THE DILLE FAMILY TRUST v. THE NOWLAN FAMILY TRUST
MEMORANDUM AND/OR OPINION. SIGNED BY HONORABLE WENDY BEETLESTONE ON 8/25/17. 8/25/17 ENTERED AND COPIES EMAILED TO COUNSEL.(jaa, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
THE DILLE FAMILY TRUST,
THE NOWLAN FAMILY TRUST,
Remaining in this chapter of the long-running contest between Plaintiff, the Dille Family
Trust, and Defendant, the Nowlan Family Trust, over the intellectual property rights to Buck
Rogers are Plaintiff’s: 1) challenge to the decision of the U.S. Trademark Trial and Appeal
Board (“TTAB”) rejecting Plaintiff’s opposition pursuant to Section 2(d) of the Lanham Act, 15
U.S.C. § 1052(d), and Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), to the Defendant’s
intent-to-use application to register the BUCK ROGERS mark; 2) contract claim arising out of a
purported Release and Assignment dating to 1942; and, 3) trademark dilution claim under
Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). Before the Court are Defendant’s four
motions to exclude the testimony of Plaintiff’s proposed expert witnesses, Defendant’s motion
for summary judgment, and Plaintiff’s partial motion for summary judgment.1
Although this dispute dates back more than three quarters of a century, the present case is
quite narrow in scope. Plaintiff opposes Defendant’s application to register the BUCK ROGERS
mark, asserting that it has senior rights. Plaintiff also alleges that in 2015, Defendant engaged in
negotiations with NBC Universal and attempted to sell a BUCK ROGERS script. Defendant
A general overview of the factual and procedural history of the parties’ underlying dispute may be found in the
Court’s opinion accompanying the order granting in part and denying in part Defendant’s motion to dismiss the
Second Amended Complaint. Dille Family Tr. v. Nowlan Family Tr., 207 F. Supp. 3d 535, 538-40 (E.D. Pa. 2016).
asserts that these actions created a likelihood of dilution of its mark, and also breached a 1942
agreement between John F. Dille, whose newspaper syndicated the original comic strip, and the
estate of Philip F. Nowlan, the author of the novelettes that inspired the comic strip, and who for
some time provided narrative content for the comic strip.
A. The Parties
John F. Dille and Philip F. Nowlan – both long deceased – are not parties to this case, and
neither are their estates. Instead, this case involves a dispute by family trusts established by their
The Dille Family Trust was created on August 16, 1979 by Robert C. Dille – the son of
John F. Dille – and his wife, Virginia N. Dille, who were its first trustees. JA 1034. Before
1979, the record contains what appear to be a series of federal trademark registrations, renewals,
assignments and licenses between John F. Dille, Robert C. Dille, and various corporations that
they controlled, as well as licensing agreements with entities that produced Buck Rogers
merchandise and creative works. It is undisputed that from the late 1920’s to the early 1980’s,
Buck Rogers appeared in comic strips, radio, film, and television – including the 1979-1981 film
and television series by Universal Pictures. Plaintiff contends that by virtue of these
assignments, it succeeds to the rights of John F. Dille in the BUCK ROGERS mark.
Virginia N. Dille continued to serve as Plaintiff’s trustee until her passing in 2009. After
a series of interim trustees, Louise M. Geer was made successor trustee in 2011 by Nicholas Flint
Dille and Lorraine Virginia Dille Williams, who are the children of Robert C. and Virginia N.
Dille, and who are beneficiaries of the Dille Family Trust. For completeness’s sake, it should be
noted that Geer is the wife of Plaintiff’s trial counsel, Daniel Herman. Geer, who is an attorney,
and Herman are partners in the law firm of Geer and Herman, P.C. Geer and Herman also own
and control Herman & Geer Communications, which does business as “Hermes Press.” Plaintiff
contends that Hermes Press was, for a period of time, licensed to use the BUCK ROGERS mark
on books of reprints of the original Buck Rogers comic strips.
For its part, the Nowlan Family Trust dates to August 1, 2004, when it was created by its
trustee Brian McDevitt, a grandchild of Philip F. Nowlan and Theresa M. Nowlan. JA 3075-95.
The Nowlan Family Trust is a business trust organized under Pennsylvania law and registered
with the Commonwealth. JA 3075-96. Brian McDevitt’s sister, Diane H. McDevitt is an agent
for the Nowlan Family Trust. JA 2977. The Nowlan Family Trust Agreement identifies as
permissible beneficiaries the descendants of Philip Francis Nowlan, as determined when the net
assets of the trust exceed $1 million. JA 3075.
B. TTAB Proceedings
Plaintiff proceeds in Count One of the Second Amended Complaint pursuant to 15 U.S.C.
§ 1071(b), challenging the TTAB’s rejection of its opposition to the Defendant’s intent-to-use
application to register the BUCK ROGERS mark for use on a wide range of goods and services,
including films, television shows, and related merchandise. The central issue is whether Plaintiff
can establish prior trademark rights in BUCK ROGERS – the TTAB concluded on the record
before it that Plaintiff could not, but Plaintiff is entitled to a de novo review of that conclusion
before this Court under 15 U.S.C. § 1071(b). If Plaintiff can establish such rights, and provided
that Defendant cannot establish that Plaintiff abandoned the mark, 15 U.S.C. § 1127
(“Abandonment (1)”), the question would then arise as to whether Defendant’s intended use of
the mark would be likely to cause confusion with, or dilution of, Plaintiff’s mark, either of which
would be grounds to reject Defendant’s trademark application. 15 U.S.C. § 1052(d) (asserting
seniority is permissible basis on which to oppose a registration); 15 U.S.C. § 1063(a) (identifying
“dilution by blurring . . . under section 1125(c) as a permissible grounds for opposition to a
registration); 15 U.S.C. § 1125(c)(2)(B) (defining dilution by blurring).
These questions arise out of a knotty procedural history that dates to the beginning of
2009. At that time, Plaintiff, held two federal registrations for the BUCK ROGERS mark:
Registration Number 714,184 for newspaper comic strips, and Registration Number 1,555,871
for board games. JA 4-7. On January 15, 2009, Defendant filed its intent-to-use trademark
application. JA 5061-65. Following an examination of Defendant’s trademark application, the
U.S. Patent and Trademark Office (“USPTO”) refused publication pursuant to 15 U.S.C. §
1062(b), concluding that Defendant was not entitled to registration due to a likelihood of
confusion with Plaintiff’s mark. AJA 11434 (citing Registration Number 714,184 and
Registration Number 1,555,871). On October 2, 2009, Defendant filed a petition to cancel
Defendant’s registrations (Numbers 714,184 and 1,555,871), asserting fraud in their maintenance
and abandonment. JA 462-69. In January of 2011, Plaintiff filed a “notice of voluntary
surrender” in the proceedings to cancel Registration Numbers 714,184 and 1,555,871. JA 2-3.
In light of that filing, on February 1, 2011, the TTAB granted Defendant’s cancellation petition,
and on April 5, 2011, the USPTO cancelled Registration Numbers 714,184 and 1,555,871. JA 910.
Once the cancellation proceedings were resolved, Defendant’s trademark application was
published in the Official Gazette on June 14, 2011. JA 12. On July 12, 2011, Plaintiff filed its
opposition to Defendant’s trademark application. JA 12-22. Plaintiff’s asserted basis was that it
had used and / or licensed the BUCK ROGERS mark for use on various products and services on
an ongoing basis since 1928, including “comic books, action figures, feature films, picture
frames, belt buckles, key chains, resin statues, artwork, t-shirts, board games, computer software,
internet television show license, DVDs, Blu-Ray video discs, and radio programs,” thereby
rendering Defendant’s registration of BUCK ROGERS likely to cause confusion with, or
dilution of, the Plaintiff’s mark. JA 20-21.
Following several years of litigation, on September 25, 2015, the TTAB dismissed
Plaintiff’s opposition to Defendant’s trademark application. JA 1251-65. Noting that at the time
Plaintiff filed its opposition, it did not hold any valid federal registrations, the question was
whether Plaintiff could show that it had established trademark rights before January 15, 2009 –
the date from which Defendant may be able to claim constructive use of the mark, for the
purpose of establishing priority, by virtue of its intent-to-use trademark application. JA 1255.
The TTAB dismissed the Plaintiff’s opposition primarily due to a lack of evidence connecting
the trademark’s pre-1942 chain of title to the Dille Family Trust, and a lack of evidence of prior
use sufficient to establish trademark rights in the Dille Family Trust. JA 1255-65. Although the
TTAB considered Plaintiff’s contention that Hermes Press, as a licensee, had sold books of
reprinted comic strips from approximately 2008 through 2014, the TTAB did not find sufficient
evidence to credit Plaintiff’s contention that the books were sold before January 15, 2009, and
thus concluded that the use of the mark by Hermes Press was insufficient to establish trademark
rights in Plaintiff.
C. 2010 Negotiations with Cartoon Network
Meanwhile, in early 2010 the Nowlan Family Trust, Flame Ventures, LLC, (whose
principal is Tony Krantz), the Cartoon Network, and later, the Dille Family Trust, engaged in
negotiations regarding the licensing of the rights for a Buck Rogers film and television series.
