Judge Limits Trademark Relief for Bad-Faith Copycat Despite 15-Year Delay

NEW YORK (LN) — U.S. District Judge Lewis A. Kaplan on Friday granted a permanent injunction with a disclaimer in a trademark dispute between two Westchester County companies. He found that the defendant acted in bad faith but limited relief because the plaintiff waited 15 years to file suit.

MirrorLite Mirror, Inc. sued Glassless Mirror Manufacturers, Inc. in 2023, seeking to prohibit the defendant from using the name LiteMirror to market glassless mirrors. The court found that the defendant’s founders, former employees of the plaintiff, adopted the transposed mark to capitalize on the goodwill of the plaintiff’s MirrorLite brand.

However, Judge Kaplan declined to issue an absolute ban on the defendant’s use of the name. He ruled that a disclaimer would sufficiently reduce consumer confusion, noting that the plaintiff’s mark was “relatively weak” and that the plaintiff had failed to demonstrate more than a “de minimis amount of actual confusion” despite years of coexistence.

The dispute traces back to the 1960s, when Hudson Photographic Industries, Inc. trademarked MirrorLite for its shatterproof, glassless mirrors. Hudson Photographic went bankrupt in 2007. MirrorLite Mirror, Inc., founded by former Hudson employees, began using the mark shortly after. Two other former employees, Benito Repollet and Richard Powers, left to start the defendant company in 2008, adopting the name LiteMirror.

Judge Kaplan found that the defendant’s adoption of the name was a “deliberate attempt to ride the coattails of the MirrorLite brand.” He rejected the defendant’s laches defense, which argued that the plaintiff’s delay barred the claim, because the defendant lacked “clean hands” due to its intentional infringement.

Nevertheless, the court balanced the equities, noting that the plaintiff had threatened litigation in 2008 and 2009 but did not file suit until 2023. During that period, the defendant invested a “significant six-figure sum” in advertising the LiteMirror brand.

The court also dismissed the plaintiff’s claim under Section 32(1) of the Lanham Act, ruling that the plaintiff’s federal trademark registration covered “plastic, flexible, metal coated film” rather than finished mirrors. Judge Kaplan wrote that the registration did not cover the final product, stating, “No one ever would say, ‘You’ve got some dirt on your face. Go look in the metal-coated film.’”

The plaintiff’s counsel did not immediately respond to a request for comment.