Philip W. Stanfieldv.Osborne Industries, Inc.

Trademark Trial and Appeal Board

Jul 15, 1999

No. 92024990 (T.T.A.B. Jul. 15, 1999)

Rogers
Cancellation No. 24,990
Philip W. Stanfield
v.
Osborne Industries, Inc.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 7/15/00
Before Simms, Seeherman and Hairston,
Administrative Trademark Judges.
By the Board:
Petitioner has petitioned to cancel each of two
registrations obtained by respondent.1 Before the Board
could issue an order acknowledging respondent’s answer to
the petition and setting a discovery and trial schedule,
petitioner moved for entry of summary judgment in his favor.
Respondent not only argued against the motion, but also
cross-moved for entry of summary judgment in its favor.

1 Registration no. 1,083,340 on the Principal Register, issued
January 24, 1978 and renewed February 19, 1998, for ORIGINAL
STANFIELD PRODUCT & design, with a disclaimer of “original” and
“product”, for “livestock raising equipment, more particularly
heating pads for hogs and the like”; and Registration no.
1,087,905 on the Supplemental Register, issued March 21, 1978,
for STANFIELD in typed form, for the same goods, but not renewed
and now expired.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Cancellation No. 24,990
2
Each party filed a reply brief in support of its own motion.
We have exercised our discretion to consider the replies.
The petition sets out four cognizable claims.2 By this
we mean that the following summary recites the claims we can
perceive as present in the petition; we leave for later
discussion which claims are within our jurisdiction. First,
petitioner asserts that respondent’s registrations were
obtained contrary to the provisions of Section 2(c) of the
Trademark Act, in that the marks consist, in part, in regard
to the Principal Register registration, or entirely, in
regard to the other registration, of the name of a
particular living individual, i.e., plaintiff, who did not
provide written consent to registration. Second, that
respondent’s registrations are subject to cancellation under
Section 2(a) of the statute because respondent’s use of the
marks on its goods falsely suggests a connection with
plaintiff. Third, that respondent’s registrations are
subject to cancellation under Section 2(a) because the marks
are used on obsolete goods of inferior quality, which tends
to disparage plaintiff’s reputation as an inventor and bring
him into disrepute. Fourth, that the registrations are

2 The petition references violation of petitioner’s “right to
privacy” but this is not further developed and is not considered
as a pending claim. Also, petitioner’s Section 2(a) claims are
not particularly well pled, and it is not entirely clear exactly
how many claims under that section of the statute petitioner
intended to pursue. We have given the pleading a liberal reading
and find it to assert at most the two noted claims.
Cancellation No. 24,990
3
subject to cancellation under Section 14(3) because the
marks are being used to misrepresent the source of
respondent’s goods.
Prior Federal Litigation Between the Parties
The parties are well-known to each other. They have
faced each other in two state court suits and one federal
court suit. In each case, petitioner has been the plaintiff
and respondent has been a defendant. [References in this
decision to plaintiff are references to petitioner and
references to defendant or defendants are references to
respondent.] The reported decisions of the federal court
suit provide the fodder for the cross-motions for summary
judgment. Our summary of the decisions resulting from that
suit are here limited to the issues, findings and rulings
that bear on this case.
In the U.S. District Court for the District of Kansas,
petitioner brought “claims [arising] from the defendants’
use of ‘Stanfield’ in two trademarks they have registered
with the United States Patent and Trademark Office….
“The three counts alleged in plaintiff’s complaint are
as follows: (1) a claim for unfair competition under 15
U.S.C. § 1125 [Section 43(a) of the Lanham Act]; (2) a claim
for fraudulent procurement of a federal trademark
registration under 15 U.S.C. § 1120 [Section 38 of the
Lanham Act]; and (3) claims of trademark infringement,
Cancellation No. 24,990
4
disparagement, slander and misappropriation of plaintiff’s
name.”
Stanfield v. Osborne Industries, Inc., et al, 839
F.Supp. 1499, 1500 (D.Kan. 1993)
The court construed the first count as a claim that
defendants engaged in unfair competition because their use
of the two registered marks infringed on plaintiff’s common
law trademark and trade name rights. Id. at 1503. The
court reasoned that for plaintiff to prevail on this count
he would need to establish, inter alia, that he has a
protectible trademark. The court also concluded that both
the unfair competition claim and the fraudulent procurement
claim “are premised upon the contention that plaintiff, not
[Osborne Industries], is the owner of the ‘Stanfield’
trademark.” Id. at 1503.
The court found that any rights the plaintiff may have
had “in the ‘Stanfield’ trademark and tradename” were
abandoned because the 1975 license agreement was a naked
license. Id. at 1504. The court also held that plaintiff’s
abandonment of his “alleged trademark rights disposes of
both his prior use claim3 and his fraudulent procurement
claim.” Id. at 1507.

