United States District Court, D. Connecticut
RULING ON MOTION FOR RECONSIDERATION
Charles S. Haight, Jr. Senior United States District Judge.
Midsun Group Inc. ("Midsun") moves for
reconsideration of the Court's ruling on Defendant's
motion to dismiss, reported at 2016 WL 1060189 (D. Conn. Mar.
15, 2016) (the "Ruling"). "A motion for
reconsideration should be granted only when the defendant
identifies 'an intervening change of controlling law, the
availability of new evidence, or the need to correct a clear
error or prevent manifest injustice.'" Kolel
Beth Yechiel Mechil of Tartikov, Inc. v. YLL Irrevocable
Trust, 729 F.3d 99, 104 (2d Cir. 2013) (quoting
Virgin Atl. Airways, Ltd. v. Nat'l Mediation
Bd., 956 F.2d 1245, 1255 (2d Cir. 1992)). Familiarity
with the Ruling is assumed.
moves for reconsideration only of the Court's decision
not to dismiss Count I of Plaintiff's complaint. Count I
is a claim for unfair competition under the federal Lanham
Act, 15 U.S.C. § 1125(a), brought in relation to
Defendant's allegedly improper use of Plaintiff's
"570" mark. Count II was brought under the
Connecticut Unfair Trade Practices Act ("CUTPA"),
C.G.S. § 42-110a, also in relation to Defendant's
allegedly improper use of Plaintiff's "570"
mark. In the Ruling, the Court held that Plaintiff's
CUTPA claim as to "570" is barred by CUTPA's
three-year statute of limitations. 2016 WL 1060189, at *8.
However, the Court let Plaintiff's Lanham Act claim as to
"570" survive. This was because the timeliness of a
Lanham Act claim is governed not by a limitations period, but
by the doctrine of laches, a doctrine unavailable to
Defendant at this stage given Plaintiff's allegations
that Defendant was (and is) an intentional infringer.
Id. at *8-10 (quoting, inter alia,
Hermes Int'l v. Lederer de Paris Fifth Ave.,
Inc., 219 F.3d 104 (2d Cir. 2000)). In so holding, the
Court expressly rejected Defendant's argument that if
Plaintiff's CUTPA claim as to "570" is barred
pursuant to the statute of limitations, then Plaintiff's
Lanham Act claim as to "570" must, as a matter of
law, also be time-barred. Id. at *8.
reconsideration motion, Defendant asserts-"respectfully,
" of course-that this Court got it wrong. Defendant once
again proffers its argument that Plaintiff's Count I
Lanham Act claim and Count II CUTPA claim "are the same
(in relevant respects) and must be treated in the same way.
Defendant asserts that the same claims, must be treated the
same, and thus must be dismissed on the same basis: the
application of the statute of limitations." Doc. 71, at
argument has intuitive force. Yet, intuitive force alone. No
matter how much Defendant protests, equitable causes of
action-such as the Lanham Act-are not governed by statutes of
limitations. Rather, they are governed by laches, "[t]he
equitable doctrine by which a court denies relief to a
claimant who has unreasonably delayed in asserting the claim,
when that delay has prejudiced the party against whom relief
is sought." Black's Law Dictionary (10th ed. 2014).
As supported by ample citation in the Ruling, however,
statutes of limitations are not irrelevant in assessing the
timeliness of an equitable claim. Rather, it has been a
long-standing principle that statutes of limitation are
consulted to determine which party bears the burden of
establishing the presence-or lack thereof-of an unreasonable
delay in filing suit. Specifically, as to the Lanham Act:
Because the Lanham Act does not prescribe a statute of
limitations, federal courts often “look to ‘the
most appropriate’ or ‘most analogous' state
statute of limitation” to determine when the
presumption of laches applies to Lanham Act claims.
Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 191
(2d Cir. 1996). If the most closely analogous state statute
of limitations has not run, the presumption of laches does
not attach and the defendant bears the burden of proving the
defense. Id. But once the analogous state statute of
limitations has run, the burden shifts to the plaintiff to
show why laches should not apply. Id.
Fed. Treasury Enter. Sojuzplodoimport v. Spirits
Int'l B.V., 809 F.3d 737, 745-46 (2d Cir.
2016). In other words, Defendant is undoubtedly
incorrect when it again argues that "because the Lanham
Act does not include a statute of limitations the most
analogous statute of limitations applies." Doc.
64, at 2 (emphasis added). Rather, as to the Lanham Act, the
statute of limitation's effect is limited only to its
role in the above-quoted burden-shifting paradigm.
an effort to distinguish the facts of some of the
cases relied on by the Court, as well as Federal Treasury
Enterprise, Defendant has proffered no authority
demonstrating controlling law to be otherwise.
Moreover, Defendant makes no effort to distinguish the
principal case relied on in the Ruling for the proposition
that statutes of limitations do not apply to Lanham Act
claims: Conopco, Inc. v. Campbell Soup Co., 95 F.3d
187 (2d Cir. 1996). In Conopco, the Second Circuit
held that because plaintiff's claim was brought
"within the six year analogous period of limitations,
the district court properly determined that there was no
presumption of laches." Id. at 192.
Nevertheless, the court of appeals agreed with the district
court that plaintiff's delay in bringing suit was unduly
prejudicial and his claim was thereby barred by laches. The
impact of that holding is unmistakable: a statute of
limitations does not apply to Lanham Act claims. If it did,
the Conopco-plaintiff's claim would have been
timely as a matter of law. Rather, Conopco makes
clear that the statute of limitations serves only to effect
who has the burden of demonstrating the applicability of
laches. In Conopco, the defendant met that burden.
than distinguish Conopco-which is undoubtedly still
good law in this Circuit-Defendant points the court to a
California district court decision which cited
Conopco: Baby Trend, Inc. v. Playtex Products,
LLC, 2013 WL 4039451 (C.D. Cal. Aug. 7, 2013). Defendant
argues that Baby Trend somehow "clarifies"
Conopco. Doc. 64, at 5. Not so. Baby Trend
only cited Conopco for the irrelevant proposition
that the proper analogous statute of limitations for a false
advertising claim is that for a fraud claim. Id. at
*3. It is entirely unclear how Baby Trend
"clarified" Conopco in any remotely
true that after relying on Conopco for the
irrelevant point discussed above, the Baby Trend
court ultimately concluded that "California's
statute of limitations for fraud should apply to Lanham Act
claims." Id. The court did so in light of its
determination that two district "courts in the Ninth
Circuit have recognized that the closely analogous statute of
limitations may be a distinct defense to Lanham Act claims,
" and that "these cases suggest that a
statute-of-limitations defense to Lanham Act claims exists
separate and apart from a laches defense." Id.
This is precisely the law Defendant seeks to have this Court
apply. However, Defendant is mistaken if it believes this
Court will reconsider its holding in light of a California
district court's novel interpretation of Ninth Circuit
law that directly contradicts binding law in this Circuit.
The Second Circuit is clear, and it has reiterated its
position repeatedly, and recently, notably in Federal
Treasury Enterprise: courts are not to "apply"
statutes of limitations to Lanham Act claims, but are only to
use them by analogy for the purpose of determining burden of
proof. This Court's Ruling correctly applied that
controlling Second Circuit law. Defendant's motion is
entirely without merit. It is DENIED.
is SO ORDERED.
 In the Ruling, the Court applied this
standard, holding that Plaintiff had the burden of proving
that its claim was not barred by laches in light of the fact
that the analogous three-year limitations period had run.
However, the Court held that Plaintiff met that burden by