Pinkette v. Cosmetic Warriors: Trademarks

The Ninth Circuit lets laches bar Lush's trademark infringement and cancellation claims, holding Petrella and SCA Hygiene do not reach the Lanham Act.

Trademark owners lost their last clear shield against delay-based defenses on June 29, 2018, when the Ninth Circuit decided Pinkette Clothing, Inc. v. Cosmetic Warriors Limited, 894 F.3d 1015 (9th Cir. 2018) (No. 17-55325). Cosmetic Warriors Limited (CWL), the United Kingdom company behind the LUSH cosmetics empire, had waited four years and eleven months after Pinkette Clothing registered LUSH for women’s apparel before petitioning to cancel the registration. Writing for a unanimous panel, Judge Jay S. Bybee held that laches barred both CWL’s infringement claim and its cancellation claim, even though the cancellation petition arrived inside the five-year window of 15 U.S.C. § 1064.

The decision answered a question the Supreme Court had left open. In Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), the Court held that laches cannot bar copyright claims brought within the Copyright Act’s three-year limitations period, and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), extended the rule to patent claims filed within the Patent Act’s six-year damages period. Whether that logic swept trademark law along with it was the open issue. Pinkette said no, and it remains the leading appellate answer as of July 2026.

At a glance

Case: Pinkette Clothing, Inc. v. Cosmetic Warriors Limited, 894 F.3d 1015 (9th Cir. 2018), No. 17-55325
Decided: June 29, 2018 (argued April 12, 2018); opinion by Judge Bybee, joined by Judge Watford and Judge Rogers of the Sixth Circuit, sitting by designation; appeal from the Central District of California (Judge S. James Otero)
Holding: Laches is available against Lanham Act infringement and cancellation claims, including a cancellation claim filed within the five-year period of § 1064, because the Lanham Act has no statute of limitations and § 1069 expressly makes laches a defense.
Status: Final; judgment for Pinkette affirmed, and the decision remains controlling Ninth Circuit law as of July 2026.

Two LUSH marks and eleven years of coexistence

CWL adopted the LUSH name in the mid-1990s for its mail-order cosmetics business. By the time of trial it operated roughly 940 LUSH retail stores in 49 countries, with its first United States store opening in 2002. Its United States registrations covered perfumes, hair services, and a publication, but never clothing; its LUSH t-shirts were a promotional “swag program” that moved fewer than 1,000 items in the United States between 2004 and 2013.

Pinkette Clothing, founded in 2003 by Edward Kim, his sister Erica Kim, and their cousin Daniel Kim, sold young women’s fashion under several labels, one of them LUSH. The Kims testified that they picked the word from a dictionary because it captured what they wanted the brand to be: “appealing, attractive, prosperous, and abundant.” They knew of CWL, having found lush.com while hunting for domain names, and confirmed that CWL did not sell clothing on its site. From September 2003 onward, Pinkette sold LUSH clothing to major retailers, principally Nordstrom, along with TJ Maxx and Bloomingdale’s.

Pinkette applied to register LUSH for clothing in May 2009. A trademark watch service notified CWL’s outside counsel of the published application, but no opposition followed, and the registration issued in July 2010, giving CWL constructive notice under 15 U.S.C. § 1072. CWL claimed it had no actual knowledge of Pinkette until late 2014, when its own application to register LUSH for clothing was refused over Pinkette’s registration. In June 2015 CWL petitioned the Trademark Trial and Appeal Board to cancel. Pinkette responded with a declaratory-judgment action in federal court, the TTAB proceeding was stayed, and CWL counterclaimed for infringement and cancellation.

The posture that followed is a procedural curiosity. The jury decided CWL’s infringement and cancellation claims and sat in an advisory capacity on laches, which belonged to the court. After a five-day trial, the jury found for CWL on infringement and cancellation but advised, and the district court then held, that laches barred everything. The jury also awarded zero damages, finding none of Pinkette’s profits attributable to infringement. Judgment went to Pinkette on all claims.

Petrella, SCA Hygiene, and the gap laches fills

The doctrinal stakes came straight from the Supreme Court’s recent timeliness cases. Petrella and SCA Hygiene rest on a separation-of-powers idea: when Congress enacts a statute of limitations, it “speaks directly to the issue of timeliness,” and letting judges apply laches inside that period would give them a “legislation-overriding” role. Laches, the Court said in SCA Hygiene, “is a gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill.”

Judge Bybee took that framing seriously and turned it around. The Lanham Act, unlike the Copyright Act and the Patent Act, contains no statute of limitations for infringement or cancellation. There is a gap, and laches is precisely the doctrine that fills it. Congress did not leave the point to implication: § 1069 provides that “in all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied,” and § 1115(b)(9) preserves equitable defenses even against incontestable marks. Petrella itself had contrasted the two statutes in a footnote observing that the Lanham Act “contains no statute of limitations, and expressly provides for defensive use of equitable principles, including laches.”

CWL’s fallback was to treat § 1064’s five-year incontestability period as the functional equivalent of a limitations period: because it petitioned before Pinkette’s mark became incontestable, laches supposedly could not apply. The panel rejected the analogy. Section 1064 allows a cancellation petition to be filed “at any time”; the five-year line merely narrows the grounds, from any ground that would have prevented registration down to an enumerated list including genericness, functionality, abandonment, and fraud. A provision that never extinguishes the claim is not a statute of limitations. The court noted the TTAB had repeatedly applied laches to petitions filed within five years, and flagged in a footnote that the Third Circuit’s contrary reading in Marshak v. Treadwell, 240 F.3d 184 (3d Cir. 2001), combined with CWL’s theory, would mean laches could never apply to cancellation at all, a result § 1069 forbids.

