TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JOE J. ALFARO, JR.
`
`Opposer,
`
`GUY A. HOFFMANN,
`
`Applicant,
`
`\/\./\/\/\/\./\asJ\g\y\/
`
`Opposition No.: 91155188
`
`IN RE:
`
`Serial No.: 78110344
`
`Mark: SUPERFREAKS FUNKY
`DISCO REVUE
`
`APPL|CANT’S MAIN BRIEF
`
`CERTIFICATION UNDER 37 CFR § 1.8
`I hereby certify that the document referred to as enclosed herein is being deposited with the United States
`Postal Service as first-class mail on this date, January//, 2006,
`in an envelope addressed to: Box TTAB, NO
`EE, Commisson
`for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3513.
`Vézii/Q
` Leonard H.
`
`
`
`
`
`
`
`01-19-2006
`U.S. Patent & TMOfclTM Mail Flcpt D1. #72
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .................................................................................... ..1
`
`DESCRIPTION OF THE RECORD .............................................................. ..2
`
`STATEMENT OF ISSUES ........................................................................ ..2
`
`STATEMENT OF FACTS ......................................................................... ..3
`
`V.
`
`ARGUMENT .......................................................................................... ..4
`
`1.
`
`2.
`
`“UNCLEAN HANDS” is a Recognized Equitable Doctrine In Trademark Law..4
`
`Under California Law, Opposer’s Registration of the Service Mark “THE
`SUPERFREAKS” Pursuant to Business and Professions Code 14240, 14241
`and 14242 gave him additional protection under State Law for the service
`mark
`SUPERFREAKS
`causing
`'
`injury
`to
`the
`Applicant ...................................................................................... ..8
`
`3.
`
`Relationship Between Federal Law and State Trademark Law — State Law
`Cannot Limit Federal Rights ............................................................... ..9
`
`4. CONCLUSION ................................................................................ ..1O
`
`CERTIFICATE OF SERVICE ............................................................................... ..11
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Federal Cases
`
`Davidoff Extension S.A. v. Davidoff Comercio E.
`
`17 USPQ2d1:514(D.P.R. 1990) .......................................................................... ..9
`
`Dollar Systems. V. Avcar Leasing Systems
`890 F2d165 (gm Cir. 1989) .................................................................................. ..6
`
`Ellen Bur v. Brockway, Inc.
`763 F2d -1091 (9"‘ Cir. 1985) ............................................................................... ..e
`
`Fuddrucker’s Inc. v. Doc's B. R. Others Inc.
`826 F2d 837 [40 USPQ2d. 1026 (9" Cir. 1987) ....................................................... ..6
`
`Gaudiosi v. l\/le|lo_n
`269 F2d 873 <3” Cir. 1959) ..........................................................................
`
`.... ..7
`
`Keystone Driller Co. v. General Excavator Co.
`290 US 240 (1933) ............................................................................................ ..7
`
`Lawlerv. Gilliam
`569 F2d 1263 (4"‘ Cir. 1978) ............................................................................... ..8
`
`Monsanto Comgany v. Rohm & Haas Comgany
`456 F2d 592 ( 3' Cir. 1972) ................................................................................. ..7
`
`Morton Salt Co. v. G.S. Suggiger Co.
`314 US 488 (1942) ............................................................................................ ..5
`
`Precision Instrument Manufacturing Co.. et al v. Automotive Maintenance Machinegg Co.
`324 US 806 (1945) ............................................................................................ ..4
`
`Sears Roebuck & Co. v. Sears PLC
`
`744 F.. Supp. 1297 (D. Del. 1990) ........................................................................ ..6
`
`Shaver v. Heller & Merz Co.
`108 F. 821 (8‘“ Cir. 1901) ................................................................................... ..4
`
`'
`Sgarton Food Systems Inc. v. HFS Corg.
`2 USPQ2d 1063 (1987) ..................................................................................... ..9
`
`

`
`Upiohn Co. v. Universal Wholesale Corp.
`161 USPQ 558 (T.T.A.B. 1969) ............................................................................ ..9
`
`Wells Fargo & Co. V. Stagecoach Properties, Inc.
`685 F2d 302 (9‘ Cir. 1982) ................................................................................. ..7
`
`Statues
`
`California Business and Professions Code 14240 — 14242 ........................................... ..8
`
`Lanham Act ........................................................................................................ ..9
`
`Other
`
`McCarthy Trademarks and Unfair Competition Fourth Edition (2002) .............................. ..9
`
`Pomeroy, A Treatise on Equity Jurisprudence ............................................................ ..8
`
`Story’s Equity Jurisprudence (14"‘ Ed.) ..................................................................... ..7
`
`Witkin, Summary of California Law, 10"‘ Edition (2005) ................................................ ..8
`
`

