Windsurfing Intern. Inc. v. AMF Inc., No. 87-1232
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
| Writing for the Court | Before MARKEY, Chief Judge, and BALDWIN, Senior Circuit Judge, and SMITH; MARKEY |
| Citation | 828 F.2d 755,4 USPQ2d 1052 |
| Parties | , 4 U.S.P.Q.2d 1052 WINDSURFING INTERNATIONAL INC., Plaintiff-Appellant, v. AMF INCORPORATED, Defendant-Appellee. |
| Decision Date | 09 September 1987 |
| Docket Number | No. 87-1232 |
Page 755
v.
AMF INCORPORATED, Defendant-Appellee.
Federal Circuit.
Page 756
Jai ho Rho, Nilsson, Robbins, Dalgarn, Berliner, Carson & Wurst, Los Angeles, Cal., argued for plaintiff-appellant. With him on the brief was Harold E. Wurst.
Michael C. Elmer, Finnigan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., argued for defendant-appellee. With him on the brief was Richard H. Compere, Willian Brinks Olds Hofer Gilson & Lione, Ltd., Chicago, Ill.
Before MARKEY, Chief Judge, and BALDWIN, Senior Circuit Judge, and SMITH, Circuit Judge.
MARKEY, Chief Judge.
Appeal from a judgment of the United States District Court for the Southern District of New York holding that Windsurfing International's (WSI's) "WINDSURFER" trademark has become generic and ordering (1) cancellation of its U.S. Trademark Registration Nos. 962,616 and 1,195,641 on that mark, and (2) rectification of U.S. Trademark Registration Nos. 997,974 and 1,180,024 by addition of a disclaimer. 613 F.Supp. 933, 227 USPQ 927 (S.D.N.Y.1985). Because the district court lacked jurisdiction to entertain AMF's claim for cancellation, the judgment appealed from must be vacated.
United States Patent No. 3,487,800 for a "Wind-Propelled Apparatus" issued in January 1970. WSI, the assignee, has manufactured and sold the patented "sailboard" since 1969. WSI filed an application for reissue in 1978, and U.S. Patent Re. 31,167 ('167 patent) issued on March 8, 1983.
In 1981, after other manufacturers had entered the "sailboard" market, WSI sued AMF Incorporated (AMF) and others for patent infringement. The district court stayed the action pending the outcome of reissue proceedings. When the '167 patent issued in March 1983, AMF filed a complaint in the same court seeking a declaratory judgment, inter alia, that the '167 patent was unenforceable because WSI had misused it.
WSI had since 1977 been sending letters demanding the cessation of all use of "WINDSURFER" except in reference to WSI's products. On August 16, 1983, after an AMF dealer ran a newspaper advertisement using "Windsurfer" to refer to one of AMF's products, attorneys for WSI wrote to the dealer demanding that it cease using "WINDSURFER" and requested a prompt reply "to preclude the necessity of instituting more formal proceedings to protect [WSI's] trademark rights." AMF advised the dealer to stop running the advertisement, and the dealer did so.
In November 1983, AMF filed its answer to WSI's infringement complaint, amended its complaint for a declaratory judgment, and filed a counterclaim, seeking in both latter instances cancellation of WSI's registrations. AMF did not designate its counterclaim as one for declaratory judgment, though, like its amended complaint, it was clearly such. In its amendment and counterclaim, AMF alleged that "windsurfer" did not function as a trademark because it had become generic. The district court consolidated the actions.
In November 1984, shortly before trial, WSI moved to dismiss AMF's trademark claims for lack of subject matter jurisdiction, arguing that AMF had alleged insufficient facts to create a "case or controversy" under Article III of the Constitution. The district court denied the motion.
The district court held a nonjury trial in November and December 1984 and issued an opinion on July 15, 1985. About WSI's no-case-or-controversy argument, that opinion said:
On the eve of trial WSI moved to dismiss the trademark issues on the grounds of lack of case or controversy. The motion was denied. WSI again raises the issue in its post-trial brief. The fact that WSI
Page 757
has sent correspondence threatening to sue at least one of AMF's dealers ( ...), along with the fact that the trademark issue is intimately connected with AMF's misuse defense (which AMF clearly has a right to assert), is sufficient in this action to create a "case or controversy" and we decline to overturn our earlier ruling. [citation omitted]613 F.Supp. at 960 n. 174, 227 USPQ at 947 n. 174. The foregoing quote is the entirety of the district court's opinion relating to whether a "case or controversy" exists on the trademark issue. On the merits, the opinion said "windsurfer" had become generic. 613 F.Supp. at 954-62, 227 USPQ at 942-49. No judgment was entered at the time the July 15, 1985 opinion was issued.