JA 5066. Ultimately, these discussions yielded a draft letter agreement dated March 7, 2010,
which contemplated the Dille Family Trust and the Nowlan Family Trust granting a license in
whatever rights to Buck Rogers they held to Cartoon Network for a Buck Rogers film and / or
television series to be produced in conjunction with Flame Ventures. JA 1316-19. The
agreement was executed in part by the Nowlan Family Trust, but Brian McDevitt suggested in
his affidavit that the Nowlan Family Trust rescinded its acceptance before any other parties
executed the agreement. JA 1316; 5066-67. It is, however, undisputed that the Dille Family
Trust was aware of the draft agreement, and as relevant here, learned during negotiations that the
Nowlan Family Trust had represented to Cartoon Network that it held rights in the Buck Rogers
character. See Def.’s Stmt. Undisputed Facts, ¶ 64; Pl.’s Resp. to Def.’s Stmt. Undisputed Facts,
D. 2015 Negotiations with NBC Universal / Syfy
Despite the collapse of negotiations with Cartoon Network, the parties continued to seek
various licensing deals to bring Buck Rogers back to the screen, which brings us to the events of
2015 that are the basis for the contract and dilution claims.
In November of 2013, the Dille Family Trust’s licensing agent, Licensing Works,
approached Rafael Gomez-Cabrera, a business affairs executive at NBC Universal (which owned
the Syfy channel during the time period at issue) with a proposal to license Plaintiff’s rights in
Buck Rogers for use in a film and / or television series. JA 1963-69. Negotiations lasted for
more than a year. Although NBC Universal and the Dille Family Trust exchanged several
rounds of offers and counter-offers, they were not able to reach an agreement and negotiations
fell through by April of 2015. JA 1970-2031.
While Gomez-Cabrera was negotiating with the Dille Family Trust, he learned of its
ongoing dispute with the Nowlan Family Trust regarding Buck Rogers. JA 1997, 2649-50
(indicating Gomez-Cabrera was aware of the ongoing trademark litigation as early as May of
2014). In the hopes of securing an agreement with all parties who claimed rights in Buck
Rogers, in February of 2015, without informing the Dille Family Trust, Gomez-Cabrera
contacted counsel for the Nowlan Family Trust. JA 2649-50, 3746. Following initial
discussions, in March of 2015, NBC Universal made an offer to the Nowlan Family Trust for a
license to use Buck Rogers in a television series. JA 2651, 3757. In April, Diane McDevitt, in
her capacity as an agent of the Nowlan Family Trust, met with Rafael Gomez-Cabrera, as well as
Paul Shapiro and Eli Kirschner (creative executives with the Syfy channel) in Los Angeles. JA
2652, 3792. On June 29, 2015, Gomez-Cabrera emailed Defendant a revised offer. JA 3813.
Discussions between NBC Universal and the Nowlan Family Trust continued into the fall
of 2015. JA 3821-22. On September 21, 2015, the Nowlan Family Trust’s representative, Joel
Gotler, emailed Gomez-Cabrera a list of terms that the Nowlan Family Trust wished to
incorporate. On October 20, 2015, NBC Universal sent the Nowlan Family Trust a third offer.
JA 3826. On October 27, 2015, Tony Krantz emailed Gomez-Cabrera the TTAB decision
rejecting Plaintiff’s opposition to Defendant’s trademark application. JA 3839. Soon after,
Gomez-Cabrera and others on NBC Universal’s Syfy team scheduled a meeting with the Nowlan
Family Trust for November 3, 2015. Before the meeting, Flame Ventures sent NBC Universal
Krantz’s script for BUCK ROGERS. JA 3855. The cover page for the script reads “BUCK
ROGERS,TM Written by Tony Krantz, Adapted from ARMAGEDDON 2419 A.D. by Philip
Francis Nowlan; Flame Ventures in association with Diane McDevitt and Brian McDevitt.
BUCK ROGERS is a trademark of the Nowlan Family Trust.” JA 3856. Gomez-Cabrera
testified that Tony Krantz pitched the Buck Rogers script at the meeting. When Gomez-Cabrera
asked whether Defendant “had the rights,” he was told by Defendant’s attorney that it did, but
that Defendant was not prepared to indemnify NBC Universal. JA 2654.
No deal came to pass, and on November 19, 2015, Plaintiff filed the instant lawsuit.
E. Origin and 1942 Release and Assignment
As for the contract claim, it is necessary to briefly touch on the origins of Buck Rogers –
a 25th century character – in the first half of the 20th century. In August of 1928, Philip Francis
Nowlan’s story Armageddon 2419 A.D. appeared in the magazine Amazing Stories and featured
the character “Anthony Rogers” as its protagonist. In 1929, the sequel – The Airlords of Han,
also featuring Anthony Rogers – appeared in the same magazine. Around the same time, there is
evidence to suggest that Philip F. Nowlan and John F. Dille’s National Newspaper Service
entered a contract for the syndication of a comic strip titled “Buck Rogers” (the “Syndication
Agreement”). JA 3250-52. The contract identified Philip F. Nowlan as the “creator of certain
material suitable for newspaper publication . . . entitled ‘Buck’ Rogers.” JA 3250. Nowlan was
to provide the National Newspaper Service with material for syndication of “[a] story in strip
form of conditions in America [s]ome five hundred years hence,” to run daily for six weeks. Id.
Although incomplete, and at times somewhat impenetrable, the record suggests that the
business relationship between John F. Dille and Philip F. Nowlan continued throughout the
1930’s, with ongoing syndication of the Buck Rogers comic strip illustrated by Richard Calkins.
After Philip F. Nowlan died in 1940, his widow, Theresa M. Nowlan, as executrix of his estate,
brought a case in the United States District Court for the Northern District of Illinois against
John. F. Dille, National Newspaper Service, John F. Dille Co., Calkins, and Buck Rogers
Company. JA 3253-82. The complaint alleged that the defendants had underpaid Philip F.
Nowlan under the Syndication Agreement and other contracts. As a remedy, the estate sought an
accounting or specific performance. Id.
The present breach of contract claim is based on a document dated May 14, 1942, titled
“Full and Complete Release and Assignment” (the “1942 Release and Assignment”). JA 49-56.
That document is signed “Theresa Marie Nowlan,” and is accompanied by a notary’s affidavit –
which attests to the signature of “Theresa Maria [sic] Nowlan” in Philadelphia – as well as a
stipulation of dismissal of the Illinois lawsuit. JA 51-54. Following three paragraphs of recitals,
in which the parties indicate their intention to settle the Illinois suit, the document provided that
in exchange for $1,750, Theresa Marie Nowlan released all claims that “Philip Francis Nowlan
or I have had, now have, or may have in the future, or which my heirs, executors, or
administrators hereafter can, shall or may have,” against any of the parties to the suit, including
the rights to receipts from “newspaper strips, merchandise, radio, movies, and all other subject
matter. All contracts of every kind or nature which exist or may exist and all right thereunder are
hereby terminated and forever released.” JA 50-51. In a separate paragraph, the document also
The party of the first part [Theresa Marie Nowlan] hereby assigns, releases,
waives and conveys all claims, rights and interests of any kind whatsoever in and
to all copyrights to John F. Dille Co., and in and to all trade-marks, good will,
titles including specifically “Buck Rogers” and “Buck Rogers In The 25th
Century” and all characters, patents and inventions and all other subject matter
relating in any way to the Buck Rogers features to John F. Dille.
Although neither party in this matter is a named party to the 1942 Release and Agreement
– and indeed, could not have been because the document predates both by decades – Plaintiff
The record includes copies of two checks dated May 22, 1942, consecutively numbered (5802 and 5803), made out
by the National Newspaper Service and signed by John F. Dille. JA 55-56. The first is in the amount of $1,750, and
is made out to and endorsed by “Theresa Marie Nowlan, widow of Philip Francis Nowlan.” JA 55. The second is in
the amount of $7,000, and is made out to and endorsed by “Theresa Marie Nowlan, as executrix of the estate of
Philip Francis Nowlan.” JA 56. Although the $7,000 is not reflected in the 1942 Release and Assignment, it is
referenced in the May 8, 1942 Order of the Orphans’ Court of Montgomery County, Pennsylvania, authorizing
Theresa M. Nowlan, as executrix of the estate of Philip F. Nowlan, to settle the Illinois lawsuit for that amount. JA
asserts that it is the successor in interest to the John F. Dille Co., and that Defendant is the
successor in interest to Theresa Marie Nowlan. From that premise, Plaintiff contends that the
representations Defendant made during the 2015 negotiations with NBC Universal breached the
1942 Release and Agreement.
RULE 702 MOTIONS
Turning first to Defendant’s motions to exclude Plaintiff’s proposed expert opinion
testimony. Rule 702 of the Federal Rules of Evidence “embodies a trilogy of restrictions on
expert testimony: qualification, reliability and fit.” Schneider ex rel. Estate of Schneider v.
