Haymaker Sports, Inc. v. Turian

581 F.2d 257, 198 U.S.P.Q. (BNA) 610, 1978 CCPA LEXIS 257

• Court: Court of Customs and Patent Appeals
• Decided: August 3, 1978
• Docket: Appeal No. 78-532
• Status: Published

Opinions

MILLER, Judge.

This appeal is from a decision of the Patent and Trademark Office (“PTO”) Trademark Trial and Appeal Board (“board”), 197 USPQ 32 (1977), denying in part a petition by appellant, Haymaker Sports, Inc. (“HSI”),¹ to cancel the registration of the mark HAYMAKERS.² We reverse.

Background

HSI is the owner of registrations for HAYMAKER³ and CHARLES OF HAY-MAKER⁴ for women’s sportswear such as shirts, skirts, blouses, dresses, suits, and slacks, and for women’s jewelry. Earliest use in commerce of its marks was 1945. The original owner of the registration in issue, Avon Shoe Co. (“Avon”), first used the mark HAYMAKERS in commerce on shoes in 1941. In 1953 Avon brought suit⁵ against HSI and its parent, David Crystal, Inc., to enjoin HSI’s use of HAYMAKER on women’s sportswear. The suit culminated in a judgment which, although likelihood of confusion was found from both parties’ use of substantially identical marks, permitted each party to continue use of its respective mark on its respective' goods. Avon Shoe Co. v. David Crystal, Inc., 279 F.2d 607, 125 USPQ 607 (CA 2 1960).

As a result of this litigation, Avon was unable to pay its attorneys’ fees and, upon their suit for collection in 1962, entered into an agreement on June 13, 1963, providing for certain “escrowees,” Max Block (attorney for Avon) and Eugene Moran (attorney for the unpaid attorneys), to be assigned Avon’s mark HAYMAKERS as collateral security for payment. The pertinent portions of that agreement read:

THIRD : In addition to these aforesaid payments, the plaintiffs [unpaid attorneys] shall be entitled to receive, by payment to their attorney, EUGENE J. MORAN, an amount equal to five per cent, of the net profits before taxes of the defendant, [Avon] ., up to $25,000 and seven and one-half per cent, of the net profits before taxes of [Avon] over and above the sum of $25,-000. The aforesaid percentages shall apply to the net profits before taxes of [Avon] ... for its next five fiscal years and shall be payable to the plaintiffs by payment to their said attorney within ninety days of the close of each fiscal year of the said [Avon] . . ., beginning with and including the fiscal year 1962-1963 which began on October 1, 1962 and ending with the fiscal year 1966-1967.

TENTH: As collateral security for the payment of all moneys and the performance of all the terms and conditions of this agreement, AVON SHOE CO., INC. hereby agrees to assign, and simultaneously herewith has delivered an assignment, of all the right, title and interest which it may have in and to the certain trade-marks . . . together with the goodwill of the business of said AVON SHOE CO., INC. . . . now conducted by . . . [it] ... in connection with which businesses the said trademarks are now used. Said assignment shall be made in favor of MAX BLOCK, ESQ. and EUGENE J. MORAN, ESQ., as ESCROWEES . . . . In the event that . . . AVON SHOE CO., INC. perform[s] all the terms and conditions required . . . said ESCROWEES shall return the aforesaid assignment to AVON SHOE CO., INC. or shall re-assign the aforementioned trade-marks to AVON SHOE CO., INC.

In the event of a default ESCROWEES must assign the aforementioned trade-marks and goodwill to the plaintiffs [Corey, Hart & Stemple] and plaintiffs may thereafter sell, assign or transfer all right, title and interest in and to said trade-marks and goodwill.

The assignment, executed the same date on behalf of Avon, covered—

all and any right, title and interest which it may have in and to the certain trademarks “HAYMAKERS” and “HAYMAK-ERS BY AVON” registered in the United States Patent Office under Nos. 556,671 and 571,010 on March 25,1952 and February 24, 1953, respectively, together with the goodwill of the [business] . of [Avon] . . . now conducted by [it] ... in the City, County and State of New York and at other places throughout the United States in connection with which [business] . . . the said trademarks are now used.

Avon continued using the mark on shoes it manufactured, but its business declined. A default resulted when it was unable to make payment under the terms of the agreement. Pursuant to the agreement, Block and Moran then recorded the assignment to the unpaid attorneys (Corey, Hart & Stemple) in the PTO on March 26, 1964. A week later, the parties entered into a second agreement. Like the first agreement, this stipulated that the mark had been assigned as collateral security for payment, set up a new payment schedule, and included a new provision, which read:

EIGHTEENTH: In the event the corporate defendants shall permanently cease to do business, then and in that event any of the owners of stock of either of said corporations shall have the right to continue the minimum payments provided for in this stipulation and, upon payment by said owners of stock of the total minimum herein provided, the security . . . shall be re-assigned by the ESCROWEES to the individuals making the said minimum payments.

