by Max Schneider*

Trademark ownership is on the rise, and with it comes an increase in trademark infringement claims under the Lanham Act. This uptick may be in part because the Lanham Act does not have a statute of limitations. Alleged infringers therefore, often raise the laches defense. Under a laches defense, if the trademark owner unreasonably delays in asserting their claim, and the delay unduly prejudices the alleged infringer, then courts may find that the infringement suit is time-barred, or they may say the equities weigh in favor of letting the case proceed. While an equitable doctrine like laches balances the harms in each case, it opens the door for far more infringement suits that may otherwise have been clearly time-barred by a statute of limitations. Given the sharp increase in infringement suits, more and more defendants are asserting laches defenses. This Contribution suggests that Congress should amend the Lanham Act to include a statute of limitations. Doing so would create uniformity across areas of intellectual property law, provide concrete notice to trademark owners, reduce infringement suits that crowd courts, and alleviate inconsistent rulings that muddle the meanings of “unreasonable” and “prejudice.”

Trademark registration numbers have skyrocketed in recent years. In 2011, just over 300,000 trademarks were filed with the United States Patent and Trademark Office.1 That number increased to over 800,000 in 2020 and continued to rise even in the face of a global pandemic.2 Of course, such an uptick in trademark filings brings great benefits. Intellectual property filings are a strong indicator of innovation, and despite the pandemic, companies found opportunities to open new markets and to reach customers in new ways.3 One notable side-effect of this increase in innovation, however, is a delay in approval times.4 Another is the influx of trademark infringement suits, which was over 3,000 in the 12-month period between April 2022 and March 2023.5

Similar areas of intellectual property law, like copyright and patent law, have statutes of limitations that curtail an overabundance of claims and protect defendants against prejudice from pre-accusation delay. The Copyright Act of 1976, which protects authors from having their works copied for profit, has a built-in statute of limitations of three years.6 The Patent Act of 1952, which protects patent owners from infringement, has a time-bar of six years.7 However, the Lanham Act, which governs trademark law and protects trademark owners from infringement, is completely silent on a statute of limitations.8 Instead, trademark infringement suits may be time-barred only by the doctrine of laches.9

As an equitable doctrine, laches is not a one-size-fits-all remedy. Instead, a laches defense assesses each set of facts to determine whether a given suit should be actionable.10 In the trademark setting, courts must determine whether the trademark owner’s delay in challenging the infringement of their mark was “inexcusable or unreasonable” and whether the infringing user has been “unduly prejudiced” by the owner’s delay.11 But, inexcusability, reasonability, and undue prejudice are not clearly defined. This leaves a vague and complex standard that fails to inform litigants when an infringement claim is too old to pursue, leading to unnecessary and costly legal battles. Unlike a statute of limitations, which provides a bright-line rule that is easier to adjudicate, laches offers an ambiguous and unreliable balancing test. This encourages litigants to bring claims that would be strictly time-barred in other areas of intellectual property law, hoping that the doctrine’s unpredictability may save their claims.12

Courts’ examinations of each prong of the laches defense highlights the standard’s ambiguity and unpredictability. For example, to start the clock for a delay, courts typically look at when the trademark owner obtained knowledge of the infringing use.13 The question of when a trademark owner knew or should have known that it had a viable infringement claim is determined by an objective standard.14 This knowledge does not include any period of time before the owner is able to pursue an infringement claim—otherwise, a trademark owner could be punished for not bringing a claim they did not think they had the right to bring.15 Courts will look at when the infringement was or should have been reasonably apparent to the owner, rather than when the owner first took formal notice of it.16 As a result, some courts will excuse delays due to the lack of actual knowledge,17 while others will declare that plaintiffs should have had such knowledge and grant the laches defense.18

