prior to its registration. More specifically, laches runs from the publication date when petitioner has actual knowledge of the marks and from the registration date when no such knowledge exists.

In this regard, the TTAB noted that there was no genuine dispute that Ava had actual knowledge of Center’s trademark since 1998, long preceding the June 16, 2009 publication dates for the respective trademark applications.  Thus, Ava delayed a little over three years and two months to file its petition for cancellation. As such, the TTAB found that there was an unexcused, unreasonable delay for the petitions.

The TTAB later addressed the issue of economic prejudice to Center. The TTAB found that Ava’s delay caused Center to invest and grow its business, adding at least 15 stores and spending over $7 million on promoting its business since the publication date of the marks. Thus, the TTAB found that Center would be subject to economic prejudice if the marks were to be cancelled.

The TTAB also explained that laches may apply to claims of dilution and likelihood of confusion in cancellation proceedings. Laches does not apply to fraud claims because of the public interest behind the prohibition of mark registrations procured or maintained by fraud. With respect to dilution, the TTAB explained that the finding of a valid laches defense precluded Ava’s dilution claim. Similarly, the TTAB explained that the only exception to laches in likelihood of confusion claims is when confusion is inevitable. Thus, based on the previous finding of laches, the TTAB concluded that the only way Ava can succeed at trial is to show that confusion of the marks is inevitable, which is a higher burden than that required for likelihood of confusion.

This case presents an interesting look at the laches defense, showing how powerful it can be when properly raised and argued. In particular, petitioners who seek the cancellation of a trademark need to be aware of the publication and registration dates for the marks sought to be cancelled in order to avoid dismissal of their defense. At the same time, trademark owners should always investigate petitioner’s actual knowledge of the trademark prior to registration in order to determine whether a laches defense is likely to succeed or not.