Fried, 320 F.3d 396, 404 (3d Cir. 2003) (discussing standard for expert opinion testimony
deriving from Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). Although originally
propounded in the context of scientific experts, Daubert’s “general principles” also extend to
non-scientific expert opinion testimony covered by Rule 702. United States v. Mitchell, 365 F.3d
215, 234 (3d Cir. 2004) (citing Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999)).
The development of these restrictions has led to a flexible and practical approach to
expert testimony. First as to an expert’s qualification, “Rule 702 requires the witness to have
‘specialized knowledge’ regarding the area of testimony.” Waldorf v. Shuta, 142 F.3d 601, 625
(3d Cir. 1998). This requirement has been subject to a “liberal” interpretation by the Third
Circuit, which has “held that a broad range of knowledge, skills, and training qualify an expert as
such.” In re Paoli R.R. Yard PCB Litig. (“Paoli II”), 35 F.3d 717, 741 (3d Cir. 1994) (citation
omitted). Nevertheless, “at a minimum, a proferred expert witness . . . must possess skill or
knowledge greater than the average layman.” Aloe Coal Co. v. Clark Equip. Co., 816 F.2d 110,
114 (3d Cir. 1987). Second, reliability turns on whether “the particular opinion is based on valid
reasoning and reliable methodology.” In re TMI Litig., 193 F.3d 613, 665 (3d Cir. 1999)
(internal quotation marks and citation omitted). Accordingly, expert testimony must be based on
rigorous “‘methods and procedures’” rather than “‘subjective belief or unsupported
speculation.’” Paoli II, 35 F.3d at 742 (quoting Daubert, 509 U.S. at 590). More succinctly, it
must be “supported by good grounds.” Karlo v. Pittsburgh Glass Works, LLC, 849 F.3d 61, 81
(3d Cir. 2017) (internal quotation marks and citation omitted). The Third Circuit has
consistently cautioned that the reliability standard is “‘not that high’” and is “‘lower than the
merits standard of correctness.’” Id. at 81 (internal quotation marks and citation omitted). Third,
fit refers to the requirement that “the expert’s testimony must be relevant for the purposes of the
case and must assist the trier of fact.” Schneider, 320 F.3d at 404.
As will be seen, the Court will deny Defendant’s motion for summary judgment on the
registration claim (Count One), infra Part III.A, but will grant Defendant’s motion for summary
judgment on the trademark dilution (Count Three) and contract (Count Two) claims, infra Parts
III.B and III.C. Because the same disposition of the summary judgment motions would obtain
even if the Court were to consider the opinions of Richard A. Spreng, Ph.D, and Michael S.
Ramage, and because their opinions are not relevant to the registration claim that will proceed to
trial, Defendant’s motions to exclude their testimony shall be dismissed as moot. Accordingly,
the Court limits its discussion here to the Defendant’s motions to exclude the testimony of Jeff
Rovin and Michael Lazzara.
A. Jeff Rovin
Plaintiff offers Jeff Rovin as an expert in “the history of ‘BUCK ROGERS’ and the
continuous use of ‘BUCK ROGERS’ in comic strips, books, products and memorabilia.” More
specifically, he would opine that: (1) the success of Buck Rogers as a cultural phenomenon owes
more to John F. Dille’s syndication than Philip F. Nowlan’s “original inventiveness,” ECF 91 at
4-10, 17; (2) that “the Dille Family Trust trademarks of Buck Rogers, Buck Rogers in the 25th
Century, and many of the characters and props that are part of his fictional universe, have been in
continuous use since 1928,” id. at 4; and, (3) that “Buck Rogers has been licensed as such – that
is, as ‘Buck Rogers’ not as ‘Anthony Rogers’ – in a continuous run since 1928 and with an
unbroken chain of ownership currently vested in the Dille Family Trust.” Id. at 10. Although
Plaintiff does not indicate which claims Rovin’s testimony would support, it appears from this
summary that they may bear on Plaintiff’s challenge to the TTAB decision rejecting its
opposition pursuant to 15 U.S.C. § 1052(d) to Defendant’s trademark application, and Plaintiff’s
dilution claims pursuant to 15 U.S.C. § 1125(c), but not Plaintiff’s contract claim.
Rovin’s first opinion may be characterized as historical – that John F. Dille, the
newspaper man, contributed more than Philip F. Nowlan, the content generator, to the success of
Buck Rogers. There is little question that Rovin is qualified to testify as an expert in the history
of Buck Rogers. Although he has no formal academic training, his professional experiences
suffice to provide the requisite specialized knowledge in the field of science fiction history.3 It
also appears that his methods are sufficiently reliable, as he consulted books, comic strips, and
vintage memorabilia, JA 817, which are precisely the methods a historian might be expected to
employ to arrive at such an opinion.
Nevertheless, Rovin’s first opinion is inadmissible under Rule 702 because the issue of
John F. Dille’s and Philip F. Nowlan’s relative contribution to the success of Buck Rogers does
Rovin currently works as a “novelist and genre historian . . . [of] science fiction, fantasy, [and] horror.” JA 813.
He began his career “as a staff proofreader, assistant editor, editor, marketing director, and writer for several New
York-based publishing companies, all of them heavily invested in science fiction and fantasy publications and
licensing.” JA 1895. Rovin has written “many . . . nonfiction books . . . about science fiction and science fiction based toys and games,” and has published “numerous articles about Buck Rogers and his world.” Id. He also
worked as a consultant for a science fiction mail order firm from 1976 to 1983, in which capacity he wrote
advertisements for and “purchased many Buck Rogers products.” Id. Around this time, Rovin wrote a book called
the Science Fiction Collector’s Catalog, which included descriptions of Buck Rogers merchandise. JA 814-15. He
has also “attended countless Comic Cons, toy fairs, comic book stores . . . [and] vintage toy [shops].” Id.
not fit with the narrow factual disputes in this case. Indeed, Plaintiff advances no argument as to
how this aspect of Rovin’s testimony is relevant to any legal issue in this case, ECF 114 at 3-4,
and none is apparent from the record. The trademark claims that remain are about whether the
Dille Family Trust can demonstrate that it established trademark rights in BUCK ROGERS that
predate January 15, 2009. Although the question of whether the commercial success of Buck
Rogers owes more to John F. Dille or Philip F. Nowlan is surely of great interest to the parties,
and to Buck Rogers fans, it is simply irrelevant to the trademark questions that the trier of fact
must answer here.
Rovin’s second and third opinions are directed at the trademark claims in this case. By
virtue of Rovin’s opinion that Plaintiff and its predecessors in interest have continuously used
and licensed Buck Rogers (and not “Anthony Rogers”) since 1928, Plaintiff seeks to prove that it
has established trademark rights in BUCK ROGERS that have not been abandoned. As such,
unlike Rovin’s first opinion, these opinions are relevant to disputed issues. However, they would
not be helpful to the trier of fact because Rovin has no specialized knowledge in trademarks or
licensing, and so is unqualified to offer them.
As previously noted, Rovin lacks any formal education after high school, and so he has
had no formal legal training in trademarks or licensing. JA 816. His practical experience with
trademarks or licensing is equally limited. When asked, “[w]hat is your experience with
trademarks?”, he answered, “[a]s a publisher, I have a partner who handles all of that, so it’s kind
of a carom shot with me. I don’t get involved with that.” Id. Rovin further admitted that he
does not know the legal definition of “use in commerce,” id., and was unable to explain “the
difference between use of the character named Buck Rogers and the use of the trademark Buck
Rogers,” id. (A: “I couldn’t tell you.”). Nor does he know “what the . . . legal requirements for a
valid trademark license are.” JA 819. Moreover, none of his published books or articles have
anything to do with trademarks or licensing. JA 816. Accordingly, Rovin is unqualified to offer
his second and third opinions, and Defendant’s motion to exclude his opinion testimony will be
granted in its entirety.4
B. Michael D. Lazzara, Esq.
Plaintiff also offers the testimony of Michael D. Lazzara, a partner in the Pietragallo Law
Firm in Pittsburgh, with extensive experience in intellectual property law. Lazzara conducted
what he characterized as a “chain of title for ownership of rights in the ‘Buck Rogers’ trademark
in the United States.” ECF 93 at 4-5. To perform this assessment, Lazzara reviewed the record
in the present matter, conducted a search of trademark filings and documents at the U.S. Patent
and Trademark Office, consulted state of Illinois corporate documents and records, reviewed a
“character report” for the Buck Rogers character, personally interviewed Louise Geer, the trustee
of the Dille Family Trust, and conducted internet searches. Id. at 5. He compiled this
information into a list that he “viewed as important events involving and surrounding the ‘Buck
Rogers’ mark.” Id. at 6. The list includes 53 events, stretching from August 27, 1926 to
February 8, 2013, and consists of numbered entries that summarily identify purported contracts,
assignments, licenses, trademark registrations and renewals. Id. at 7-16. On the basis of this list,
he would offer two opinions: (1) “[t]he Dille Family Trust currently owns rights in the ‘Buck
Rogers trademark, with particular regard to comic strips, books, games, toys, television shows,
and motion pictures in view of various ownership change and licensing activities which have
occurred involving the ‘Buck Rogers’ trademark”; and, (2) “no significant period of non-use of
Defendant does not challenge, nor does the Court address here, whether Rovin may testify as a percipient fact
witness with personal knowledge of the Plaintiff’s use of the BUCK ROGERS mark in commerce, or that of
Plaintiff’s licensees, or others whose use might be shown by other competent evidence to inure to Plaintiff’s benefit
for trademark purposes.
the ‘Buck Rogers’ [sic] occurred during the history of its usage that would reasonably lead to a
conclusion that the mark had been abandoned in view of such non-use.” Id. at 6.
