660 F. App'x 103
3d Cir.2016Background
- TRC purchased secured loans and UCC-1 financing statements that listed FWLP’s collateral, including the trademarks “Fudgetopia” and “Fudgie Wudgie” (the FW marks), and later re-filed financing statements showing its security interests.
- FWLP (and related FW entities) applied for and obtained federal registrations for the FW marks in 2011–2012; at those times Warman was an officer and Christine Falvo was CEO.
- FWLP executed a bill of sale and a Trademark Assignment in 2012 conveying rights in the FW marks and related goodwill to TRC after default and a sheriff’s sale in which TRC was the high bidder.
- TRC sued Warman and Fudgetopia, Inc. for trademark infringement and moved for partial summary judgment seeking a declaratory judgment that TRC is the lawful owner of the FW marks and Warman has no rights.
- The District Court granted partial summary judgment for TRC; Warman appealed, challenging ownership, alleged fraud in procurement, abandonment, oral assignment, and denial of leave to amend/counterclaim.
Issues
| Issue | Plaintiff's Argument (TRC) | Defendant's Argument (Warman) | Held |
|---|---|---|---|
| Ownership of federally registered FW marks | Federal registration (and PTO records) plus TRC’s secured-interest transfers and sheriff’s sale establish TRC ownership | Warman claims he is senior user and never assigned marks to FW entities | Court: TRC entitled to presumption of ownership; Warman failed to rebut registration or show senior-user ownership; judgment for TRC |
| Fraud in procuring registrations | Registrations valid; no material false statements shown | Warman alleges registration procured by fraud (wrong first-use date/owner) | Court: No genuine dispute; Warman produced insufficient evidence of fraudulent procurement |
| Abandonment or non-use of Fudgetopia | No evidence of three consecutive years’ non-use or intent to abandon | Warman alleges abandonment and non-use by TRC; cites Falvo’s statements | Court: Abandonment not proven; hearsay/inadmissible evidence and insufficient proof of required non-use/intent |
| Oral assignment to Warman | Assignments in record are written (bill of sale, Trademark Assignment); Lanham Act requires written assignment for registered marks | Warman contends an oral assignment (or email by Falvo) transferred ownership | Court: Oral assignment invalid for registered marks; no written transfer effectuated; summary judgment proper |
| Leave to amend / counterclaim | TRC opposed; discovery closed and summary judgment pending | Warman sought leave to amend after discovery closed and late | Court: Denial not abuse of discretion — undue delay and proposed counterclaims would be futile |
Key Cases Cited
- Lucent Info. Mgmt., Inc. v. Lucent Tech., Inc., 186 F.3d 311 (3d Cir.) (federal registration is prima facie evidence of validity and ownership)
- Door Sys., Inc. v. Pro–Line Door Sys., Inc., 83 F.3d 169 (7th Cir.) (presumption of validity evaporates when evidence of invalidity presented)
- Zazu Designs v. L'Oreal, S.A., 979 F.2d 499 (7th Cir.) (registration may create a rebuttable presumption of use as of filing date)
- L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349 (Fed. Cir.) (fraud in procuring a mark requires knowingly false, material representations)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment requires more than a scintilla of evidence)
- Beauty Time, Inc. v. VU Skin Sys., Inc., 118 F.3d 140 (3d Cir.) (Lanham Act requires written assignments for federally registered marks)
- Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (senior user rights generally prevail under common law)