Consequently, a laches defense requires owners, in assessing whether or not to bring a suit, to determine when they should have had knowledge that they may not have even had. For example, in Black Diamond Sportswear, Inc. v. Black Diamond Equip., Ltd., the Second Circuit ruled that a plaintiff failed to undertake reasonable due diligence where the defendant marketed its product in widely-distributed catalogues, and therefore should have known of the infringement.19 In Borghese Trademarks, Inc. v. Borghese, the court ruled that isolated infomercials by a defendant were not sufficient to determine that the plaintiff should have known of the infringement.20 In neither case was it clear that there was actual knowledge of the infringing use, but the courts ruled differently after applying the same constructive knowledge criteria.21 And while distinguishing widely dispersed catalogues and isolated infomercials may seem just, it is certainly possible that there was actual knowledge that was not provable in both cases, leading one party to succeed in its willful infringement while the other failed. Even assuming no actual knowledge, the current standard puts trademark owners in the position of determining when they should have acquired knowledge that they lacked. A strict statute of limitations would ease the burden of this imperfect calculus on trademark owners. The current doctrinal framework is far less predictable than a statute of limitations—which at least provides concrete notice of how much time a plaintiff has to file an infringement claim—and incentivizes litigants to bring claims and raise laches defenses in the hopes of a favorable ruling.

Courts also examine whether the delay in bringing suit was unreasonable or inexcusable.22 How to determine whether a delay was unreasonable varies by circuit. As the Ninth Circuit noted in Jackson v. Axton, some courts measure delay by looking at the interval between the time a plaintiff obtained knowledge of the infringement and the time they filed suit.23 However, the Fifth Circuit in Elvis Presley Enterprises, Inc. v. Capece held that a cease and desist letter later sent by the plaintiff can stop the delay period.24 Inexcusability has an even more flexible standard. These courts look at progressive encroachment or fraud.25 Some courts rule that a delay equates to implied consent to use the trademark and will often find a laches defense successful.26 Others are more forgiving when it comes to delays and more readily deny laches.27 The latter approach can encourage trademark owners to wait until their infringement suits are fully ripe, disincentivizing premature suits. When it comes to the inexcusable and unreasonable delay prong, courts vary widely.

For years, the delay prong’s unpredictability led judges to look at the analogous state law’s statute of limitations as a guideline. In 1985, the Sixth Circuit in Tandy Corp. adopted the statute of limitations from Tennessee’s trademark law, creating a standard that courts around the country followed.28 This was perhaps the biggest clue that laches is too unpredictable to be a workable standard. Judges, rather than arbitrarily drawing a line for unreasonable and inexcusable delay, used the most readily available statute of limitations. This preference for a bright-line rule was ubiquitous for nearly 40 years, until 2021, when the Fourth Circuit held that analogous statutes act as a general guideline, not a bright-line rule.29 Now, circuits are split on the extent to which statutes of limitations can be used in determining reasonable and excusable delay periods for laches defenses, increasing the unpredictability of an already ambiguous doctrine at a time when trademark applications are on the rise.30

The final prong of a laches defense is the undue prejudice prong.31 Here, even if the delay in bringing suit is great, laches may not be successful unless the infringer experienced undue prejudice from the delay.32 This prong protects an infringer from costs incurred in reliance on the trademark owner not bringing suit, even if the owner never conveyed its approval of the infringing use explicitly.33

What exactly constitutes undue prejudice has a wide range, but defendants must adduce specific evidence of prejudice.34 This typically takes the form of economic prejudice, though evidentiary prejudice, such as the loss of a witness or evidence may also be sufficient.35 Economic prejudice arises when a defendant and possibly other parties will suffer the loss of monetary investments or incur damages which likely would have been prevented by earlier suit.36 For economic prejudice to apply, courts look for a change in the infringer’s economic position during the period of delay.37 However, courts have been unable to come to a consensus on what “undue” prejudice means. Defendants may point to continued general expenditures, such as marketing and advertising, but the Seventh Circuit in Tisch Hotels v. Americana Inn, Inc. ruled that mere expenditures in promoting an infringing product do not constitute a change in economic position.38 Conversely, the Federal Circuit in A.C. Aukerman Co. v. R.L. Chaides Construction Co. held that advertising costs do constitute undue economic prejudice.39 Meanwhile, the Ninth Circuit has ruled that a business must expand substantially for undue prejudice to be found.40