`
`I.
`
`INTRODUCTION
`
`Applicant, Guy a.. Hoffmann, submits this brief in support of his application seeking
`
`to register the name SUPERFREAKS mark his own name. On February 22, 2002,, Mr.
`
`Hoffmann filed an application with this Board. On September 7, 2002 Opposer, Joe J.
`
`Alfaro,
`
`Jr. with filial knowledge that Applicant, Guy A. Hoffmann had filed this
`
`application, willfully, wrongfully, fraudulently unlawfully and with “unclean hands" obtained
`
`a Certificate of Registration from the Secretary of State of the State of California pursuant
`
`to California Business and Professions Code Section 14240, 14241 and 14242 for a
`
`service mark, the SUPERFREAKS. After obtaining said certificate from the Secretary of
`
`State of the State of California, Opposer, after the proposed Registration of Applicant was
`
`published in December 17, 2002, opposed Applicant’s registration.
`
`The answer of Applicant, Guy A. Hoffmann to the Amended Notice of Opposition of
`
`September 21, 2004, filed with this Board plead as an affirmative. defense “Unclean
`
`Hands" in Opposer, Joe J. Alfaro's, Jr. obtaining said SUPERFREAKS when this
`
`proceeding before the Board was then pending. Thus, the “Unclean Hands” Doctrine is
`
`clearly at issue.
`
`Opposer’s conduct in attempting to seek an unfair advantage against Applicant Vis a
`
`Vis the use of the name SUPERFREAKS by attempting to gain rights under California
`
`State Law and in disrespect and contempt to this Board is deceitful, dishonest, wrongful
`
`and indicates Opposer, Joe J. Alfaro, Jr. appear before this Board with “Unclean Hands”
`
`in opposing applicant's request to register SUPERFREAKS mark in his own name.
`
`

`
`Opposer’s opposition to Applicant’s proposed registration should be denied because
`
`of his “Unclean Hands” and this Board should register the SUPERFREAKS mark in the
`
`name of Applicant, Guy a. Hoffman.
`
`ll.
`
`DESCRIPTION OF THE RECORD
`
`The record of this proceeding consists of the file for the opposed application, Serial
`
`No. 78110344 and the pleadings of both parties.
`
`Applicant agrees with Opposer’s characterization of
`
`the evidence submitted by
`
`Opposer with one notable exception, Exhibit 11 of Opposer, Joe J. Alfaro’s testimony on
`
`February 24, 2005,
`
`the purported e—mail
`
`from Applicant.
`
`A careful
`
`reading of the
`
`transcript indicates objection to the receipt of exhibit 11 were duly made on grounds that
`
`no foundation was laid to show the e—mail came from Applicant the witness Opposer, Joe
`
`J. Alfaro, Jr. did not have personal knowledge of said e—mail,
`
`that Opposer,
`
`Joe J.
`
`A|faro’s testimony was based on hearsay.
`
`(J. Alfaro, Tr. at 18:17-25, 29: 1-25, 30: 1-25).
`
`Opposer, Joe J. Alfaro, Jr. did not have'David Wayne Hickory who purportedly had
`
`personal knowledge of the e—mail, exhibit 11 testify at a deposition. Accordingly, the
`
`testimony regarding exhibit 11 is not properly in evidence and must be disregarded and
`
`the arguments made by Opposer with regard to exhibit 11 like wise disregarded. See
`
`Opposer’s main brief, page 11, paragraph 3 alleging Applicant's sole motive for filing his
`
`registration application was to harass and vex the opposer.
`
`III.
`
`STATEMENT OF ISSUES
`
`Whether the “Unclean Hands” doctrine nullifies the opposition of Joe J. Alfaro, Jr. to
`
`the registration of Applicant, Guy A. Hoffmann of the Service Mark, SUPERFREAKS
`
`before this; Board where Opposer on September 7, 2002, with actual knowledge
`
`fth
`
`

