Beauty Time, Inc. Beauty Makers, Inc. & R. Richard Riso v. Vu Skin Systems, Inc. Bjv Dpm Skin Systems, Inc. & Marion M. Vujevich

118 F.3d 140, 43 U.S.P.Q. 2d (BNA) 1225, 1997 U.S. App. LEXIS 16289, 1997 WL 366018
CourtCourt of Appeals for the Third Circuit
DecidedJuly 3, 1997
Docket96-3572
StatusPublished
Cited by66 cases

This text of 118 F.3d 140 (Beauty Time, Inc. Beauty Makers, Inc. & R. Richard Riso v. Vu Skin Systems, Inc. Bjv Dpm Skin Systems, Inc. & Marion M. Vujevich) is published on Counsel Stack Legal Research, covering Court of Appeals for the Third Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Beauty Time, Inc. Beauty Makers, Inc. & R. Richard Riso v. Vu Skin Systems, Inc. Bjv Dpm Skin Systems, Inc. & Marion M. Vujevich, 118 F.3d 140, 43 U.S.P.Q. 2d (BNA) 1225, 1997 U.S. App. LEXIS 16289, 1997 WL 366018 (3d Cir. 1997).

Opinions

OPINION OF THE COURT

ROSENN, Circuit Judge.

This appeal primarily presents a novel question in this Circuit concerning the constructive notice provisions of the Lanham Act, 15 U.S.C. § 1058, the application of a statute of limitations borrowed from the state of Pennsylvania, and the tolling principles of that state. The United States District Court for the Western District of Pennsylvania dismissed the action for fraudulent re-registration of a trademark as time barred, and the remainder of the complaint for lack of standing, failure to state a claim, and pendant jurisdiction. The plaintiffs timely appealed. We affirm in part and vacate in part.

I.

In 1981, Marion J. Vujevieh filed an application for the registration of the trademark “DPM” with the United States Patent and Trademark Office (“PTO”) for use in interstate commerce of medicated and non-medicated cosmetics. In 1983, Vujevieh obtained the registration of the trademark and listing as the sole user of the trademark. Vujevieh and B JV, a limited partnership in which Vujevich participated, used this trademark exclusively until 1987.

In 1987, Vujevieh allegedly agreed to form a corporation with R. Richard Riso to manufacture and distribute products bearing the DPM trademark. This new corporation, Beauty Time, Inc., a Delaware corporation, of which Riso is the sole shareholder, began distributing products in or about August 1987 bearing the DPM trademark. Plaintiffs allege that Vujevieh had orally assigned the DPM mark to Beauty Time in 1987 for its exclusive use and Beauty Time claims to have used the mark exclusively from 1987 to 1991.

In February, 1989, Vujevieh filed a combined §§ 8 and 15 declaration1 in his own [143]*143name as owner and registrant with the PTO seeking renewal of the trademark in accordance with federal trademark registration law. Vujevich filed an affidavit in connection with the declaration asserting that he was the sole owner and user of the trademark. Vujevich allegedly used Beauty Time packaging in support of this declaration. In July, 1989, the ownership of the trademark became “incontestable” and the PTO renewed Vujevieh’s registration of the DPM trademark, with no mention of the alleged assignment of the mark to Beauty Time and its junior use of the mark.

In 1991, Vujevich allegedly began marketing and selling items bearing the DPM trademark without the consent of Beauty Time or Riso. According to the plaintiffs, these products were distributed under the names VU Skin Systems and DPM Skin Systems. Beauty Time unsuccessfully sought to compel Vujevich to cease from distributing these products bearing the DPM trademark. In August, 1994, Vujevich informed a number of purchasers and retailers of the Beauty Time products that he, Vujevich, was the owner of the DPM trademark and that Beauty Time was infringing on the trademark. Most of these customers stopped purchasing Beauty Time products based upon Vujevich’s assertions of ownership.