Simply put, courts have as little consensus on what undue prejudice means as they do on what constitutes constructive knowledge or an unreasonable and inexcusable delay. Considering the series of ambiguities each laches defense brings, infringement cases can hinge on several inconsistent balancing tests. This exists in stark contrast to a statute of limitations—a bright-line rule that would improve notice in trademark cases. Indeed, Congress wrote a statute of limitations into the Copyright Act.41 When copyright defendants continued to assert laches defenses in the decades following the Copyright Act, courts struggled with the doctrine’s applicability until the Supreme Court finally stepped in. In Petrella v. MGM, the Supreme Court held that laches can no longer be used as a defense in copyright infringement cases.42 Congress also wrote a statute of limitations into the Patent Act.43 Just like with the Copyright Act, after years of circuit splits over the applicability of laches as a defense in spite of the statute of limitations, the Supreme Court again stepped in. In 2017, in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, the Court ruled that the Patent Act’s statute of limitations precluded a laches defense.44

Of course, Congress amending the Lanham Act to include a statute of limitations has the potential to bring about the same split courts struggled with in the copyright and patent realms: does laches exist in tandem with a statute of limitations or are they mutually exclusive? Jurisprudence in copyright and patent law, however, signals that were this split to arise, it would likely be resolved by a ruling that these defenses are mutually exclusive. The result would be a bright-line rule that eradicates the ambiguities of a laches defense and preempts otherwise frivolous claims. Though this change may be gradual, the resulting decline in infringement claims could reduce court clog by offsetting the increase in trademark applications in a post-pandemic market.

Even if a split on whether laches and a statute of limitations work in tandem persisted, it would still be preferable to current applications of the laches doctrine. In fact, a finding by the Supreme Court that they do work in tandem could perhaps be the best outcome. The most prominent reason that laches is applied so inconsistently is that there is no baseline off of which to work. The primary benefit of the analogous statute standard was that the state statute of limitations helped ground courts. Should a court find egregious conduct, that conduct could be weighed against a more concrete delay time. Take, for example, an amendment introducing a four-year statute of limitations. Here, any egregious conduct, progressive encroachment, or undue prejudice would prompt the court to decide whether four years is appropriate. This takes into account the situational benefits of laches while mitigating the subjectivity as to what “inexcusable” or “unreasonable” means.

The American Bar Association first recommended a four-year statute of limitations for the Lanham Act in 1971, but that recommendation fell on deaf ears.45 The Supreme Court has since eradicated laches as a defense in copyright and patent infringement cases.46 Yet trademark law is moving in the opposite direction, with some courts abandoning the analogous statute standard that looks to state statutes of limitations. Rather than continuing to stay silent, Congress should amend the Lanham Act to institute a statute of limitations for trademark infringement claims. Doing so would not only provide more concrete notice to trademark owners of their rights, but would also create clarity for intellectual property owners across the board.

Many businesses hold intellectual property in the copyright, patent, and trademark varieties. These trademark owners should not have to police their trademarks in a vastly different way than their copyrights and patents. Nor  should they have to predict the outcome of such uncertain laches defenses or  be encouraged to bring claims that would otherwise be time-barred solely because of this unpredictability. As trademark applications, registrations, and infringement claims continue to rise, crowding courts with the laches defense is becoming increasingly unworkable. Laches may be an equitable doctrine, but the inconsistency with which similar laches defenses are successful is anything but equitable. A statute of limitations for trademark infringement claims would be more efficient, fair, and effective.

* Max Schneider is a J.D. Candidate (2025) at New York University School of Law. This Contribution is a commentary on the problem at the 2024 Saul Lefkowitz Moot Court Competition, hosted by the International Trademark Association. One of the questions presented was whether a trademark owner’s infringement suit was time-barred due to laches, specifically an unreasonable delay in bringing suit that unduly prejudiced the alleged infringer. This Contribution examines the efficacy of that laches defense more broadly in trademark law.

1. Stuart Graham et al., The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, 22 J. Econ. & Mgmt. Strategy 669, 683–84 (2013).