`
`pending application py Applicant, Guy A. Hoffmann filed a registration of a service mark
`
`“THE SUPERFREAKS” with the Secretary of State, State of California pursuant
`
`to
`
`California Business and Professions Code 14240 — 14242 declaring “to his/her best
`
`knowledge and belief no other person, firm, corporation, union or association has the right
`
`to use said Nlark in this state, either in identical form or in such near resemblance thereto
`
`as might be calculated to deceive or confuse”.
`
`IV.
`
`STATEMENT OF FACTS
`
`In as much as Applicant did not submit any testimony through depositions and
`
`Opposer. Joe Alfaro, Jr.
`
`took depositions of himself, Elva Handler, Eric Handler and
`
`Danny Alfaro, Applicant does not challenge Opposer’s Statement of Facts except with the
`
`following items and conclusions drawn thereto:
`
`On page 7' of Opposer’s brief, Opposer alleges that Applicant sent an e-mail to a Mr..
`
`Hickum, exhibit 11. For reasons previously stated, this evidence was clearly hearsay.
`
`properly objected to at the deposition of Opposer and should be disregarded by the Board
`
`The argument of Opposer that (1) applicant did not consider the SUPERFREAKS band
`
`(or name) to be his, and (2) he did not actually intend to use the SUPERFREAKS name in
`
`the future should likewise be disregarded.
`
`At the deposition of Opposer, Joe J. Alfaro, Jr., Mr. Alfaro testified that:
`
`(1) He claimed to have the right to the name of SUPERFREAKS since
`October 15, 1999 (J. Alfaro, Tr. at 55:25-56:1-2).
`
`(2) He had his sister Elva Handler speak to an attorney, Christopher J.
`Connolly on September 12, 2002, who sent a “Cease and Desist” letter
`to Applicant demanding that Applicant cease and desist the use of
`"THE SUPERFREAKS" and threatening Applicant with perjury for filing
`the application with this Board, (See Exhibit #6 of Elva Handler's
`cieposition. (J. Alfaro, Tr. at 57:12-27, 5823-6.)
`‘
`
`

`
`(3) He knew of the time Attorney Connolly was contacted by his sister,
`Elva Handler that Applicant, Guy A. Hoffmann had filed his application
`before this Board. (J. Alfaro, Tr. at 5823-6.)
`
`(4) He filed on September 7, 2002, a registration of a service mark, THE
`SUPERFREAKS with the Secretary of State, State of California
`actually knowing that pending before this board was an application for
`the mark SUPERFREAKS by Guy A. Hoffmann (J. Alfaro, Tr. at 58:12-
`’ 19.)
`
`in his application to the Secretary of State, he
`(5) He admitted that
`declared “that he has read the above and foregoing application and
`knows the contents thereof and that the facts are true and correct, and
`that the three specimens of the mark submitted are true and correct.
`Ajfi
`to @ _t_)_e_s_t knowledge a_@ belief, Q other person,
`fir_m,
`corporation, union, c_)_r association h_a§ a Ligm t_q cease sfl m_a1_r_l<_ i_r_1 t_h_i§
`gage, either i_r_1 identical f<)_rr_r1_ Q; in such La; resemblance thereof Q
`might _b_e calculated to deceive g_r confuse. (J. Alfaro, Tr. p.37:14—37),
`where Exhibit #5,
`the registration of THE SUPERFREAKS to the
`Secretaryvof State, State of California was received in evidence by
`stipulation of the parties.
`
`(6) He offered no explanation for waiting approximately three years from
`October 15, 1999, before filing a request for a Service Mark for the
`SUPERFREAKS from the Secretary of State, State of California, after
`Guy A. Hoffmann filed his application before this Board other than he
`had no idea about trademarks and service marks and was completely
`ignorant in this area. (J. Alfaro, Jr. at 59:25, 60:1-13.)
`
`V.
`
`ARGUMENT
`
`1.
`
`jgfilean Hands” is A Recognized Eguitable Doctrine In Trademark Law.
`
`The principle that “he who comes into equity must do so with "Clean Hands" does
`
`not repel all sinners from courts of equity...the iniquity which will repel him must have an
`
`immediate and necessity relation to the equity for which he sues. Shaver v Heller & Merz
`
`Q, 108 F. 8.21, 834 (8"‘ cir. 1901).
`
`In fizision Instrument Manufacturing Co. et al v. Automotive Maintenance
`
`Machinery Co, 324 U.S. 806 (1945), a -patent infringement and breach of contract suit,
`
`

