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From Intellectual Property Law Daily, August 25, 2015

Texas dog breeder’s RIN TIN TIN registrations must be cancelled

By Cheryl Beise, J.D.

In a lawsuit over ownership of rights in RIN TIN TIN trademarks, the federal district court in Los Angeles has ordered cancellation of nine federal trademark registrations that were initially issued to Texas dog breeder Daphne Hereford or her company and were currently owned by a Florida company that sold Rin Tin Tin dog treats and related products (Kleven v. Hereford, August 21, 2015, Birotte, A.). The court held that Hereford had abandoned her rights in one registration and had obtained the others through fraud.

Background. The original Rin Tin Tin was a German shepherd dog owned Lee Duncan, an American soldier who found the dog in France during World War I. In the 1920s, Rin Tin Tin appeared in movies produced by Warner Brothers. Rin Tin Tin died in 1932, but the Rin Tin Tin, the fictional dog hero is still alive today. In the 1950s Duncan licensed use of the RIN TIN TIN marks and copyrights in the Rin Tin Tin character and literary works to the Herbert B. Leonard Productions, Inc. (Leonard Productions), a production company owned by television and motion picture producer, writer, and director Herbert B. Leonard. Leonard and Leonard Productions produced the popular 1950s television series, The Adventures of Rin Tin Tin. Other movies and television shows followed. After Duncan died, his widow transferred all remaining Rin Tin Tin rights to Leonard.

Leonard transferred some of his rights in RIN TIN TIN works to his attorney, James Tierney, as settlement for outstanding loans and unpaid legal fees. In January 2004, Tierney assigned the rights he had received from Leonard to Shamrock Entertainment Ltd., Tierney’s wholly-owned corporation. In 2005, Leonard assigned to Max Kleven and TRG Management, LLC (“TRG”), other rights in the RIN TIN TIN name and literary works.

Kleven assigned a 50% interest of his Rin Tin Tin rights to three individuals (Jenson, LaScala, and Miller) in connection with a joint venture formed to exploit Rin Tin Tin rights. Jenson, LaScala, and Miller are the three principals of Rin, Inc., a California corporation and a plaintiff in this action.

RIN TIN TIN registrations. In April 1993, Hereford obtained a federal trademark registration for the mark RIN TIN TIN, in stylized form, in connection with live German shepherd puppies. Between June 2000 and December 2013, Hereford and her company, Rin Tin Tin, Inc. (RTTI”), were issued eight more federal registrations for RIN TIN TIN marks in connection with a variety of goods and services, including television and motion picture services.

Hereford’s rights in RIN TIN TIN purportedly arose from her grandmother’s purchase in the 1940s of a German Shepard dog owned that was a descendant of Rin Tin Tin IV, a dog owned by Duncan that occasionally appeared in The Adventures of Rin Tin Tin Television show.

In 2012, Dwight Erickson, President and founder of Belleair Trading International LLC, approached Hereford for a dog food license after reading Susan Orlean’s 2011 book entitled, Rin Tin Tin: The Life and the Legend. Erickson found Hereford through the website, which was operated by RTTI. Belleair ultimately acquired ownership of all of the RIN TIN TIN registrations at issue in this case.

Prior litigation. In 1994, Leonard files suit against Hereford in the federal district court in Los Angeles after he discovered that Hereford was offering to license rights in the RIN TIN TIN name. Leonard and Hereford settled their dispute (the “1996 Settlement Agreement”). Under the Settlement Agreement, Hereford and RTTI stipulated that Leonard had total and unqualified trademark and merchandising rights in the RIN TIN TIN Mark, subject to Hereford’s narrow right to breed, advertise, and sell German shepherd puppies as linear descendants of “RIN TIN TIN IV.”

In 2006, upon learning of Hereford’s RIN TIN TIN registration for “[e]ntertainment services in the nature of an ongoing television series in the field of variety and motion pictures featuring a German Shepherd dog as a live or animated character,” Kleven and Leonard filed an action against Hereford and RTTI in the federal district court in the Los Angeles, which included a cause of action for cancellation of five of Hereford's trademark registrations.