2. Press Release, World Int. Prop. Org., World Intellectual Property Indicators Report: Worldwide Trademark Filings Soar in 2020 Despite Global Pandemic (Nov. 8, 2021), https://www.wipo.int/pressroom/en/articles/2021/article_0011.html.

3. Id.

4. David Gooder, What a Huge Surge in Trademark Filings Means for Applicants, U.S. Pat. & Trademark Off.: Dir.’s F. Blog (June 23, 2021, 1:47PM), https://www.uspto.gov/subscription-center/2021/what-huge-surge-trademark-filings-means-applicants.

5. Table C-4. U.S. District Courts–Civil Cases Terminated, by Nature of Suit and Action Taken, During the 12-Month Period Ending March 31, 2023, United States Courts (last visited Oct. 23, 2024), https://www.uscourts.gov/file/72515/download.

6. 17 U.S.C. §§ 501, 507.

7. 35 U.S.C. §§ 281, 286.

8. See The Lanham Act, 15 U.S.C. §§ 1051–1141n.

9. 15 U.S.C. § 1115(b)(9) (“[E]quitable principles, including laches, estoppel, and acquiescence, are applicable.”).

10. See Brittingham v, Jenkins, 914 F.2d 447, 456 (4th Cir. 1990).

11. Id. at 456.

12. See Aaron E. Schindler, Amend the Lanham Act: Trademark Infringement Needs a Statute of Limitations, 27 Marq. Intell. Prop. & Innovation L. Rev. 139, 141 (2023) (“The laches defense to trademark infringement is the throw-it-against-the-wall-and-see-if-it-sticks defense. It might work; it might not. Trial after trial, defendants claim the laches defense with occasional, but unpredictable, success.”).

13. Brittingham, 914 F.2d at 456 (“While the operation of laches depends upon the particular facts and circumstances of each case,” a court should consider “whether the owner of the mark knew of the infringing use”).

14. See What-A-Burger of Va., Inc. v. Whataburger, Inc., 357 F.3d 441, 449 (4th Cir. 2004) (“‘[U]nreasonable delay’ begins at ‘the time at which the [trademark owner] knows or should know she has a provable claim for infringement.’” (quoting Kason Indus., Inc. v. Component Hardware Grp., Inc., 120 F.3d 1199, 1206 (11th Cir. 1997)) (emphasis added)).

15. Id.

16. See, e.g., Evergreen Safety Council v. RSA Network, Inc., 697 F.3d 1221, 1227 (9th Cir. 2012) (holding the laches evaluation period began when plaintiff’s president received defendant’s documents because he should have known of the infringement then, whether he read them or not).

17. See, e.g., Standard Oil Co. v. Standard Oil Co., 72 F.2d 524, 527 (10th Cir. 1934) (holding that where plaintiff justifiably did not learn of the infringement’s injurious effects until after defendant launched a stock-selling campaign, “laches cannot be imputed” so long as “plaintiff acted with reasonable promptness after it acquired knowledge”).

18. See, e.g., E-Systems, Inc. v. Monitek, Inc., 720 F.2d 604, 607 (9th Cir. 1983) (holding that even though plaintiff did not have actual knowledge of defendant’s activities until the year of the suit, “plaintiff ought to have discovered defendant’s use sooner had it been diligently seeking to enforce its mark”).

19. Black Diamond Sportswear, Inc. v. Black Diamond Equip., Ltd., No. 06-3508-cv, 2007 U.S. App. LEXIS 23515, at *7–8 (2d Cir. 2007).

20. Borghese Trademarks, Inc. v. Borghese, No. 10 Civ. 5552 (JPO) (AJP), 2013 U.S. Dist. LEXIS 39827, at *26–27 (S.D.N.Y. Jan. 14, 2013).

21. Compare Black Diamond, 2007 U.S. App. LEXIS 23515, at *7–8 (“BDE marketed its products in widely distributed catalogues, at yearly trade shows in which BDS and BDE both participated, and through retail stores nationwide.”) with Borghese Trademarks, Inc., 2013 U.S. Dist. LEXIS 39827, at *26–27 (“It is one thing to expect a company to monitor for infringements; it is quite another to expect it to spot several isolated minutes of infomercial footage over several years.”).