Defendant’s principal objections to these opinions are that they are not reliable and do not
fit with the case. Both objections have merit. First, with respect to reliability, the Lazzara report
contains little more than the list of events and a conclusory assertion as to the existence of
Plaintiff’s trademark rights. As Defendant points out, the report does not include any
explanation as to Lazzara’s criteria for including or excluding an event from his list. The failure
to offer such explanation is striking in light of Lazzara’s puzzling decision to omit any mention
of the April 5, 2011 cancellation by the U.S. Patent and Trademark Office of Plaintiff’s
registrations of BUCK ROGERS for use on newspaper comic strips (Registration No. 714,184)
and board games (Registration No. 1,555,871).5 JA 9-10. Nor does the Lazzara report provide
any explanation as to the significance of the events its author did see fit to include. Without such
explanation it is impossible to determine whether Lazzara’s conclusions logically flow from the
evidence that he reviewed.
Second, even if Lazzara had explained his selection criteria and the significance of the
events he identified as important, his opinions do not meet the fit requirement for expert opinions
because they would not be helpful to the trier of fact. In essence, Plaintiff seeks to have Lazzara
opine as to the legal consequences of the evidence he has reviewed, which consists primarily of
legal documents. The problem is that “opinion testimony that states a legal standard or draws a
legal conclusion by applying law to the facts is generally inadmissible.” United States v. McIver,
470 F.3d 550, 562 (4th Cir. 2006) (footnote and citations omitted). Such testimony is
unnecessary for the Court to determine the applicable law. And “[e]ven during a bench trial
Although these registrations were cancelled after January 15, 2009, they appear on the record before the Court to
have been Plaintiff’s only federal registrations in effect during a critical time period in question, and so their
cancellation would seem to be relevant to the trademark issues in this case.
there seems no compelling reason to allow live testimony by conflicting experts on the law, as
written briefs, supplemented by oral argument by counsel if appropriate, will serve the same
function.” David H. Kaye, The New Wigmore: A Treatise on Evidence, Expert Evidence, at §
2.3 (2d ed. 2011). Lazzara’s testimony risks wasting a substantial amount of time, as his opinion
would presumably duplicate whatever arguments Plaintiff’s counsel would make as to the legal
implications of the facts in evidence vis-à-vis Plaintiff’s trademark rights in BUCK ROGERS.
Such redundancy is both unnecessary and unhelpful to the trier of fact, and so Defendant’s
motion to exclude Lazzara’s opinion testimony will be granted.
SUMMARY JUDGMENT MOTIONS
The Court turns next to the motions for summary judgment. “[S]ummary judgment is
appropriate where there ‘is no genuine issue as to any material fact’ and the moving party is
‘entitled to a judgment as a matter of law.’” Alabama v. North Carolina, 560 U.S. 330, 344
(2010) (quoting Fed. R. Civ. P. 56(c)). “By its very terms, this standard provides that the mere
existence of some alleged factual dispute between the parties will not defeat an otherwise
properly supported motion for summary judgment; the requirement is that there be no genuine
issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).
“A genuine issue is present when a reasonable trier of fact, viewing all of the record
evidence, could rationally find in favor of the non-moving party in light of his burden of proof.”
Doe v. Abington Friends Sch., 480 F.3d 252, 256 (3d Cir. 2007) (first citing Celotex Corp. v.
Catrett, 477 U.S. 317, 322-26 (1986); then citing Anderson, 477 U.S. at 248-52). Material facts
are those which “might affect the outcome of the suit under the governing substantive law.”
Scheidemantle v. Slippery Rock Univ. State Sys. of Higher Educ., 470 F.3d 535, 538 (3d Cir.
2006). On a motion for summary judgment, “[t]he reviewing court should view the facts in the
light most favorable to the non-moving party and draw all reasonable inferences in that party’s
favor.” Burton v. Teleflex Inc., 707 F.3d 417, 425 (3d Cir. 2013). The procedure “is no different
where there are cross-motions for summary judgment.” Lawrence v. City of Philadelphia, 527
F.3d 299, 310 (3d Cir. 2008) (citing Rains v. Cascade Indus., Inc., 402 F.2d 241, 245 (3d Cir.
To prevail on a motion for summary judgment, “the non-moving party must present more
than a mere scintilla of evidence; ‘there must be evidence on which the jury could reasonably
find for the [non-movant].’” Jakimas v. Hoffmann-La Roche, Inc., 485 F.3d 770, 777 (3d Cir.
2007) (quoting Anderson, 477 U.S. at 252) (alteration in Jakimas). As the Third Circuit has
observed, “[t]he non-moving party may not merely deny the allegations in the moving party’s
pleadings; instead he must show where in the record there exists a genuine dispute over a
material fact.” Abington Friends Sch., 480 F.3d at 256 (citing Celotex, 477 U.S. at 322-26). To
make a showing of a genuine dispute, “the non-movant may not rest on speculation and
conjecture in opposing a motion for summary judgment.” Ramara, Inc. v. Westfield Ins. Co.,
814 F. 3d 660, 666 (3d Cir. 2016).
A. Plaintiff’s Opposition to Defendant’s Trademark Application – Count One
The parties have filed cross motions for summary judgment on Count One of the Second
Amended Complaint, in which Plaintiff challenges the TTAB’s rejection of its opposition to the
Defendant’s intent-to-use application for the BUCK ROGERS mark.6 Each is addressed in turn.
1. Defendant’s Motion – Priority and Abandonment
In its motion for summary judgment, Defendant contends that Plaintiff’s opposition to
Defendant’s intent-to-use application to register the BUCK ROGERS mark must fail because
To the extent Plaintiff’s opposition to Defendant’s application to register the mark is premised on trademark
dilution under Section 43(c) of the Lanham Act, that issue is addressed infra, Part III.B.
Plaintiff cannot establish prior use of the mark, and that even if it could, Plaintiff abandoned the
mark. However, a review of the record indicates there are genuine factual disputes as to both of
these issues that preclude summary judgment on Count One.
Section 2(d) of the Lanham Act provides a basis for rejecting an application to register a
mark where the application “[c]onsists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office, or a mark or trade name previously used in the
United States by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. §
1052(d). Here, the key date is January 15, 2009 – the date on which Defendant filed its intent-touse application, and from which Defendant, contingent on perfection of its intent-to-use
application, may claim constructive use of the BUCK ROGERS as its first use, thereby
conferring “priority over anyone using the mark after that date unless the person earlier used the
mark.” Lucent Info. Mgmt., Inc. v. Lucent Techs., Inc., 186 F.3d 311, 315 (3d Cir. 1999) (first
citing 15 U.S.C. §§ 1051(b); then citing 15 U.S.C. § 1057(c)).
Because Plaintiff has no valid federal registration for BUCK ROGERS, it must establish7
“prior use of the mark ‘in a way sufficiently public to identify or distinguish the marked goods in
an appropriate segment of the public mind as those of the adopter of the mark.’” Lucent Info.
Mgmt., 186 F.3d at 315 (quoting Blue Bell, Inc. v. Farah Mfg. Co., Inc., 508 F.2d 1260, 1266
(5th Cir.1975)); see also Covertech Fabricating, Inc. v. TVM Bldg. Prod., Inc., 855 F.3d 163,
170 (3d Cir. 2017) (“The first use test is generally proper for unregistered trademarks, taking
account of the well-established common law principle of ‘first-in-time, first-in-right’ that
rewards actual and continuous use in commerce as between market competitors.” (citing Ford
As the party opposing registration of the mark, it is Plaintiff’s burden to establish that the applicant – here,
Defendant – does not have the right to register its mark. Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357,
1360 (Fed. Cir. 2001) (citations omitted).
Motor Co. v. Summit Motor Prod., Inc., 930 F.2d 277, 292 (3d Cir. 1991))). Only if Plaintiff can
establish its seniority through prior use of the mark does the issue of abandonment arise. 15
U.S.C. § 1127 (“Abandonment (1)”).
Applying the first use test to the record while drawing all inferences in Plaintiff’s favor,
there is a genuine issue as to whether Plaintiff can establish priority of use in the BUCK
ROGERS mark. It must be noted that it is not necessary for Plaintiff to trace its claim to the
BUCK ROGERS mark back to John F. Dille or Philip F. Nowlan. Instead, Plaintiff need only
point to evidence from which a trier of fact could conclude that it developed trademark rights in
the mark prior to January 15, 2009.