By late 1967, Avon had ceased operations altogether and had defaulted on the second agreement. In July 1968, Turian, as a stockholder of Avon, paid off the outstanding debt to Block and Moran, who then assigned him the registration.⁶ Since then, Turian or corporations owned by Turian have used the mark HAYMAKERS on shoes (either manufactured by his corporations or imported by him).

Board

The board found that the prior litigation between HSI and Avon did not preclude it from considering HSI’s petition to cancel. It said that “the factual situation which the Court concluded existed in 1960 no longer exists and there are now different marketplace and factual elements that must be considered,” one of which involved the question whether Turian or any of his predecessors had abandoned the mark HAYMAKERS. The board found that under the first agreement between Avon and its creditors, the parties clearly did not intend that the assignment have any immediate legal effect and that an agreement for the future assignment of a trademark is not an outright assignment. With respect to Avon’s default and the recording in the PTO of the assignment to Block and Moran, the board found that the second agreement between the parties a week later “resurrected” the assignment as collateral for Avon’s performance and impliedly granted Avon a license to continue to use the mark in its business operations.

As to the assignment from Block and Moran to Turian, the board found no significance in Turian’s acquisition of none of the “salient accouterments” of Avon’s business because he knew the names of Avon’s customers and did not need the shoe lasts or machinery. After noting that Turian, as a stockholder, had paid off the outstanding debt of Avon pursuant to the eighteenth paragraph of the second agreement, the board said:

Under these circumstances, it is our opinion that the assignment in question was not invalid as an assignment in gross and that respondent received a valid and legal title to these trademarks.

OPINION

Turian urges that HSI is estopped from asserting any damage from his use and registration of the mark because of the previous litigation between the parties in Avon Shoe Co. v. David Crystal, Inc., supra. However, the basis of the court’s decision in the prior case to permit concurrent use by the parties rested, at least in part, on the existence of a valid, federally registered mark to Avon and Avon’s position as senior user. HSI had no opportunity to raise the issue of validity of the two subsequent assignments. Additionally, circumstances in the marketplace have changed since 1960. Avon suffered declining business and finally ceased operations, while HSI has continued to expand its business and actively promote its marks. We agree with the board that such changed circumstances preclude application of the doctrine of collateral estoppel. Accord, Old Grantian Co. v. William Grant & Sons, 361 F.2d 1018, 53 CCPA 1257, 150 USPQ 58 (1966); see In re Superior Outdoor Display, Inc., 478 F.2d 1388, 178 USPQ 151 (CCPA 1973).

HSI argues that the assignment from Block and Moran to Turian was invalid as an assignment in gross because, at most, all Block and Moran had to convey was bare legal title. It cites section 10 of the Lanham Act, 15 U.S.C. § 1060, which provides that a registered mark “shall be assignable with the goodwill of the business in which the mark is used.” HSI’s position also finds support in the following statement of the Supreme Court in United Drug Co. v. Rectanus Co., 248 U.S. 90, 97-98, 39 S.Ct. 48, 51, 63 L.Ed. 141 (1918)—

There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed. ... its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another’s product as his; and it is not the subject of property except in connection with an existing business. Hanover Milling Co. v. Metcalf, 240 U.S. 403, 412-414, 36 S.Ct. 357, 60 L.Ed. 713 [1916].

The owner of a trade-mark may not, like the proprietor of a patented invention, make a negative and merely prohibitive use of it as a monopoly.

In determining whether the requisite transfer of goodwill accompanied the transfer of the mark from Avon to Block and Moran, we note that the board gave no reasons to support its conclusion that the assignment recorded in the PTO “was not invalid as an assignment in gross.” However, important events had occurred which changed the relationship of the parties after Avon’s default. No longer was the “assignment” a mere agreement to assign the mark sometime in the future in the event of default, as the board had found. Default had occurred, the “assignment” had been recorded in the PTO, and legal title to the mark had passed to Block and Moran. Contrary to the board’s conclusion, after the recordation in the PTO, it was too late to “resurrect” the agreement to assign the mark sometime in the future. Thus, the facts of this case are unlike those in LiT Red Barn, Inc. v. Red Barn System, Inc., 322 F.Supp. 98, 167 USPQ 741 (N.D.Ind. 1970), aff’d per curiam, 174 USPQ 193 (CA 7 June 2, 1972), where no default occurred and no assignment was ever recorded in the PTO. Notwithstanding that the agreement recited pro forma that goodwill was transferred along with the mark, Block and Moran never played an active role in the business of Avon, never «used the mark themselves, and never acquired any tangible assets or goodwill of Avon. Therefore, we conclude that, as a matter of substance, the assignment was invalid as an assignment in gross, rendering the latter assignment to Turian also invalid.⁷

