IP Law Daily, TRADEMARK—S.D.N.Y.: Limited permanent injunction requiring disclaimers granted in glassless mirrors case, (May 5, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The district court determined that as the plaintiff waited nearly 15 years to sue the defendant, a narrower permanent injunction was warranted.

In a trademark infringement lawsuit, the U.S. District Court for the Southern District of New York granted Mirrorlite Mirror, Inc. a limited permanent injunction that prohibits the defendant from using LiteMirror to market and sell glassless mirrors unless in every instance it is accompanied by an appropriate disclaimer. The district court determined that the risk of confusion between the parties’ marks derives in substantial part from the fact that one who encounters both may fail to grasp that the words “lite” and “mirror” were swapped and a disclaimer that references MirrorLite will avoid that risk (Mirrorlite Mirror, Inc. v. Glassless Mirror Manufacturers Inc., No. 1:23-cv-03437-LAK (S.D.N.Y. May 1, 2026)).

Background. In the 1960s, an enterprising New York-based company named Hudson Photographic Industries, Inc. began selling a special type of mirror made without glass. These glassless mirrors were both lightweight and shatterproof. To describe them, the company trademarked the term “MirrorLite.” However, Hudson Photographic went bankrupt and closed in 2007. Later, a group of former employees of Hudson Photographic founded Hudson Mirror, LLC and was the first to appropriate the abandoned MirrorLite trademark. However, within a year and a half relations soured within Hudson Mirror, LLC’s ranks. Two former Hudson Photographic employees quit starting a competing glassless mirror firm called Glassless Mirror Manufacturers, Inc. (defendant) around August 2008. Unwilling to cede all the goodwill associated with MirrorLite, the defendant adopted its mirror image: LiteMirror. Meanwhile, in 2011 Hudson Mirror, LLC, was renamed MirrorLite Mirror, Inc. (MLM).

In 2023, MLM brought an action against the defendant asserting three claims: (1) false designation of origin under Section 43(a) of the Lanham Act, (2) common law trademark infringement under New York law, and (3) trademark infringement under Section 32(1) of the Lanham Act. MLM sought to prohibit the defendant from using “LiteMirror” to market glassless mirrors.

Laches. Before turning to MLM’s claims, the court addressed the defendant’s affirmative defense of laches. The defendant argued that MLM knew about its allegedly infringing conduct since 2008 yet failed to sue until 2023, by which time the defendant had invested significant time and money into building the LiteMirror brand. To prevail on a defense of laches, however, a defendant “must come with clean hands,” or in other words must have acted in good faith. The court found that the defendant acted in bad faith. The court did not find credible the defendant’s claim to have conceived of the term LiteMirror solely as a descriptive for a lightweight mirror. The similarity between MirrorLite and LiteMirror immediately strikes anyone who hears or reads those terms, and the defendant’s were well aware both of the history of the MirrorLite mark and of MLM’s prior adoption of it. The adoption of such a similar name was no mere coincidence. Accordingly, the defendant’s laches defense failed.

False designation of origin. The court noted that MLM’s product, a glassless mirror has the advantage of being shatterproof in addition to being lightweight. As used in this context, and as demonstrated by the record in this case, the connection between “lite” and a glassless mirror is not direct enough to be categorized fairly as use of ordinary language to describe a product’s features or qualities. Bridging the gap between “MirrorLite” and a glassless mirror requires a degree of “imagination, thought and perception” that renders the mark suggestive. Further, the fact that the defendant adopted LiteMirror, rather than MirrorLite, as its moniker also is circumstantial evidence that MLM had begun using MirrorLite.

To evaluate this likelihood of consumer confusion, the court applied the eight factors established in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961). The court found that MLM’s mark is relatively weak, and despite a long period of co-existence between the parties, MLM failed to demonstrate more than a de minimis amount of actual confusion. Ultimately, however, on the facts of this case the court assigned more weight to the goods at issue being identical, the marks being confusingly similar, and the defendant having adopted LiteMirror in bad faith. Thus, although MLM showed a sufficient likelihood of confusion to prevail, the risk of such confusion was not substantial.

Trademark infringement. The parties agreed that the law governing MLM’s common law trademark infringement claim is “virtually identical” to the Lanham Act standard, with the exception of New York law requiring an additional showing of bad faith by the defendant.

The court noted that MLM’s registration identifies the goods as “plastic, flexible, metal coated film,” both for and not for “industrial or commercial purposes.” MLM argued that this description encompasses the glassless mirrors that it sells as finished products. The court disagreed because MLM sells a finished product that has a universally recognized name: a mirror. The MirrorLite registration, however, unmistakably describes only a raw material: a “metal coated film” for commercial, non-commercial, industrial, or non-industrial “purposes.” Thus, the court dismissed the MLM’s claim under Section 32(1) of the Lanham Act, ruling that the MLM’s registration does not cover mirrors.

Permanent injunction. The court rejected the defendant’s argument that MLM failed to demonstrate that it is entitled to a permanent injunction. However, the court found that a careful balancing of the equities in this case counsels against an absolute prohibition on the defendant’s use of LiteMirror because the court found only a “minimal to moderate amount of consumer confusion.” Although the products are identical, the marks are not identical and MLM failed to adduce evidence significantly supporting the strength of its mark or demonstrating that more than a de minimis amount of actual confusion has resulted from the defendant’s years-long use of LiteMirror. In addition, significantly supporting the likelihood of confusion finding is the similarity of the marks – a similarity that the court concluded can be reduced substantially through use of a disclaimer. Additionally, the defendant’s evidence and arguments, in light of MLM’s weak proof, demonstrate that the risk of consumer confusion can be substantially reduced without banning the defendant from using its mark.

The court also noted 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. Although the court found that the defendant’s bad faith precludes it from asserting laches as a complete bar to MLM’s claim, the prejudice attributable to MLM’s unreasonable delay in bringing suit remains a relevant consideration in balancing the equities.

Accordingly, the defendant was enjoined from using LiteMirror to market and sell glassless mirrors unless in every instance it is accompanied by an appropriate disclaimer. The details of the required disclaimer and its placement and conspicuity remain to be determined.

The Case is No. 1:23-cv-03437-LAK.

Judge: Kaplan, L.

Attorneys: Christopher Andrew Colvin (Practus, LLP) for Mirrorlite Mirror, Inc. Tatsuya Adachi (Leason Ellis LLP) for Glassless Mirror Manufacturers Inc.

Companies: Mirrorlite Mirror, Inc.; Glassless Mirror Manufacturers Inc.

Cases: Trademark NewYorkNews