The earliest mention in the record of the Dille Family Trust is on August 16, 1979 when
it was created by Robert C. Dille and Virginia N. Dille. JA 1034. To the extent Plaintiff traces
its trademark rights in BUCK ROGERS to goods and services that predate the Dille Family
Trust’s existence, Plaintiff points to documents that purport to show an assignment to Plaintiff of
16 trademarks (identified solely by federal registration number), and the goodwill associated
with them from Robert C. Dille dated September 24, 1982, and an assignment to Plaintiff of two
then-pending federal trademark applications, including one for BUCK ROGERS dated the same
day. JA 1758-61. Determining whether Plaintiff succeeds to the priority of Robert C. Dille by
virtue of these documents would require ascertaining what trademark rights the assignor, Robert
C. Dille, had at the time of each assignment. That, in turn, would require addressing the validity
and legal implications of each of the many purported trademark applications, renewals,
assignments and licenses between John F. Dille, Robert C. Dille, and their respective companies
that pre-date the September 24, 1982 assignment to Plaintiff.
The parties have not treated the pre-1982 assignments in any depth in their briefs, and the
Court declines to do so at this juncture because it would be unnecessary to resolve Defendant’s
motion. Plaintiff can show that there is a genuine issue as to whether it established trademark
rights in BUCK ROGERS solely with reference to evidence subsequent to the 1982 assignment.
First, there is evidence to suggest that the Dille Family Trust held federal registrations on
the BUCK ROGERS mark for use with toys, publications, and games during the 1980s. JA 1767
(USPTO Certificate of Correction dated March 20, 1984 for Registration No. 1,236,497 listing
“Robert C. and Virginia N. Dille . . . Trustee of the Dille Family Trust,” as owner of “BUCK
ROGERS [mark] for DOLLS, TOY VEHICLES AND TOY REPRODUCTIONS OF
FUTURISTIC SUPPORT ENVIRONMENTS.” ); JA 547-48 (Federal Registration No.
1,555,871 for BUCK ROGERS mark for use with board games, registered by the Dille Family
Trust on September 12, 1989.).
Second, there is evidence of a license agreement executed September 23, 1987 between
Plaintiff and TSR, Inc. (“TSR”), regarding trademark rights in BUCK ROGERS for publications
and games. JA 526-34. It is well established that, the “mere granting of a license without
evidence of actual use” is insufficient to establish trademark rights in a licensor. 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 18:46 (4th ed. 2010) [hereinafter
“McCarthy on Trademarks”] (citing Thoroughbred Legends, LLC v. The Walt Disney Co., No.
1:07-CV-1275-BBM, 2008 WL 616253, at *5 (N.D. Ga. Feb. 12, 2008)). Here, however, there is
evidence that TSR actually used the mark under the license. Specifically, Lorraine Virginia Dille
Williams testified in her deposition that while she was the President, CEO, and majority owner
of TSR from 1985-1997, TSR held a “master license” with the Dille Family Trust. AJA 7224.
Pursuant to that agreement, she indicated that TSR sublicensed the BUCK ROGERS mark for
use with “games, books, electronics, art. You name it.” Id. Her testimony is corroborated by
other evidence, including a document appearing to be a catalog of BUCK ROGERS games,
comics and books produced by TSR between 1988 and 1995. JA 1771-91. This document is
largely consistent with Williams’s deposition testimony as to the nature and timeframe of TSR’s
sales of BUCK ROGERS products. Compare id., with AJA 7225-26.
Taken together, a trier of fact could reasonably conclude from the foregoing evidence that
TSR’s use of the BUCK ROGERS mark for games, comics and books between approximately
1988 and 1997 was “sufficiently public to identify or distinguish the marked goods in an
appropriate segment of the public mind as those of [Plaintiff].” Lucent Info. Mgmt., 186 F.3d at
315 (internal quotation marks and citation omitted). Accordingly, there is a genuine issue with
respect to whether Plaintiff established trademark rights in BUCK ROGERS through TSR’s
If Plaintiff could establish trademark rights in BUCK ROGERS, whether through TSR’s
use or that of another licensee, it would then be necessary to address Defendant’s argument that
Plaintiff abandoned its trademark. “The Lanham Act states in relevant part that a ‘mark shall be
deemed to be ‘abandoned’ . . . [w]hen its use has been discontinued with intent not to resume
such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive
years shall be prima facie evidence of abandonment.’” Doeblers’ Pennsylvania Hybrids, Inc. v.
Doebler, 442 F.3d 812, 822 (3d Cir. 2006) (quoting 15 U.S.C. § 1127). The Lanham Act further
It should be noted that Plaintiff has not moved for summary judgment as to the issue of whether it established
trademark rights through TSR’s licensed use of the mark. Even if it had, Plaintiff would not be entitled to summary
judgment as to the issue because it is still disputed whether Plaintiff exercised sufficient quality control under the
TSR agreement for TSR’s licensed use (and the use of its sublicensees) to inure to Plaintiff’s benefit. See Doeblers’
Pennsylvania Hybrids, Inc. v. Doebler, 442 F.3d 812, 823 (3d Cir. 2006) (“Ownership rights in a trademark or
service mark can be acquired and maintained through the use of the mark by a controlled licensee even when the
first and only use of the mark was made, and is being made, by the licensee.” (citation omitted)). Moreover, “such
licensing arrangements are permissible so long as the license agreement provides for adequate control by the
licensor of the nature and quality of the goods or services,” and the licensor actually exercises that control. Id.
provides that “‘[u]se’ of a mark means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in a mark.9 15 U.S.C. § 1127
(“Abandonment (1)”). However, it must be noted that to make out abandonment, the Defendant
has a heavy burden. See U. S. Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 138-39 (3d Cir.
1981) (“[A]bandonment, being in the nature of a forfeiture, must be strictly proved.”). Because
Defendant would bear the burden of proof of abandonment at trial, its motion for summary
judgment on abandonment could not be granted “unless a reasonable [fact-finder] would be
compelled to find its way on the facts needed to rule in its favor on the law.” El v. Se.
Pennsylvania Transp. Auth., 479 F.3d 232, 238 (3d Cir. 2007) (footnote and citations omitted).
Although the record is somewhat problematic for Plaintiff, Defendant has not met its
heavy burden, and so summary judgment as to abandonment is inappropriate. On June 5, 1997,
the TSR license agreement was terminated. AJA 11367. From approximately 1997 to 2007,
there was an agreement in effect between Plaintiff and Walt Disney Pictures (“the Walt Disney
Pictures Agreement”), under which Walt Disney Pictures had the option to exploit the Buck
Rogers character for film, television, and related merchandising and entertainment. JA 17951846. But Plaintiff concedes that Walt Disney Pictures never produced a Buck Rogers film, or
for that matter, any goods or services, under the Walt Disney Pictures Agreement. Accordingly,
to avoid a finding of three years of consecutive nonuse, which would be prima facie evidence
that Plaintiff abandoned the BUCK ROGERS mark during the time the Walt Disney Pictures
In addition to non-use, abandonment may also result from so-called “naked licensing,” where a trademark owner
fails to provide appropriate quality control. Doeblers’ Pennsylvania Hybrids, Inc., 442 F.3d at 823-24 (citation
omitted). The rationale is that “[w]hen the trademark owner fails to exercise reasonable control over the use of the
mark by a licensee, the presence of the mark on the licensee’s goods or services misrepresents their connection with
the trademark owner since the mark no longer identifies goods and services that are under the control of the owner
of the mark.” Id. (citation omitted).
Agreement was in effect, 15 U.S.C. § 1127 (“Abandonment (1)”), Plaintiff must rely on some
other use of the mark during the 1997-2007 timeframe.
To that end, Plaintiff notes that under the Walt Disney Pictures Agreement, it retained the
right to license the BUCK ROGERS mark for use with “vintage merchandising,” and a “roleplaying game,” JA 1804-05, 1819, and contends that it continued to license the BUCK ROGERS
mark for these uses. A review of the record reveals sufficient evidence for Plaintiff to establish a
genuine issue as to whether it abandoned the mark during the time the Walt Disney Pictures
Agreement was in effect. For example, there are: (1) documents from 2003 that reflect royalty
payments Plaintiff received from the sale of 586 Buck Rogers commemorative statutes by Dark
Horse Comics, Inc., with gross receipts totaling about $15,000, AJA 10269-10275; (2) records
suggesting that between 2002 and 2007, Plaintiff received royalty payments from Universal
Pictures for sales of the 1979-1981 Buck Rogers film and television series DVD’s reflecting
gross revenues during these years ranging from as much as $51,314 to as little as $192 annually,
AJA 11037-11068; (3) royalty reports from Alpha International, Inc., reflecting the sale of
hundreds of Buck Rogers spaceships from 2003 to 2007, AJA 10765-10803; and, (4) a purported
license agreement with Hermes Press for books of reprints of the original comic strip, and
distributor records suggesting that (at most) 1,914 copies were sold between December 2008 and
January 2009. Although this evidence raises questions as to whether Plaintiff’s claimed uses of
the mark from approximately 1997 to January 15, 2009 were “made in the ordinary course of
trade, and not made merely to reserve a right in a mark,” 15 U.S.C. § 1127, it does not compel a
conclusion in Plaintiff’s favor.