3 We take the court’s reference to a “prior use claim” to be a
reference to plaintiff’s unfair competition claim which, the
court noted, was dependent on plaintiff proving he had a
protectible trademark, i.e., rights in a mark acquired prior to
defendant and not abandoned.
Cancellation No. 24,990
5
The court also agreed with defendants’ assertion that
plaintiff’s claims were barred by laches. The court found
that plaintiff and defendants “have had an adversarial
relationship since 1975”; that “plaintiff and his attorneys
[during the first state court suit in 1979 and 1980]
obtained actual knowledge that [Osborne Industries] claimed
two trademarks using ‘Stanfield’ and that it had registered
the trademarks with the United States Patent and Trademark
Office in 1977”; and that defendants, in the ensuing years,
had spent “considerable amounts of money to promote and
develop goodwill associated with the marks”. Id. at 1507.
The court completely discounted plaintiff’s assertion
that he was barred from pursuing his claims until the 1975
purported license agreement expired, holding that the
actions taken by Osborne Industries were “so inherently
inconsistent with the plaintiff’s licensor rights” that he
had to “act immediately” to pursue claims to his marks. Id.
at 1508. Thus, the court concluded plaintiff’s delay was
inexcusable, there was great prejudice to defendants because
of the delay, and defendants’ claim of laches was therefore
“dispositive of plaintiff’s [unfair competition and
fraudulent procurement] claims.” Id. at 1507.
The court concluded that “[t]he uncontroverted facts
demonstrate” that entry of summary judgment in defendants’
favor was warranted. Defendants’ motion was granted in
Cancellation No. 24,990
6
regard to the unfair competition and fraudulent procurement
claims but the court declined to exercise supplemental
jurisdiction over the state common law claims in plaintiff’s
third count.4
Plaintiff appealed the district court’s order to the
Court of Appeals for the Tenth Circuit. Before examining
the claims and the district court’s rulings, the circuit
court reviewed and upheld the determination that plaintiff
had effected a naked license, thereby abandoning “all his