On September 11, 1985, the district court entered judgment on the patent issues and an injunction. AMF appealed. 28 U.S.C. Sec. 1292(a)(1). This court affirmed the judgment that the '167 patent was valid and infringed, reversed the holding that the '167 patent was unenforceable because of patent misuse, and remanded for the district court to reconsider the scope of its injunction. 782 F.2d 995, 228 USPQ 562 (Fed.Cir.), cert. denied, --- U.S. ----, 106 S.Ct. 3275, 91 L.Ed.2d 565 (1986).
On January 6, 1987, the district court entered judgment on AMF's complaint and counterclaim, having determined that " 'windsurfer' has become and is generic," and ordered the cancellation of two of WSI's trademark registrations and the addition of a disclaimer to two others. No reference to the presence or absence of a case or controversy was made in connection with that judgment. WSI appealed.
Whether the district court had subject matter jurisdiction to entertain AMF's challenge to WSI's trademark registrations.
As in any federal case, an action...
To continue reading
Request your trial
-
Xerox Corp. v. Apple Computer, Inc., No. C-89-4428-VRW.
...882 F.2d 171 (5th Cir.1989), cert. denied, ___ U.S. ___, 110 S.Ct. 869, 107 L.Ed.2d 953 (1990); Windsurfing International, Inc. v. AMF, 828 F.2d 755 (Fed. Cir.1987). This court's decision in the present action would be the same under either 7 The only circumstance under which Xerox might co......
-
Aktieselskabet Af 21. November 2001 v. Fame Jeans, No. 07-7105.
...§ 1119; Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 873 (3rd Cir.1992); Windsurfing Int'l Inc. v. AMF Inc., 828 F.2d 755, 758 (Fed.Cir.1987). In addition, two of our sister circuits have even interpreted § 21(b) as allowing a court, in appropriate circumstances, to ......
-
In re Leslie Fay Companies, Inc., Bankruptcy No. 93 B 41724(TLB)
...of conduct that brought it into adversarial conflict with the declaratory defendant. Id. (citing Windsurfing Intern., Inc. v. AMF Inc., 828 F.2d 755 (Fed.Cir.1987)). If both prongs are satisfied, an actual case or controversy exists and a declaratory judgment may be issued. The Supreme Cour......
-
America Online, Inc. v. At & T Corp., No. Civ.A.98-1821-A.
...First, AT & T must have a "real and reasonable apprehension of litigation" as a result of its conduct. Windsurfing Int'l Inc. v. AMF Inc., 828 F.2d 755, 757 (Fed.Cir.1987). Second, AT & T must have "engaged in a course of conduct which brought it into adversarial conflict with the declarato......
-
Xerox Corp. v. Apple Computer, Inc., No. C-89-4428-VRW.
...882 F.2d 171 (5th Cir.1989), cert. denied, ___ U.S. ___, 110 S.Ct. 869, 107 L.Ed.2d 953 (1990); Windsurfing International, Inc. v. AMF, 828 F.2d 755 (Fed. Cir.1987). This court's decision in the present action would be the same under either 7 The only circumstance under which Xerox might co......
-
Aktieselskabet Af 21. November 2001 v. Fame Jeans, No. 07-7105.
...§ 1119; Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 873 (3rd Cir.1992); Windsurfing Int'l Inc. v. AMF Inc., 828 F.2d 755, 758 (Fed.Cir.1987). In addition, two of our sister circuits have even interpreted § 21(b) as allowing a court, in appropriate circumstances, to ......
-
In re Leslie Fay Companies, Inc., Bankruptcy No. 93 B 41724(TLB)
...of conduct that brought it into adversarial conflict with the declaratory defendant. Id. (citing Windsurfing Intern., Inc. v. AMF Inc., 828 F.2d 755 (Fed.Cir.1987)). If both prongs are satisfied, an actual case or controversy exists and a declaratory judgment may be issued. The Supreme Cour......
-
America Online, Inc. v. At & T Corp., No. Civ.A.98-1821-A.
...First, AT & T must have a "real and reasonable apprehension of litigation" as a result of its conduct. Windsurfing Int'l Inc. v. AMF Inc., 828 F.2d 755, 757 (Fed.Cir.1987). Second, AT & T must have "engaged in a course of conduct which brought it into adversarial conflict with the declarato......