Therefore, summary judgment on the issue of abandonment of would also be
2. Plaintiff’s Motion
Ownership of BUCK ROGERS mark
Turning next to Plaintiff’s motion for summary judgment on its challenge to the TTAB’s
rejection of its opposition to the Defendant’s trademark application. As to the claim, Plaintiff
asserts a single ground for summary judgment in its favor: Defendant cannot prove ownership of
the BUCK ROGERS mark. Specifically, Plaintiff points to Section 1(a) of the Trademark Law
Revision Act (“TLRA”), Pub. L. No. 100-667, 102 Stat. 3835, which provides that “[t]he owner
of a trademark used in commerce may request registration of its trademark on the principal
register,” codified at 15 U.S.C. § 1051(a)(1) (emphasis added), arguing that Defendant’s
application must fail because Defendant cannot establish that it is the mark’s owner.
Plaintiff’s reliance on Section 1(a) is misplaced. Defendant’s trademark application is
not a TLRA Section 1(a) use-based application. Rather, it is a TLRA Section 1(b) intent-to-use
application, which provides that “[a] person who has a bona fide intention, under circumstances
showing the good faith of such person, to use a trademark in commerce may request registration
of its trademark on the principal register.” 15 U.S.C. § 1051(b)(1). As Defendant points out,
unlike a Section 1(a) application, a Section 1(b) application does not require the applicant to be
the “owner” of the mark. See id. Indeed, such a requirement would make no sense because the
intent-to-use application provision expressly contemplates that no use has yet taken place. Id.
Because trademark ownership in the United States is governed by priority of use, In re TradeMark Cases, 100 U.S. 82, 94 (1879) (“At common law the exclusive right to [a trademark] grows
out of its use, and not its mere adoption . . . . It is simply founded on priority of appropriation.”);
see also 2 McCarthy on Trademarks § 16:1 (“The basic rule of trademark ownership in the
United States is priority of use.”), intent-to-use applicants, by definition, do not “own” the mark
they seek to register. Instead, intent-to-use applicants may perfect their applications pursuant to
TLRA Sections 1(c), codified at 15 U.S.C. § 1051(c) (allowing amendment of intent-to-use
application to conform to use-based application by an intent-to-use applicant who has used the
mark in commerce), or 1(d), codified at 15 U.S.C. § 1051(c) (allowing filing of verified
statement that trademark has been used in commerce on Notice of Allowance by the U.S. Patent
and Trademark Office).
Here, unless Plaintiff can establish priority of use of the Buck Rogers mark, see supra
Part III.A.1, it may not rely on the fact that Defendant has not yet used the mark to oppose
Defendant’s intent-to-use application. To hold otherwise – namely, to allow Plaintiff to rely on
post-application use to enjoin an intent-to-use applicant from using the mark in commerce, and
thereby, perfecting its application – “would eviscerate the [TLRA’s intent-to-use] provisions and
defeat their very purpose.” WarnerVision Entm’t Inc. v. Empire of Carolina, Inc., 101 F.3d 259,
262 (2d Cir. 1996). Accordingly, Plaintiff’s motion for summary judgment in its favor on its
opposition to Defendant’s trademark application on the ground that Defendant cannot establish
ownership of the mark will be denied.
In addition, Plaintiff has also moved for summary judgment with respect to two of
Defendant’s affirmative defenses to Plaintiff’s challenge to Defendant’s trademark application:
claim preclusion (res judicata), and issue preclusion (collateral estoppel) as to the question of
abandonment. Specifically, Plaintiff contends that there is no genuine issue of material fact that
would prevent the Court from concluding as a matter of law that the TTAB’s February 1, 2011
order granting Defendant’s cancellation petition lacks preclusive effect in the present case.
Plaintiff concedes that TTAB decisions may be entitled to preclusive effect, see B & B
Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1310 (2015) (addressing issue preclusion
specifically), but contends that the elements of claim preclusion and issue preclusion are not
satisfied. Each defense is addressed in turn.
a. Claim Preclusion
“The doctrine of claim preclusion . . . prohibits successive litigation of the very same
claim by the same parties.” Whole Woman’s Health v. Hellerstedt, 136 S. Ct. 2292, 2305 (2016)
(citation and quotation marks omitted). Generally, “[c]laim preclusion bars suit when three
elements are present: (1) a final judgment on the merits in a prior suit involving (2) the same
parties or their privies and (3) a subsequent suit based on the same cause of action.” Davis v.
Wells Fargo, 824 F.3d 333, 341 (3d Cir. 2016) (quotation marks and citation omitted).
Defendant seeks to use the TTAB’s February 1, 2011 decision granting the Defendant’s
cancellation petition – the result of which was the April 5, 2011 cancellation of the Plaintiff’s
federal registrations of the BUCK ROGERS mark for newspaper comic strips and board games –
as a shield that precludes Plaintiff’s instant claim opposing Defendant’s trademark application.
There is little doubt that the first two elements of claim preclusion are met. As to the first, in
light of Plaintiff’s voluntary surrender, the TTAB’s decision was analogous to a default
judgment, which may have preclusive effect, see Int’l Nutrition Co. v. Horphag Research, Ltd.,
220 F.3d 1325, 1328 (Fed. Cir. 2000) (citing cases), and thus, the TTAB’s decision granting
Defendant’s cancellation petition was a final judgment on the merits. And as to the second
element, the parties are the same.
That leaves the third element, which would require Defendant to establish that Plaintiff’s
present opposition to Defendant’s trademark application is “based on the same cause of action”
as the earlier cancellation petition. Where the parties have switched sides from the first action to
the second, such that it is the first-action defendant against whom the defense of claim preclusion
is asserted in the second action, “the somewhat different rules of ‘defendant preclusion’ apply”
to the determination of whether the two suits involve the same cause of action. Nasalok Coating
Corp. v. Nylok Corp., 522 F.3d 1320, 1324 (Fed. Cir. 2008) (citing 18 Charles Alan Wright &
Arthur R. Miller, Federal Practice and Procedure § 4414 (3d ed.)); see also Towers, Perrin,
Forster & Crosby, Inc. v. Brown, 732 F.2d 345, 348 (3d Cir. 1984) (considering Restatement
(Second) of Judgments § 22 to determine whether the two suits involve the same cause of
action). As relevant here, when judgment in the first action was entered against the defendant, a
subsequent action by the first-action defendant “is precluded only if (1) the claim . . . asserted in
the second action was a compulsory counterclaim that the defendant failed to assert in the first
action, or (2) the claim . . . represents what is essentially a collateral attack on the first
judgment.” Nasalok Coating Corp., 522 F.3d at 1324 (citing inter alia Restatement (Second) of
Judgments § 22 (1982)).
Here, Plaintiff’s present opposition to Defendant’s trademark application was not a
compulsory counterclaim to Defendant’s cancellation petition. See 37 C.F.R. § 2.114
(identifying “[a] defense attacking the validity of any one or more of the registrations pleaded in
the petition,” as the sole compulsory counterclaim to a cancellation petition). Nor, so far as the
record reveals, was the instant opposition a permissive counterclaim in the cancellation
proceeding. To the contrary, Plaintiff could not have opposed Defendant’s trademark application
in the cancellation proceeding because an opposition to a trademark application cannot be filed
until the application is published by the USPTO in the Official Gazette. 15 U.S.C. § 1062(a).
Publication of Defendant’s trademark application occurred June 14, 2011, more than two months
after Plaintiff’s federal registrations were cancelled. Consequently, it would not have been
possible for Plaintiff to assert its opposition to Defendant’s trademark application as a
counterclaim to Defendant’s cancellation petition because such opposition would have been
purely hypothetical, and as such, untimely. Because Plaintiff could not have opposed the
Defendant’s trademark application in the cancellation proceeding, asserting it here is not a
collateral attack on the TTAB decision granting the cancellation petition. Accordingly,
Plaintiff’s opposition in Count One is not “based on the same cause of action” as the cancellation
Thus, claim preclusion based on the TTAB’s decision in the cancellation proceeding is
unavailable, and Plaintiff’s motion for summary judgment as to the affirmative defense of claim
preclusion will be granted.
b. Issue Preclusion
When “the usages adjudicated by the TTAB are materially the same as those before [a]
district court,” prior TTAB decisions should be given preclusive effect “[s]o long as the other
ordinary elements of issue preclusion are met.” B & B Hardware, Inc., 135 S. Ct. at 1310. Issue
preclusion is available where “(1) the issue sought to be precluded is the same as that involved in
the prior action; (2) that issue was actually litigated; (3) it was determined by a final and valid
judgment; and (4) the determination was essential to the prior judgment.” Peloro v. United
States, 488 F.3d 163, 174-75 (3d Cir. 2007) (citations, quotations marks, and alterations
Here, Defendant contends that Plaintiff is precluded from contesting the issue of
abandonment, which, Defendant asserts, was finally resolved in its favor by the TTAB in the
cancellation proceeding. Defendant’s argument is without merit. With respect to the first
element, the issue sought to be precluded is not the same. Although, broadly speaking, both
involve whether Plaintiff abandoned the BUCK ROGERS mark, in the cancellation proceeding
the question was whether Plaintiff had ceased to use the mark for the goods covered by its
federal registrations, specifically newspaper comic strips and board games. Here, Plaintiff
asserts that it has common law trademark rights in a much wider range of goods and services,
and as such, the question is whether Plaintiff has abandoned use of the mark for all of those uses.