Even if we were to conclude that the assignment from Avon to Block and Moran was valid, the “inherent” license back to Avon found by the board would have been nothing more than a mere naked license. A licensor may license his mark if the licensing agreement provides for adequate control by the licensor over the quality of goods or services produced under the mark by a licensee. 1 J. McCarthy, Trademarks and Unfair Competition § 18:14 (1973), and authorities cited therein.⁸ The purpose of such a requirement is to protect the public from being misled. Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358, 367,121 USPQ 430, 437 (CA 2 1959). See 15 U.S.C. §§ 1055, 1127. Uncontrolled licensing of a mark results in abandonment of the mark by the licensor. See E. I. duPont de Nemours & Co. v. Celanese Corp. of America, 167 F.2d 484, 35 CCPA 1061, 77. USPQ 364 (1948); see also, Dawn Donut Co. v. Hart’s Food Stores, Inc., supra at 367,121 USPQ at 436 (CA 2 1959). Here, Block and Moran were holders of mere legal title to the mark. They had no interest in the quality of shoes Avon was manufacturing, and there is no evidence that they exercised any quality control. Although quality control has been inferred in a few cases where licensing agreements were silent,⁹ there is nothing in the recorchbefore us on which to base such an inference.

Turian’s argument that the assignment from Avon to Block and Moran was valid because Block and Moran occupied a position analogous to a trustee in bankruptcy must fail. Although it is a general rule that a trustee in bankruptcy, 87 C.J.S. Trade-marks, Trade-names, and Unfair Competition § 174 (1955), or an assignee for benefit of creditors, 6 Am.Jur.2d Assignments for Benefit of Creditors § 25 (1969), may validly assign a trademark, the position of Block and Moran as holders of only bare legal title to the mark is not ' comparable to that of such a trustee or assignee. Block and Moran did not succeed to all of the assets of Avon upon default; rather, the tangible business assets and goodwill remained at all times with Avon. An assignee for benefit of creditors or trustee in bankruptcy succeeds to all assets, both tangible and intangible, and for this reason can validly assign trademark rights with appurtenant goodwill and assets to a subsequent purchaser for value. See 1 J. McCarthy, supra, § 18:9 at 622-23; Annot., 44 A.L.R. 706 (1926), and cases cited therein.

In view of the foregoing, the decision of the board is reversed.

REVERSED.

1 . The board granted HSI’s petition to cancel the registration of the mark HAYMAKERS BY AVON for abandonment through nonuse. That portion of the board’s decision has not been appealed by either party.

2 . Reg. No. 556,671, issued March 25, 1952, renewed, and section 8 affidavit accepted, for men’s, women’s, and children’s shoes of leather, suede, canvas, fabric or composition, and combinations thereof.

3 . Reg. No. 817,822, issued November 1, 1966, for women’s outer shirts, skirts, blouses, outer shorts, jackets, dresses, suits, slacks, T-shirts, sweaters, romper bottom and bubble top combinations, combination skirt and short outfits, jumpers, shifts, playsuits, hats, socks, and culottes; Reg. No. 715,101, issued May 9, 1961, for women’s outer shirts, skirts, blouses, outer shorts, jackets, dresses, suits, and slacks; Reg. No. 715,046, issued May 9, 1961, for women’s jewelry — namely, cuff links, collar pins, tie pins, and studs.

4 . Reg. No. 715,100, issued May 9, 1961, for ladies’ and misses’ dresses, skirts, coats, dress and jacket ensembles, suits, blouses, slacks, coveralls, and jumpers.

5 . Avon also owned a subsidiary corporation, Haymaker Shoe Corp., which was a participant in the suit. For purposes of this appeal we will refer to both corporations as “Avon.”

6 . The assignment was recorded in the PTO on November 22, 1968.

7 . This court’s decisions in Glamorene Products Corp. v. Proctor & Gamble Co., 538 F.2d 894, 190 USPQ 543 (Cust. & Pat.App.1976); Sterling Brewers, Inc. v. Schenley Industries, Inc., 441 F.2d 675, 58 CCPA 1172, 169 USPQ 590 (1971); and Hy-Cross Hatchery, Inc. v. Osborne, 303 F.2d 947, 49 CCPA 1163, 133 USPQ 687 (1962), do not compel a contrary conclusion. In each of those cases the assignees of the respective marks began immediately to use the marks. Block and Moran, as the assignees of the HAY-MAKERS mark, never made use of it.

8 . In § 18:17B at 640, McCarthy states:

Merely because reliance on the licensee’s own self-interest has not resulted in a variation of quality in the past does not necessarily mean that such a situation will continue forever. It is difficult to see how the licensor can fulfill his duty to take reasonable steps to control quality merely by leaving the job up to the licensee.

9 See Land O’Lakes Creameries, Inc. v. Oconomowoc Canning Co., 330 F.2d 667, 670, 141 USPQ 281, 284 (CA 7 1964) (quality control found where agreement had been in effect over forty years, and licensor had received no complaints from customers concerning quality) and Syntex Laboratories, Inc. v. Norwich Pharmacal Co., 315 F.Supp. 45, 166 USPQ 312 (S.D.N. Y.1970), aff’d, 437 F.2d 566, 169 USPQ 1 (CA 2 1971) (product produced pursuant to regulation by United States Food and Drug Administration).