The 7th U.S. Circuit Court of Appeals has sided with Hall of Famer George Brett and his sporting goods company in a patent dispute over the name of a line of baseball bats.
The panel of judges affirmed a lower court’s ruling that the plaintiff’s claims were frivolous, finding specifically that that the plaintiff was “stockpiling unused marks,” and that Brett was also entitled to attorney’s fees.
Brett got into the sporting goods business when, along with his brothers, he bought Tridiamond Sports, Inc., a manufacturer of baseballs, baseball bats, gloves and other related accessories, in 2001 to form Brett Brothers Sports International, Inc. Tridiamond had been started in 1997. One of the products that Tridiamond had been developing was a more durable wood bat that combined the benefits of wood and the durability of aluminum. The product line was called the Stealth. The first bat was sold in 1999. Since then, Brett Brothers Sports International (acquirer of Tridiamond), has sold 25,000 such bats.
The plaintiffs in this action were Central Manufacturing, Inc. and Stealth Industries, both of which are controlled by Leo Stoller. The plaintiffs (Central) claimed that they had used the Stealth trade name and mark for a wide range of products since 1982.
In 2001, Central filed a mark application with the PTO for using the Stealth word mark on “baseball bats, softball bats and t-ball bats.” Later that year, Central entered into a licensing agreement with Blackwrap, Inc. for the use of the Stealth word mark on its bats. A similar agreement was reached for $800 with Easton Sports, Inc. in 2003.
“In 2004 (five years after the first Brett Brothers sale of Stealth-model bats), the U.S. PTO granted the mark for baseball bats,” wrote the court. “Central soon became aware of Brett Brothers’ use of the stealth word mark and filed suit in the Northern District of Illinois, alleging violations of the Lanham Act, 15 U.S.C. § 1051 et seq., and the Illinois Deceptive Trade Practices Act, 815 ILCS 510/1 et seq. Central believes that because they registered the “Stealth” mark for baseballs and other sporting goods in 1985, they have priority of use of the mark for baseball bats, and Brett Brothers is guilty of infringement and unfair competition. See 15 U.S.C. §§ 1114, 1125(a). (The inquiry under No. 06-2083 Illinois law mirrors the federal. See James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976)).”
The court added that Stoller “is no stranger to trademark litigation. Indeed, one might say it is the essential part of his business strategy. In fact, were there a Hall of Fame for hyperactive trademark litigators, Stoller would be in it.”
The court cited numerous examples of Stoller’s use of the courts. “In fact, Stoller’s cases have generally proven so frivolous and wasteful of court resources that since this appeal was filed the Northern District of Illinois has enjoined him or any of his companies from filing any new civil action in the district’s courts without first obtaining the court’s permission. See Executive Committee Order, In re Leo Stoller, No. 07 C 1435 (N.D. Ill. Mar. 8, 2007).
“A similar sequence of events unfolded here. Upon learning of Brett Brothers’ Stealth bat, Stoller sent the company a cease-and-desist letter claiming ownership of the “Stealth” mark for use on baseball bats, alleging infringement, and demanding a $100,000 licensing fee. Brett Brothers refused, and Stoller (through Central) instituted this litigation.”
In its answer, the Brett Brothers claimed that Central and its predecessors never “used the mark in commerce.” During discovery, they made numerous requests to establish their opinion. However, the plaintiff was non-responsive. The district court determined that Central has “failed completely to support their claim that they actually used the ‘Stealth’ mark in connection with an established, presently existing, and ongoing business prior to Brett Bros. use of the word ‘Stealth’ on baseball bats in 1999.”
The panel amplified the lower court’s opinion, adding that “by exposing Central’s failure to make bona fide use of the ‘Stealth’ mark for baseballs, Brett Brothers met its burden to overcome the presumption afforded by the 1985 registration, and summary judgment in its favor was the appropriate course.” It also affirmed the district court’s other action: “Invoking the authority granted by 15 U.S.C. § 1119, he ordered the cancellation of Central’s 2005 registration of the ‘Stealth’ mark for baseball bats. We find no error in this decision, which we review for abuse of discretion.”
Finally, the court agreed with the lower court that an award of attorney fees was just.
“Central’s actions qualify on all counts! It filed an infringement lawsuit without evidence of any sales of baseballs or baseball bats to support its claim to rights in the ‘Stealth’ mark for such products. It ignored requests to produce documents to support its claim, forcing the defendants’ lawyers to go to court to compel action. Stoller offered confused, misleading deposition testimony with unfulfilled promises of cooperation. And the documents eventually produced effectively made a mockery of the entire proceeding.”
Central Manufacturing, Inc. et al. v. George Brett et al.; 7th Cir.; No. 06-2083; 7/9/07