Nor is the second element met – although the cancellation proceedings lasted 15 months,
the issue of abandonment of the mark was not resolved on the merits, but rather, by Plaintiff’s
voluntary surrender of its federal registrations. Nor, therefore, was the fourth element met: what
was not actually determined cannot constitute a determination essential to a prior judgment.
Accordingly, Plaintiff’s motion for summary judgment as to Defendant’s affirmative defense of
issue preclusion will also be granted.
B. Lanham Act Trademark Dilution – Count Three
Returning to Defendant’s summary judgment motion, Defendant next seeks summary
judgment as to the Plaintiff’s federal trademark dilution claims. Plaintiff’s Second Amended
Complaint includes two federal trademark dilution claims: its stand-alone federal trademark
dilution claim based on the Defendant’s 2015 conduct (Count Three), and its opposition to the
Defendant’s application to register the BUCK ROGERS mark on dilution grounds (Count One)
(collectively, “federal dilution claims”). Both are governed by Section 43(c) of the Lanham Act,
which provides that “the owner of a famous mark that is distinctive, inherently or through
acquired distinctiveness, shall be entitled to an injunction against another person who, at any
time after the owner’s mark has become famous, commences use of a mark . . . in commerce that
is likely to cause dilution by blurring . . . .” 15 U.S.C. § 1125(c). A prima facie federal
trademark dilution claim thus requires proof that: (1) that the plaintiff is the owner of a mark that
qualifies as a “famous” mark in light of the totality of the four factors listed in 15 U.S.C. §
1125(c)(2); (2) the defendant is making commercial use in interstate commerce of a mark or
trade name; (3) the defendant’s use began after the plaintiff’s mark became famous; and (4) the
defendant’s use is likely to cause dilution by lessening the capacity of the plaintiff’s mark to
identify and distinguish goods or services. See 15 U.S.C. § 1125(c)(2); Times Mirror
Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 163 (3d Cir. 2000).10, 11
Defendant argues that Plaintiff cannot establish the first element on the summary
judgment record, contending that it contains insufficient evidence that Plaintiff owns the BUCK
ROGERS mark and that BUCK ROGERS is a famous mark. Additionally, Defendant argues
that Plaintiff cannot establish the third element because it cannot prove that Defendant’s
challenged use took place after BUCK ROGERS became a famous mark. Because the issue of
fame is clearly dispositive of Plaintiff’s dilution claims, the Court will confine its discussion to
the issue of whether BUCK ROGERS is a famous mark.
Times Mirror preceded the Trademark Dilution Revision Act of 2006 (“TDRA”), which expanded the Lanham
Act to include claims alleging likelihood of dilution, rather than only claims alleging actual dilution, and amended
Section 43(c) to reduce the number of statutory fame factors from eight to four. Pub. L. No. 109-312, 120 Stat. 1730
(2006), codified at 15 U.S.C. § 1125(c). The elements of a dilution claim articulated in Times Mirror have thus been
modified above to integrate changes effected by the TDRA.
The parties have not addressed whether the challenged use – Defendant’s 2015 pitch of a BUCK ROGERS script
to NBC Universal – would be competitive or noncompetitive with Plaintiff’s asserted uses. The record does not
resolve the issue because so many factual disputes remain as to whether Plaintiff can establish priority of use of the
BUCK ROGERS mark, and if so, the particular goods and services for which Plaintiff has in fact used the mark. As
Professor McCarthy has noted, despite its facial applicability to competitive situations, see 15 U.S.C. § 1125(c)(1)
(providing injunctive remedy for likelihood of dilution “regardless of the presence or absence of actual or likely . . .
competition”), the legal theory of dilution by blurring only makes sense in non-competitive contexts. 4 McCarthy
on Trademarks § 24:74, at 226-28, and n.7 (4th ed. 2010) (citing inter alia TCPIP Holding Co. v. Haar Commc’ns,
Inc., 244 F.3d 88, 95 (2d Cir. 2001) (“In contrast [to traditional infringement law], the Dilution Act is designed
solely for the benefit of sellers. Its purpose is to protect the owners of famous marks from the kind of dilution that is
permitted by the trademark laws when a junior user uses the same mark in a non-confusing way in an unrelated area
of commerce.” (emphasis in McCarthy on Trademarks)). Because there is evidence in the record to suggest that
Defendant’s use of the mark for the script could be noncompetitive with Plaintiff’s use of the mark on, for example,
books of reprints of the original newspaper comic strips, the Court will assume without deciding that a federal
dilution claim is proper here.
For the purposes of federal trademark dilution, fame is truly a threshold question, and
“[i]t is well-established that dilution fame is difficult to prove.” Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 1373 (Fed. Cir. 2012) (holding that evidence was insufficient to
establish COACH mark used with handbags and leather goods met fame threshold for federal
dilution claim). A mark is famous, “if it is widely recognized by the general consuming public
of the United States as a designation of source of the goods or services of the mark’s owner.” 15
U.S.C. § 1125(c)(2)(A). In light of this language, and considering the sweeping scope of the
federal dilution remedy, Professor McCarthy has proposed as a guideline a general threshold of
75% recognition to qualify as a famous mark. 4 McCarthy on Trademarks § 24:106 Author’s
Opinion on Amount of Consumer Recognition and Awareness to Qualify a Mark as “Famous.”
Although the Third Circuit had interpreted an earlier version of the federal trademark
dilution law to allow the owner of a mark that had attained “niche fame” in a specific geographic
area or among a particular subset of consumers to benefit from federal dilution protection, Times
Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 164-65 (3d Cir. 2000),
commentators and courts generally agree that the 2006 addition of the definition of a famous
mark by the TRDA, Pub. L. No. 109-312, 120 Stat. 1730 (2006), codified at 15 U.S.C. § 1125(c),
effectively precludes niche fame from serving as a basis for a federal dilution claim. See 4
McCarthy on Trademarks § 24:105 at n.4 (collecting cases).
Under the TRDA, the question of whether a mark is famous is informed by “all relevant
factors,” including four permissive statutory considerations:
(i) [t]he duration, extent, and geographic reach of advertising and publicity of the
mark, whether advertised or publicized by the owner or third parties; (ii) [t]he
amount, volume, and geographic extent of sales of goods or services offered
under the mark; (iii) [t]he extent of actual recognition of the mark; [and,] (iv)
[w]hether the mark was [federally] registered . . . .
15 U.S.C. § 1125(c)(A)(i)-(iv).
Here, Plaintiff’s principal evidence of fame is the testimony of Richard A. Spreng,
Ph.D.,12 who conducted a survey designed to shed light on the third factor, the extent of actual
recognition of the mark. ECF 92. Based upon the survey, Spreng would testify that “there is a
very high level of awareness of ‘Buck Rogers’” in the United States, and that Buck Rogers
“therefore is a famous mark.” Id. at 3. Because of its centrality to Plaintiff’s federal dilution
claims, the Spreng survey merits some discussion.
Spreng used a private sample provider, which sent an email invitation to a representative
sample of U.S. residents. Id. 4-5. Survey recipients – selected from a proprietary “panel” of prescreened individuals maintained by the provider – were directed to a link to a website, where
they could complete the survey. Id. Data were collected between February 10 and February 12,
2017, with 1,088 responses received. Id.
The survey included five questions. Id. The first tested for “unaided recall of Buck
Rogers.” Id. at 5-6 (“Over the years there have been many science fiction action characters. In
the spaces below, please name all the science fiction action characters you can think of.”). A
mere 1% of respondents included Buck Rogers in the first five (of ten) boxes provided; when
narrowed to exclude characters that Spreng determined where not “science fiction action
characters,” that number increased to 2%. Id. at 6-7, 16. The second question tested for “aided
recall of Buck Rogers,” which presented respondents with a list of science fiction action
characters (and one made-up name to test for “acquiescence bias”), and asked them to select any
that they recognized. Id. at 6-7. In response, 63% of respondents indicated they recognized
Buck Rogers. Id. For comparison, 91% indicated they recognized Captain America, and 87%
indicated they recognized Luke Skywalker; on the other hand, 5% indicated they recognized the
Spreng is an Associate Professor of Marketing at Michigan State University, and is an independent marketing
research consultant. In addition to teaching graduate level courses in research methods, he has conducted marketing
studies for numerous public and private groups, and has been extensively published in the field.
made-up “Frederick Johnson.” Id. Finally, the third question presented respondents with the
same list of characters and asked “[h]ow familiar are you with the following Science [sic] fiction
characters?” and asked them to rank each character on a scale from 1 (least familiar) to 5 (most
familiar). Id. at 12. Buck Rogers had an average familiarity of 3.06, evincing less familiarity
than Luke Skywalker (4.22), Captain America (4.01), Captain James T. Kirk (4.00), and Flash
Gordon (3.51), and more familiarity than John Carter (2.44), Hal 9000 (2.39), The Doctor (2.37),
Robbie the Robot (2.32), Klaatu (1.89), Magnus Robot Fighter (1.71), Anthony Rogers (1.68),
Dr. Solar (1.64), Frederick Johnson (1.64), Dan Dare (1.62), and Brick Bradford (1.62). Id. at 78.
