Kaufhold v. Caiafa, 872 F. Supp. 2d 374

Misfits formed in 1977; classic period 1978–1982 with four members including Kaufhold (guitarist, 1978–1980, stage name Bobby Steele) and McGuckin (drummer, 1979–1982, stage name Arthur Googy).
Caiafa joined in 1977 as bassist (stage name Jerry Only); Danzig was vocalist and not party to suit; Misfits Marks used to identify services during classic period.
From 1983–1995, the band did not tour or record as the Misfits; Kaufhold allegedly used the Misfits Marks personally from 1983 onward; merchandising and performances continued by Kaufhold.
1994 Settlement between Caiafa and other former members; plaintiffs were not parties; Caiafa allegedly claimed all former members co-owned the Misfits Marks and no member would apply for exclusive rights.
1995 Settlement allowed Caiafa to apply for exclusive rights to the Misfits Marks; plaintiffs not informed of settlement terms.
Beginning in 2000, Caiafa/Cyclopian filed five PTO applications for Misfits Marks; representations stated Cyclopian owned the Marks and no other rights holder existed; three registrations matured.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether laches bars Counts I and III	Delay inequitable due to defendants' conduct	Lanham Act claims barred by laches based on delay and prejudice	Laches denial premature; issues disputed facts
Whether Plaintiffs state a Lanham Act claim for ownership/infringement	Plaintiffs continuously use and own the Misfits Marks	No continuous use or ownership established	Plaintiffs sufficiently alleged continuous use; Lanham Act claims survive dismissal

Santana Prods., Inc. v. Bobrick Washroom Equip., Inc., 401 F.3d 123 (3d Cir. 2005) (laches applies to Lanham Act claims when appropriate)
Marshak v. Treadwell, 240 F.3d 184 (3d Cir. 2001) (royalties on recordings constitute use of the mark)
A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2000) (ownership requires continuous use in commerce)
Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277 (3d Cir. 1991) (first adopter can assert ownership with continuous use)
Int'l Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087 (Fed. Cir. 1984) (actual commercial or pecuniary interest required for standing)
E.E.O.C. v. The Great Atlantic & Pacific Tea Co., 735 F.2d 69 (3d Cir. 1984) (preservation of relevant equitable defenses recognized)
Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020 (Fed.Cir. 1992) (unclean hands may defeat laches in certain circumstances)
Kelly v. Estate of Amone ex rel. Ahern, 2009 WL 2392108 (D.N.J. 2009) (ongoing royalties and marketing support demonstrate continued use)