The four-year presumption and the E-Systems factors

With laches available, the panel ran the Ninth Circuit’s two-step analysis from La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867 (9th Cir. 2014). Step one measures delay against the most analogous state statute of limitations, here California’s four-year period for trademark actions. Laches runs from when the plaintiff “knew or should have known” of its claim, per Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass’n, 465 F.3d 1102 (9th Cir. 2006). CWL should have known no later than July 2010, when Pinkette’s registration issued and constructive notice attached; its June 2015 petition therefore came after the four-year period expired, raising a strong presumption in favor of laches.

Step two weighs equity through the six factors of E-Systems, Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983): strength of the mark, the plaintiff’s diligence, harm to the senior user if relief is denied, the junior user’s good faith, competition between the parties, and harm to the junior user from the delay. Only mark strength favored CWL. Its diligence was poor for a company whose enforcement log showed over 130 trademark disputes. Harm to CWL was neutral at best, since the parties had coexisted since 2003 and the jury attributed no profits to infringement. Pinkette’s good faith held up: the district court found the Kims “very credible,” their use was “open and notorious,” and there was no evidence of free-riding on CWL’s goodwill. Under the territoriality principle, the 2010 rejection of Pinkette’s Canadian application did not undermine its faith in its United States rights. The parties did not compete, and Pinkette had spent the delay years building its business through trade shows, a warehouse expansion, and added employees, the classic prejudice showing under Grupo Gigante SA de CV v. Dallo & Co., 391 F.3d 1088 (9th Cir. 2004). At least four and possibly five factors supported laches.

The panel also swatted away three escape routes. There is no heightened standard for applying laches to injunctive relief; the court read the old McLean and Menendez line, through Prudential Insurance and Danjaq LLC v. Sony Corp., 263 F.3d 942 (9th Cir. 2001), as imposing no such rule. Unclean hands did not bar Pinkette from asserting laches, because nothing approached clear and convincing evidence of bad faith. And the inevitable-confusion doctrine, which lets the public interest trump laches, is reserved for products that threaten public safety, which women’s fashion does not.

Open questions

The circuit split on § 1064 persists. The Third Circuit’s Marshak holds laches unavailable against cancellation of incontestable marks; the D.C. Circuit’s Pro-Football, Inc. v. Harjo and the Federal Circuit read “at any time” the other way. Pinkette deepens the disagreement without resolving it, and the Supreme Court has not stepped in.
How far does the presumption reach outside California? The analogous-limitations borrowing means the presumption’s trigger varies state by state, leaving identical delays to produce different presumptions in different districts.
What remains of inevitable confusion? The panel confined the doctrine to products that threaten public safety, but the line between overwhelming confusion evidence and a genuine safety threat is still hazy.
Advisory juries on laches. The case blessed a structure in which a jury finds infringement and the judge erases it on equity; how verdict and judgment interact in that posture will keep generating appeals.

Implications for brands and businesses

Watch notices are actual deadlines. CWL’s outside counsel received a watch-service notice of Pinkette’s 2009 application and no one acted. Constructive notice from a registration starts the laches clock whether or not anyone inside the company reads the alert.
The five-year cancellation window is softer than it looks. Petitioning before incontestability preserves your grounds, but it does not immunize the petition from laches. In the Ninth Circuit, delay past the analogous state limitations period, four years in California, creates a strong presumption against you even inside the § 1064 window.
Coexistence evidence compounds against late plaintiffs. Every year of peaceful overlap weakens the confusion story and builds the junior user’s reliance and prejudice case under the E-Systems factors.
Document independent adoption. The Kims’ credible dictionary-brainstorm testimony carried the good-faith factor. Preserve contemporaneous records of how a mark was chosen; awareness of a senior mark did not defeat good faith where there was no intent to trade on its goodwill.

Frequently asked questions

Why didn’t Petrella and SCA Hygiene eliminate laches in trademark cases? Those decisions rested on separation-of-powers concerns: courts may not use laches to override a statute of limitations Congress enacted. The Copyright Act and Patent Act each contain express limitations periods, so laches had no gap to fill. The Lanham Act contains no statute of limitations at all, and 15 U.S.C. § 1069 affirmatively makes laches a defense in inter partes proceedings, so the Ninth Circuit held the Supreme Court’s rule simply does not apply to trademark claims.

Doesn’t the five-year incontestability period in § 1064 work like a statute of limitations? No. The Ninth Circuit explained that § 1064 never bars a cancellation petition; a petition may be filed at any time. The five-year mark only narrows the available grounds, from any ground that would have blocked registration to an enumerated list such as genericness, functionality, abandonment, and fraud. Because nothing is ever time-barred, there is no congressional limitations period for laches to override, and laches can defeat even a petition filed within the five-year window.

How long a delay creates a presumption of laches in the Ninth Circuit? The court borrows the most analogous state statute of limitations, which for trademark claims arising in California is four years, and measures delay from when the plaintiff knew or should have known of its claim. Delay beyond that period creates a strong presumption in favor of laches; suing within it reverses the presumption. In Pinkette, constructive notice from the July 2010 registration started the clock, and CWL’s June 2015 petition came almost five years later.