IP Law Daily, TRADEMARK—S.D.N.Y.: Laches barred Lanham Act recovery against artist Tahliah Barnett, (Aug 20, 2026)

By Thomas K. Lauletta, J.D.

A court action to deny Barnett’s pending trademark registration was not authorized under the Lanham Act.

The defendants’ counterclaims under the Lanham Act, asserted against plaintiff Tahliah Barnett made more than ten years after the defendants’ voluntary dismissal of their case against Barnett, were barred by the doctrine of laches. The defendants’ request for the court to direct the USPTO to deny Barnett’s registration for her “FKA Twigs” tradename was also denied because the court did not have the power to do so under section 1119 of the Lanham Act while the trademark registration was still pending. The court denied Barnett’s request for an injunction against the Goods for failure to establish non-fringement as a matter of law (Barnett v. The Laura Good, Linda Good Partnership, No. 1:26-cv-02331-JSR (S.D.N.Y. Aug. 18, 2026)).

The plaintiff, Tahliah Barnett, is an internationally recognized artist whose work includes music, modeling, and acting.

Defendants Laura and Linda Good (“The Goods”) comprise a band called “The Twigs.” The Goods performed under this name since 1994 and held a trademark registration since 1996 “in live and recorded musical performances and other entertainment services.”

Until 2013, Barnett performed under her childhood nickname, “Twigs.” In that year Barnett asked for the Goods’ permission to continue using “Twigs” as a stage name and ultimately offered them $15,000 to permit this continued use. The Goods refused Barnett’s request and offer. After the Goods’ decision, Barnett changed her stage name to “FKA Twigs.”

In 2014, the Goods filed a lawsuit in California court alleging that Barnett’s performance and release of music under the “Twigs” and “FKA Twigs” names infringed their copyright. The Goods also sought a temporary restraining order seeking to block Barnett from performing at an imminent concert. The court denied the Goods’ request for the restraining order, stating that they had not established the likelihood of irreparable harm absent the order. A few days later the Goods voluntarily dismissed their case without prejudice.

In late 2023, Barnett filed a trademark application for “FKA Twigs” with the U.S. Patent and Trademark Office (“USPTO”). While Barnett’s application was still pending, the Goods filed an opposition to Barnett’s request.

Thereafter, Barnett sued the Goods, asking the U.S. District Court in New York City to declare that: (1) she did not infringe the Goods’ trademark; (2) her use of the “FKA Twigs” mark was unlikely to cause confusion with the Goods' products and services; (3) the Goods’ assertions of Barnett’s trademark infringement were barred by the doctrine of laches; and (4) that Barnett’s pending application for registration of the “FKA Twigs” mark may proceed to registration. Barnett also sought an injunction barring the Goods from interfering with her use of the “FKA mark” and from opposing her USPTO registration.

Doctrine of laches. The court noted that laches is a viable defense to both Lanham Act claims and claims for unfair competition under New York common law. Based on the facts presented, the court concluded that Barnett did not engage in intentional infringement and was not barred from raising a laches defense to the Goods’ infringement claims.

A laches defense in New York could not be successfully raised in the infringement action here until after the state’s six-year statute of limitations period had expired. For laches to apply, it must be shown that the senior trademark owner (the Goods) knew or should have known that they had a provable claim against Barnett more than six years before they brought the instant suit. Here, the Goods were aware of Barnett’s allegedly infringing activity no later than 2014 but failed to assert their claims for more than ten years. The court concluded that this inaction created a presumption of laches.

Counterclaim under Lanham Act section 1119. The Goods sought an order from the New York court directing the USPTO to deny Barnett’s trademark application. The court refused to do so, stating that Lanham Act section 1119 only gives district courts the authority to cancel existing registered marks, not pending trademark applications, such as Barnett’s application.

Injunctive relief. Barnett requested a declaration that her use of “FKA twigs” does not infringe on the Goods’ trademark and would not likely cause confusion with the Goods’ use of “The twigs.” Barnett also sought an injunction barring the Goods from interfering with her use of “FKA twigs” and from opposing her USPTO application. The court refused to grant the injunction, holding that the pleadings in the case were insufficient to establish non-infringement as a matter of law.

Court action. The district court in New York City dismissed the defendants’ counterclaims and granted Barnett’s application for declaratory relief.

The Case is No. 1:26-cv-02331-JSR.

Judge: Rakoff, J.

Attorneys: Lindsay Rebecca Edelstein (Mitchell Silberberg & Knupp LLP) for Tahliah Barnett p/k/a FKA twigs. David Ira Greenbaum (Rimon, P.C.) for The Laura Good, Linda Good Partnership, Linda Good and Laura Good.

Companies: The Laura Good, Linda Good Partnership

Cases: Trademark USPTO NewYorkNews