What is the delay defense (laches) in a TTAB trademark cancellation?

What is laches?

Laches is a fancy legal term meaning delay. If there has been delay in filing a TTAB trademark cancellation, laches might be available as a defense against a plaintiff seeking to cancel a trademark registration. Keep in mind that laches in a trademark infringement lawsuit has a different standard than that in a TTAB cancellation. The burden of proof is on the defendant registration owner (registrant) to show delay.

What are the required elements of laches?

Laches requires the registrant to show:

  1. unreasonable delay in asserting one’s rights against another; and
  2. material prejudice to the defendant attributable to the delay.

The two types of prejudice are evidentiary and economic. Evidentiary prejudice may occur when witnesses or evidence becomes lost or inaccessible. Economic prejudice may occur when the defendant (i.e., registration owner) continued to use and invest in the registered trademark.

How is unreasonable delay calculated in a TTAB trademark case?

The starting point for measuring delay depends on whether the plaintiff petitioner had actual knowledge of the defendant’s use of the mark prior to the date of publication for opposition. If so, the date of publication is operative date for calculating laches. If not, then the date of registration is the earliest date to be used in measuring the length of delay.

The length of delay is then determined from either the publication or registration date to the date of filing a petition to cancel. In past TTAB cases, a delay of three years has been found to be sufficient to support a defense of laches, provided that other factors leaned toward the delay being undue or unreasonable.

In a TTAB cancellation case to defeat a trademark registration, notice that the earliest date for calculating laches does not go back to the time when the plaintiff first knew of the defendant’s use of the trademark. This distinction between registration and use is critical when it comes to the laches defense in TTAB cases. Suppose the plaintiff had known about your trademark usage for years. Such knowledge of your prior trademark use does not necessarily mean that your laches defense will prevail in a TTAB proceeding to cancel your trademark registration.

When would the delay defense be unavailable in a trademark cancellation?

Laches may not be applied as a defense if confusion is inevitable, such as when the goods are legally identical and the marks are very similar. Laches would not be available as a defense to a fraud claim.

Need help in defending a trademark cancellation?

Email trademark lawyer Vic Lin at vlin@icaplaw.com or call (949 223-9623 to discuss your trademark cancellation case.

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