In its Rule 702 motion, Defendant challenges the reliability and fit of the Spreng survey
upon which his opinions are premised. However, it is unnecessary to address these objections
because even if the Court were to conclude that Spreng’s testimony was admissible under Rule
702, it would only support a conclusion that BUCK ROGERS has not reached the requisite level
of fame to support a federal dilution claim. Plaintiff’s survey found – at best – 2% unaided
recognition, and 63% aided recognition of the science fiction character Buck Rogers. It is not
necessary to accept Professor McCarthy’s threshold of 75% recognition to observe that
Plaintiff’s results fall far short of the recognition of other marks held to be famous after the
TRDA. See, e.g., Visa Int’l Serv. Ass’n v. JSL Corp., 590 F. Supp. 2d 1306, 1315 (D. Nev. 2008)
(holding that VISA is a famous mark in part due to survey showing 85% unaided recognition of
the mark as a designation of the source of the owner’s goods and services); see also 4 McCarthy
on Trademarks § 24:106, Author’s Opinion on Amount of Consumer Recognition and Awareness
to Qualify a Mark as “Famous,” at n.18 (collecting cases).
Nor is the other record evidence sufficient to establish that BUCK ROGERS is a famous
mark. To establish the first factor, “[t]he duration, extent, and geographic reach of advertising
and publicity of the mark . . . ,” Plaintiff points to “numerous museum shows,” including one that
ran from 1996-2003 at the Smithsonian National Air & Space Museum featuring Buck Rogers
memorabilia. JA 1113. Plaintiff also points to the inclusion from 2003-2008 of a book of Buck
Rogers comic strip reprints and other Buck Rogers memorabilia in the monthly catalog
circulated by the world’s largest comic book distributor with a circulation of approximately
40,000 nationwide. AJA 8313-14. The record does not, however, include advertising
expenditures or other evidence to show the reach of advertising efforts by Plaintiff or its
licensees during a relevant time period. On the whole, this factor is, at best, neutral.
With respect to the second factor, “[t]he amount, volume, and geographic extent of sales
of goods or services offered under the mark,” Plaintiff points to the following evidence its
royalties received between 2002 and 2007 from Universal Pictures for the 1979-1981 Buck
Rogers film and television series. These were not substantial, reflecting gross revenues during
these years ranging from as much as $51,314 to as little as $192 annually. AJA 11037-11068.
Plaintiff also points to royalties from the sale of Buck Rogers commemorative statutes in 2003
by Dark Horse Comics, Inc., with gross receipts totaling about $15,000. AJA 10269-10275.
Although other goods are referenced in the record, Plaintiff has not identified, nor has the
Court found, corresponding evidence from which the amount, volume or geographic extent of
sales of such products may have been. For example, there is evidence that the Dille Family Trust
received fees in the amount of $220,000 from various entities between July 20, 2007 and
December 18, 2008, pursuant to various licensing agreements allowing for the sale of BUCK
ROGERS merchandise. JA 2214. However, these fees appear to correspond to up-front
licensing fees for the use of the mark, and not to “sales of goods or services offered under the
mark.” Although these licensing agreements provide for the payment of royalties calculated as a
percentage of actual sales, the record does not include records of corresponding royalty payments
or other evidence of actual sales of licensed goods or services. On the whole, this factor weighs
Finally, with respect to the fourth factor, Plaintiff cannot point to a valid federal
registration of the BUCK ROGERS mark.
In light of the foregoing considerations, there is no genuine dispute that Plaintiff is
unable, on this record, to establish that BUCK ROGERS is a famous mark as required by the
federal dilution laws. Accordingly, Defendant’s motion for summary judgment as to Plaintiff’s
federal dilution claims will be granted.13
C. Breach of Contract - Count Two
Defendant has moved for summary judgment on the contract claim on statute of
limitations grounds.14 However, the Court need not reach this argument, as it is clear from the
summary judgment record that Plaintiff cannot establish that Defendant is bound by the contract
In a contract claim, “[t]he burden is on the plaintiff to prove . . . the existence of the
contract to which the defendant is a party.” Viso v. Werner, 369 A.2d 1185, 1187 (Pa. 1977)
Because Spreng’s proposed expert testimony is only relevant to Plaintiff’s federal dilution claims, Defendant’s
motion to exclude his testimony pursuant to Rule 702 will be dismissed as moot.
The Court has already concluded that Pennsylvania’s four-year statute of limitations on written contract claims
applies to Plaintiff’s contract claim. ECF 54 at 5 (citing 42 Pa. Cons. Stat. § 5525(a)(8); see Stephens v. Clash, 796
F.3d 281, 289 (3d Cir. 2015) (noting that federal courts adjudicating state law claims apply statutes of limitations
according to the law of the state in which the court sits)). Defendant contends that even if Defendant is bound by the
1942 Release and Assignment, and even if its 2015 conduct constituted a breach, the claim accrued in March 7,
2010 when the Plaintiff, Defendant, Flame Ventures, LLC – whose principal, Tony Krantz, authored the script at
issue in 2015 – were engaged in negotiations over the parties’ rights in the Buck Rogers character with the Cartoon
Network. JA 1316-19. If true, any claim for conduct that occurred in 2015 would be untimely.
(emphasis added). On the motion to dismiss the Second Amended Complaint, the Court
addressed the 1942 Release and Assignment, and concluded that the document could be
construed to bind Theresa Marie Nowlan’s “heirs, executors, or administrators.” ECF 54 at 7.
Viewing the allegations in the Second Amended Complaint in the light most favorable to
Plaintiff, namely, that the Nowlan Family Trust is a business trust organized under the laws of
Pennsylvania, and that its current trustee is Brian McDevitt, a grandson of Philip F. Nowlan and
Theresa Marie Nowlan, SAC ¶¶ 2-4, the Court concluded that it was plausible, given the
standards through which the Court viewed the allegations on a motion to dismiss, that Defendant
is an heir, executor or administrator of Theresa Marie Nowlan, and therefore, is bound as a
successor in interest to the 1942 Release and Assignment.
Now, viewed through the prism of the standard on a motion for summary judgment,
Plaintiff has not identified anything in the record that could establish that the Nowlan Family
Trust is a successor in interest to Theresa Marie Nowlan. To establish a connection between
Theresa Marie Nowlan and the Defendant, Plaintiff has put forth a single piece of evidence: the
proposed expert opinion Michael S. Ramage, a professional genealogist, who would testify that
the living descendants of Philip F. Nowlan include Brian McDevitt (the settlor and trustee of the
Nowlan Family Trust), as well as Diane McDevitt, and others who Defendant concedes may be
permissible beneficiaries of the Nowlan Family Trust. JA 3075-95. The purpose of the Ramage
report is perplexing. Defendant does not dispute that Brian and Diane McDevitt are
grandchildren of Philip F. Nowlan and Theresa M. Nowlan, and also does not dispute that other
individuals identified by Ramage as descendants may be permissible beneficiaries of the Nowlan
Family Trust, and so it is unclear why Plaintiff needs an expert to establish these undisputed
In any event, the bare fact that Brian McDevitt is Philip F. Nowlan’s and Theresa M.
Nowlan’s grandson is insufficient to establish, as a legal matter, that a business trust he formed is
an “heir, executor or administrator” of Theresa Marie Nowlan, or otherwise a successor in
interest to her obligations under the 1942 Release and Assignment. That would require evidence
showing some sort of transfer of the 1942 Release and Assignment to Defendant, which is absent
from the record. Nor, for that matter, is there anything to suggest that the rights and obligations
under the 1942 Release and Assignment passed to Brian McDevitt: Theresa Marie Nowlan’s will
is not in the record, nor is that of her daughter and Brian McDevitt’s mother, Helen Nowlan
McDevitt. Accordingly, on this record no reasonable finder of fact could conclude that the
Defendant is a party to the 1942 Release and Assignment, and so Defendant’s motion for
summary judgment will be granted as to the contract claim, and Defendant’s motion to exclude
Ramage’s report under Rule 702 will be dismissed as moot.15
An appropriate order follows.
Dated: August 25, 2017
BY THE COURT:
/s/Wendy Beetlestone, J.
WENDY BEETLESTONE, J.
Having granted summary judgment as to the federal trademark dilution and breach of contract claims, which are
the only claims for which damages or injunctive relief are available, and the only claims for which unclean hands
might serve as an affirmative defense, it is unnecessary to address Defendant’s motion for summary judgment as to
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