In July, 1995, Riso ascertained that Vujevich had re-registered the trademark in 1989 listing Vujevich as the sole owner and user of the trademark. Soon thereafter, the plaintiffs brought this action against the defendants seeking cancellation of the trademark, declaratory and injunctive relief, and monetary damages. The amended complaint asserted eleven counts: four federal counts [trademark infringement (I), false advertising (II), false designation in interstate commerce (III), and fraud under the Lanham Act (XI) ] and seven state statutory and common-law counts [violation of the state anti-dilution statute (IV), common law trademark infringement (V), fraudulent misrepresentation (VI), breach of contract (VII), tortious interference with contract (VIII), unjust enrichment (IX), and misappropriation (X)]. The district court dismissed the amended complaint under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted. The court dismissed Count XI as time-barred, Counts I through V for lack of standing, and the remainder for lack of pendant jurisdiction. The plaintiffs appealed the order dismissing their amended complaint.

II.

A.

Plaintiffs first challenge the district court order dismissing their claim of fraud under the Lanham Act as time-barred. The district court’s application of the statute of limitations and the relevant tolling principles is subject to plenary review. Sheet Metal Workers Local 19 v. 2300 Group, Inc., 949 F.2d 1274, 1278 (3d Cir.1991). The Lanham Act contains no express statute of limitations and the general rule is that when a federal statute provides no limitations for suits, the court must look to the state statute of limitations for analogous types of actions. A claim for fraud under the Lanham Act conforms to this general rule. See Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1395 (9th Cir.1993); Guardian Life Ins. Co. v. American Guardian Life Assurance Co., 943 F.Supp. 509, 517 (E.D.Pa.1996). See also Wilson v. Garcia, 471 U.S. 261, 266-67, 105 S.Ct. 1938, 1941-42, 85 L.Ed.2d 254 (1985). On this claim, it is undisputed that Pennsylvania’s two-year statute of limitations for fraud actions would apply. 42 Pa. Cons.Stat. § 5524(7) (Supp.1997). Accordingly, Pennsylvania tolling principles would also be applicable in determining whether this suit is time-barred. See Wilson, 471 U.S. at 266-67, 105 S.Ct. at 1941-42; Board of Regents of the Univ. of the State of New York v. Tomanio, 446 U.S. 478, 487-88, 100 S.Ct. 1790, 1796-97, 64 L.Ed.2d 440, (1980); Johnson v. Railway Express Agency, Inc., 421 U.S. 454, 462, 95 S.Ct. 1716, 1721, 44 L.Ed.2d 295 (1975).

Under Pennsylvania law, the statute of limitations begins to run at the time “the [144]*144right to institute and maintain the suit arises.” Pocono Int’l Raceway, Inc. v. Pocono Produce, Inc., 503 Pa. 80, 468 A.2d 468, 471 (1983). In the present matter, the allegedly fraudulent act occurred in 1989, when Vujevieh re-registered the trademark with the PTO claiming that he was the sole owner and user of the DPM mark. Thus, absent any exceptions, the statute of limitations would have run in 1991, two years after the fraudulent act allegedly occurred.

Because we look to state law for the appropriate statute of limitations, we also look to Pennsylvania law on the closely related questions of tolling and application. See Wilson, 471 U.S. at 269 n. 17, 105 S.Ct. at 1943 n. 17. It is well-established that Pennsylvania law recognizes an exception to the statute of limitations which “delays the running of the statute until the plaintiff knew, or through the exercise of reasonable diligence should have known, of the injury and its cause.” Urland v. Merrell-Dow Pharmaceuticals, 822 F.2d 1268, 1271 (3d Cir.1987).

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118 F.3d 140, 43 U.S.P.Q. 2d (BNA) 1225, 1997 U.S. App. LEXIS 16289, 1997 WL 366018, Counsel Stack Legal Research, https://law.counselstack.com/opinion/beauty-time-inc-beauty-makers-inc-r-richard-riso-v-vu-skin-systems-ca3-1997.