The parties resolved the 2006 lawsuit pursuant to a written settlement agreement (the “2006 Settlement Agreement”). Under the agreement, Hereford agreed to assign to Kleven, Leonard, and Kleven Productions all rights under her ’852 Registration that related to motion pictures, television programs or series, and associated derived processes and products and services. Tierney was not a party to the 2006 Lawsuit or the 2006 Settlement Agreement, but he was aware of the settlement agreement and its terms.

In 2008, Hereford and RTTI filed an action against the producer and distributor of the Shamrock-authorized motion picture in federal district court in the Southern District of Texas, Rin Tin Tin, Inc. et al. v. First Look Studios, Inc., Case No.08-cv-02853, alleging unfair competition, trademark infringement, and trademark dilution (the “2008 Lawsuit”). The district court dismissed Hereford’s claims on summary judgment. A copy of the complaint associated with the 2008 Lawsuit was sent to the USPTO and electronically appended to all existing RIN TIN TIN trademark files.

Present litigation. In 2013, Kleven and Rin, Inc. filed suit against Hereford, RTTI, and Bellair. Shamrock Entertainment intervened as a plaintiff. Kleven claims that he and his predecessors have used the common law RIN TIN TIN trademark continuously in commerce since 1923 through the production of movies, television shows, and merchandise. He claimed that the defendants' “unlawful claim to intellectual property rights” for RIN TIN TIN interfered with his rights. On July 15, 2014, the court entered defaults against Hereford and RTTI with respect to Kleven and Rin, Inc.’s complaint and Shamrock’s first amended complaint in intervention. Belleair was the only active defendant left.

On December 2, 2014, the court held a hearing on the plaintiffs’ claims seeking cancellation of the nine RIN TIN TIN registrations issued to Hereford and RTTI, and currently owned by Belleair.

Abandonment. The court held that Herford had abandoned the rights she acquired in connection with the RIN TIN TIN registration (the ’135 registration) that the USPTO issued in 1993 for live German shepherd puppies. The evidence showed that Hereford had ceased commercial use of the RIN TIN TIN mark, with no intent to resume, and therefore, she abandoned any right to the registered mark. Hereford had claimed that all evidence of her commercial use of the Rin Tin Tin mark in connection with live German shepherd puppies was "readily accessible on the Internet." however, thorough searches on the Internet resulted in no such evidence. In addition, Hereford offered to sell all of her registrations to Belleair because she claimed she was suffering from a serious lung disease and wanted to leave her business.

The court further held that Hereford’s assignment of the ’135 registration to Belleair was invalid because it was a naked assignment. Hereford’s agreement with Belleair purported to grant an exclusive license the RIN TIN mark, the goodwill associated with the mark was retained by RTTI. Therefore, Belleair acquired no rights in the ’135 registration.

Fraud. The court determined that the other eight RIN TIN TIN trademark registrations the USPTO issued to Hereford and RTTI were invalid because they were obtained by fraud. Herford had filed the applications that matured into the registrations after she signed the 1996 Settlement Agreement, in which she acknowledged that Leonard had total and unqualified trademark and merchandising rights in the RIN TIN TIN mark. Therefore, the representations she made to the USPTO that she was the sole owner of the applied-for marks were false. The USTPO issued the registrations in reliance upon Hereford’s fraudulent claims of ownership.

Belleaire could not have obtain any ownership interest in a fraudulently obtained registrations that was void ab initio. In addition. Bellairehad acquired ownership of the registrations on an “as is” basis. Hereford and RTTI made no warranties.

The court according ordered cancellation of all nine of the RIN TIN TIN registrations obtained by Hereford and RTTI.

The case is No. 2:13-cv-02783-AB-AGR.

Attorneys: David Laurence Gernsbacher (David L. Gernsbacher Law Offices) for Max Kleven and RIN Inc. Deborah F. Sirias (Lewis Brisbois Bisgaard and Smith LLP) and Paul E. Thomas (Fredrikson and Byron PA) for Belleair Trading International LLC. Kirk M. Hallam for Shamrock Entertainment, Ltd.

Companies: RIN Inc.; Belleair Trading International LLC

MainStory: TopStory Trademark CaliforniaNews

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