The panel affirmed the district court’s judgment in favor of Pinkette Clothing, Inc., which sells LUSH-branded women’s fashions, in a case in which Cosmetic Warriors Limited (CWL), which sells LUSH-branded cosmetics and related goods, sought (a) an injunction restraining Pinkette from infringing on CWL’s LUSH trademark and (b) the cancellation of Pinkette’s registration of its own LUSH trademark.
Distinguishing Perella v. Metro-Goldwin-Mayer, Inc., 134 S. Ct. 1962 (2014) (Copyright Act), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017) (Patent Act), the panel held that laches is available as a defense to CWL’s cancellation claim because the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation.
The panel held that the district court applied the correct standard when it applied the factors set forth in E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL’s claim for injunctive relief. The panel wrote that analysis of the ESystems factors validates the strong presumption in favor of laches created by CWL’s delaying past the expiration of the most analogous state statute of limitations. The panel concluded that the district court did not abuse its discretion in applying laches to bar CWL’s cancellation and infringement claims.
The panel held that the district court did not abuse its discretion in declining to apply the doctrine of unclean hands to preclude Pinkette from asserting laches, and that the inevitable confusion doctrine is inapplicable. The panel also held that evidence of Pinkette’s LUSH mark in Canada was not relevant to the infringement-related questions for which the jury was the sole trier of fact, and that any error in excluding the disputed evidence from the jury’s hearing was harmless because CWL was allowed to present all of its evidence to the district court after the jury was dismissed. Rejecting CWL’s argument that the words “other than clothing” in the district court’s judgment is inconsistent with the jury’s verdict and in error, the panel concluded that the judgment, read as a whole, accurately reflects the court’s disposition of the case.