4 Defendant has submitted a copy of the transcript of proceedings
from the parties’ second state court suit. That transcript
reveals that plaintiff’s counsel asserted that the federal court
was asked by defendants not only to enter summary judgment on the
federal claims, but also on the state law claims, but that the
court declined.
This was the basis for plaintiff’s assertion, in the second
state court suit, that the federal court’s decision did not have
claim preclusive effect for the state common law claims in the
second state court suit. While the federal district court’s
decision contradicts plaintiff’s counsel, insofar as it reports
that defendants only sought entry of summary judgment on the
federal claims, this is immaterial to our decision. What is
material, however, is that the state court entered summary
judgment in favor of the defendants. The court held that
plaintiff’s state law claims should have been brought in the
first state court suit and were, therefore, barred by claim
preclusion. In an oral ruling, the state court held:
“The doctrine of res judicata, issue of preclusion, exclusion,
also deals with the issue of judicial economy. There is a point
in time when litigation between parties must end. Individuals
cannot choose which item or claims they wish to litigate this
time, and when they lose that one, pick up a new issue that could
have been included in the previous litigation and begin with
that.
“The Court finds that the Plaintiff has had his day in court,
had an opportunity to raise his issues through both the state and
federal courts, that those issues which he’s raised are
appropriately resolved, and that the Court finds that summary
judgment is appropriate.”
Cancellation No. 24,990
7
rights in the ‘Stanfield’ marks.” Stanfield v. Osborne
Industries, Inc., et al, 52 F.3d 867, 872 (10th Cir. 1995).
The circuit court then reviewed the Section 43(a)
claims. The district court had viewed this as a claim of
unfair competition premised on defendants’ alleged
infringement of plaintiff’s common law trademark and trade
name rights. The circuit court, in contrast, concluded that
plaintiff was pursuing both a false advertising claim and a
false association claim. The court went on to find that
plaintiff did not have standing to bring either type of
claim. Id. at 872-73.
The circuit court viewed plaintiff’s second claim
exactly as the district court had, i.e., as a claim that
“defendants fraudulently procured registration of the
trademarks”. The court found that plaintiff had produced no
evidence before the district court that defendants knew the
oath in the applications was false, i.e., that defendants
knew of another with a right to use the marks. The court,
in fact, found evidence had been presented to the district
court to establish that defendant’s officers “believed that
[Osborne Industries] had the right to register the
trademarks and that plaintiff had assigned any rights in the
Cancellation No. 24,990
8
marks to [Osborne Industries] in the 1975 agreement.”5 Id.
at 874.
The circuit court affirmed the district court’s
decision, and did not remand any part of the case for
further proceedings.
Neither the district court nor the Tenth Circuit
distinguished between respondent’s principal register
registration and its supplemental register registration.
For this case, the distinction bears on the claims and
defenses that are available to the parties. We need not,
however, engage in any lengthy discussion of which of
petitioner’s claims is available against each of
respondent’s registrations and whether respondent’s
affirmative defense of laches may be asserted by respondent
in defense of both registrations. As noted infra,
petitioner is barred from litigating any of his pleaded
claims before the Board, in regard to either registration,
as a result of his failing to raise them in the federal
court suit.
Expiration of Supplemental Register Registration

5 Also in regard to defendant’s perception of the marks and their
ownership, we note that the district court considered testimony
from one of Osborne Industries’ officers that “Stanfield” would
be acceptable as a mark for the company “because ‘Stan’ was the
first name of [Osborne Industries’] president (Stanley Thibault)
and ‘field’ had an agricultural connotation.
Cancellation No. 24,990
9
One of respondent’s registrations expired during the
pendency of this case, because respondent did not file for
renewal. The expired registration was for the typed mark
STANFIELD and was on the Supplemental Register.
Usually, when a respondent allows a registration to
expire while the registration is the subject of a
cancellation proceeding, the Board will order the respondent
to show cause why the failure to renew the registration
should not result in entry of judgment against respondent.
See Trademark Rule 2.134.
In this case, respondent had already responded to the
petition for cancellation and the parties had already
briefed the cross-motions for summary judgment before the
registration was due for renewal. Respondent clearly knew,
when it failed to file for renewal, that petitioner had lost
the federal court suit and that respondent already had
argued here that petitioner should be barred from litigating
any claims before the Board that ought to have been raised
before the courts.
Under these circumstances, respondent’s decision not to
file for renewal of its supplemental register registration
does not warrant issuance of an order to show cause under
Trademark Rule 2.134. Issuance of such an order is
discretionary with the Board and is not viewed as serving
any useful purpose in this case.
Cancellation No. 24,990
10
Application of Claim Preclusion to This Case
Plaintiff has moved for summary judgment on two
grounds. First, plaintiff moves for summary judgment on the
theory that a mark which identifies a particular living
individual cannot be registered or, if registered, then the
registration cannot be maintained, without written consent
from that individual [the Section 2(c) claim in plaintiff’s
petition]. Second, plaintiff moves for summary judgment on
the theory that the federal court decisions have
preclusively established that respondent’s marks have been
abandoned.
Respondent presents a number of arguments in support of
its cross motion for entry of summary judgment in its favor.
Its strongest, and the one on which we find for respondent
and against petitioner, is claim preclusion.
The Board will not enter summary judgment on an
unpleaded ground, and plaintiff did not plead a claim of
abandonment. Thus, plaintiff’s motion for summary judgment
is denied in this regard. Moreover, we agree with
defendant’s characterization of plaintiff’s abandonment
argument as nonsensical. The federal courts found that
plaintiff had abandoned any common law rights to the
Stanfield trademark and trade name, not that respondent had
abandoned them.
Cancellation No. 24,990
11
In regard to plaintiff’s Section 2(c) claim, we hold
this to arise out of the same transactional facts as
plaintiff’s claim, raised in the federal courts, that
defendant procured its registrations through fraud on the
Patent and Trademark Office. “Under claim preclusion, a
plaintiff is barred from a ‘subsequent assertion of the same
transactional facts in the form of a different cause of
action or theory of relief.’ [citations omitted].” Vitaline
Corp. v. General Mills Inc., 13 USPQ2d 1172 (Fed. Cir.
1989). When plaintiff went before the federal district
court with its fraudulent procurement claim, it ought also
to have brought its Section 2(c) claim.6 He is now barred
from doing so.
In regard to petitioner’s Section 2(a) claims, we first
note the claim that respondent’s registrations are subject
to cancellation because the marks are used on obsolete goods
of inferior quality, which tends to disparage plaintiff’s
reputation as an inventor and bring him into disrepute. We
do not believe that this pleads a proper claim under Section
2(a). Even if we do, however, assume the pleading is