22. Brittingham, 914 F.2d at 456.

23. 25 F.3d 884, 889 (9th Cir. 1994) (“Laches is based on the plaintiff’s delay in beginning litigation, not on the information a defendant has regarding a claim.” (citing Nealey v. Transportacion Maritima Mexicana, S.A., 662 F.2d 1275, 1279 n.6 (9th Cir. 1980))).

24. 141 F.3d 188, 206 (5th Cir. 1998) (“The period of silence relevant to acquiescence would not include any time after the cease and desist letter was sent because EPE explicitly communicated its objection . . . .”).

25. See ProFitness Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical Therapy P.C., 314 F.3d 62, 68 (2d Cir. 2002).

26. See, e.g., Conan Props. v. Conans Pizza, Inc., 752 F.2d 145, 152 (5th Cir. 1985) (noting that a delay after knowledge of the infringement is tantamount to consent).

27. See, e.g., Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 775 (Fed. Cir.1995) (holding that consciously copying a product’s model was sufficiently egregious to constitute an unsuccessful laches defense despite a long delay in bringing suit).

28. Tandy, 769 F.2d at 363, 365; see also Schindler, supra note 12, at 165.

29. See Belmora LLC v. Bayer Consumer Care AG, 987 F.3d 284, 294–95 (4th Cir. 2021).

30. World Int. Prop. Org., supra note 2.

31. Brittingham, 914 F.2d at 456.

32. Id.

33. See Internet Specialties West, Inc. v. Milon-DiGiorgio Enters., Inc., 559 F.3d 985, 991–92 (9th Cir. 2009) (“Laches is meant to protect an infringer whose efforts have been aimed at ‘build[ing] a valuable business around its trademark’ and ‘an important reliance on the publicity of [its] mark.’” (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31:12 (4th ed.)) (emphasis omitted)).

34. See Ray Commc’ns., Inc. v. Clear Channel Commc’ns., Inc., 673 F.3d 294, 307 (4th Cir. 2012) (“[B]ecause the burden of proving laches rests with the proponent of that defense, the defendant had an obligation to adduce specific evidence of prejudice in order to thwart the plaintiffs’ motion for summary judgment.” (quoting Vineberg v. Bissonnette, 548 F.3d 50, 58 (1st Cir. 2008))).

35. McCarthy, supra note 33, § 31:12 (noting that evidentiary prejudice encompasses lost, stale or degraded evidence and witnesses whose memories have faded or who have died).

36. A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1033 (Fed. Cir. 1992).

37. Lake Caryonah Improvement Ass’n. v. Pulte Home Corp., 903 F.2d 505, 510 (7th Cir. 1990) (“Prejudice is established when a party ‘remains passive while an adverse claimant incurs risk, enters into obligations, or makes expenditures for improvements or taxes.’” (quoting Pyle v. Ferrell, 147 N.E.2d 341, 345 (Ill. 1958))).

38. 350 F.2d 609, 615 (7th Cir. 1965) (noting that mere expenditures could not alone be sufficient, since “relief would [then] have to be denied in practically every case of delay”).

39. See A.C. Aukerman, 960 F.2d at 1033 (holding that a loss of monetary investments, expenditures or any other change in defendant’s economic position during the period of delay suffices as economic prejudice for the laches defense).

40. See E-Systems, 720 F.2d at 607 (noting that if business growth was slower and steadier, laches would not have been found).

41. 17 U.S.C. § 507(b).

42. 572 U.S. 663, 680 (2014) (“The expansive role for laches MGM envisions careens away from understandings, past and present, of the essentially gap-filling, not legislation-overriding, office of laches. Nothing in this Court’s precedent suggests a doctrine of such sweep.”).

43. 35 U.S.C. § 286.

44. 580 U.S. 328, 346 (2017) (“Laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by § 286.”).

45. Schindler, supra note 12, at 141.

46. See supra text accompanying notes 41–44.