6 Indeed, petitioner’s complaint filed in the district court, a
copy of which has been made of record by respondent, includes
allegations relative to such a claim. In paragraph 29 of the
second count, petitioner asserted both that the “trademark
STANFIELD consisted or comprised the personal name of the
plaintiff and identified him; [and] plaintiff Stanfield had given
no written consent to Osborne or others to register his personal
name and trademark upon either the Principal or Supplemental
Register of the United States Patent and Trademark Office as
required by 15 U.S.C. 1052.”
Cancellation No. 24,990
12
sufficient, there is no genuine dispute that petitioner’s
complaints about the supposed shoddy quality of respondent’s
goods are long-standing. Thus, any claims involving use of
the registered marks to the detriment of petitioner’s
reputation ought to have been raised in the federal court
suit.
Petitioner’s other claim under Section 2(a), i.e., that
respondent’s use of the marks on its goods falsely suggests
a connection with petitioner, and its claim under Section
14(3) that the marks are being used to misrepresent the
source of the goods, are intertwined, in that they rely on
the same assertions of fact. For example, petitioner’s
claim that he is known in the field stems from his early
invention of the hog heating pad. If it is true, as
petitioner claims, that purchasers of such goods bearing
petitioner’s name would tend to associate the goods with
petitioner, rather than defendant, then it has been true for
a long time. These claims, too, ought to have been brought
in the federal court suit.
In short, petitioner clearly targeted respondent’s
procurement of its registrations, not just respondent’s use
of its marks, when petitioner filed the federal court suit.
Most, if not all, of the facts necessary to support
petitioner’s claims were not only known to petitioner when
that suit was filed, but were pleaded in that suit. Thus,
Cancellation No. 24,990
13
any and all claims regarding the efficacy of respondent’s
registrations, and which arise out of those facts, ought to
have been pleaded before the federal district court.
We agree with the holding in the most recent state
court suit between the parties, that “Plaintiff has had his
day in court, had an opportunity to raise his issues through
both the state and federal courts, that those issues which
he’s raised are appropriately resolved, and [entry of]
summary judgment is appropriate.”
Conclusion
Petitioner’s motion for summary judgment is denied in
its entirety. Respondent’s cross-motion for summary
judgment is granted on the ground that petitioner’s is
barred from litigating before the Board any of its pleaded
claims. The petition for cancellation is dismissed.
R. L. Simms
E. J. Seeherman
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board