`
`Justice Murphy discussed “Clean Hands" and found plaintiffs conduct to be “Unclean
`
`Hands” justifying dismissal.
`
`Justice Murphy stated:
`
`The Guiding Doctrine in this case is the equitable maxim that “He who comes into
`
`equity must come with clean hands”. This maxim is far more than a mere banality.
`
`It is a
`
`self-imposed ordinance that closes the doors of a court of equity to one tainted with
`
`inequitableness or bad faith relative to the matter in which he seeks relief, however,
`
`improper" may have been the behavior of the defendant. That Doctrine is rooted in the
`
`historical concept of Court of Equity as a vehicle for affirmatively enforcing the
`
`requirements of conscience and good faith. This presumption poses a refusal on its part
`
`to be “The Abettor of iniquity/’...Thus while "Equity Does Not Demand that its Suitors Shall
`
`Have Led Blameless Lives,” as to other matters, it does require that they shall have acted
`
`fairly and without fraud or deceit as to the controversy in issue...324 U.S. 814-815.
`
`This maxim necessarily gives wide range to the Equity Court’s use of discretion in
`
`refusing to aid the unclean litigant.
`
`It
`
`is “Not bound by formula or restrained by any
`
`limitation that tends to trammel the free and just exercise or discretion. Accordingly, one’s
`
`misconduct need not necessarily have been of such a nature as to be punishable as a
`
`crime or as to justify legal proceedings of any character. Any willful act concerning the
`
`cause of action which rightfully can be said to transgress equitable standards of conduct
`
`is sufficient cause for the invocation of the maxim by the Chancellor. 324 U.S. 815. See
`
`Morton Salt Co. v. G. S. Suppiger Co. 314U.S. 488 (1942) finding “Unclean Hands” in a
`
`patent infringement action. When presented with a claim of “Unclean Hands”, the court is
`
`

`
`primarily concerned with protecting its own integrity, and in not abetting the inequitable
`
`conduct of a plaintiff with respect to the matter in litigation.
`
`Sears Roebuck & Co. v. Sears pic 744 F Supp. 1297, 1309 (D.Del. 1990) (a
`
`trademark and trade name infringement suit.)
`
`To prevail on an "Unc|ean Hands” defense, the defendant must demonstrate that the
`
`plaintiff's conduct is inequitable and that the conduct relates to the subject matter of its
`
`claims. Equity requires that those seeking its protection shall have acted fairly and in
`
`without fraud or deceit as to the controversy in issue. Fuddrucker’s Inc. v. Doc's B. R.
`
`Others Inc: 826 F2d 837 [4 USPQ2d ‘l026].(9"‘ Cir.1987).
`
`In applying the doctrine of unclean hands, what is material is not that the plaintiff's
`
`hands are dirty, but that he dirtied them in acquiring the right he now asserts, or that the
`
`manner of dirtying renders inequitable the assertion of the such rights against
`
`the
`
`defendants. Equity requires that those seeking its protection shall have acted fairly and
`
`without fraud or deceit as to the controversy in issue. Ellenburg v. Brockway, Inc. 763
`
`F2d 1091 (9‘“ Cir. 1985).
`
`The application of the unclean hands doctrine raises primarily a question of fact.
`
`it is
`
`fundamental to the operation at the doctrine that the alleged misconduct by the plaintiff
`
`relate directly to the transaction concerning which the complaint is made. Dollar Systems
`
`v. Avcar LE9 Systems 890 F2d. 165 (99 Cir. 1989).
`
`Courts of Equity do not make the quality of Suitors the test. They apply the maxim
`
`requiring clean hands only where some unconscionable act of one coming for relief has
`
`immediate and necessary relation to the equity that he seeks in respect of the matter in
`
`litigation. They do not close their doors because of plaintiff’s misconduct whatever its
`
`

`
`character, that has no relation to anything involved in the suit, but only for such violations
`
`of conscience as in some measure affect the equitable relations between the parties in
`
`respect of something brought before the court for adjudication. Keystone Driller Co. v.
`
`General l_E;<_c_avator Co. 290 U.S. 240 (1933) (Patent infringements suits where the U.S.
`
`Supreme Court found "Unclean Hands” on part of the Plaintiff.)
`
`Badl intent is the essence of the defense of “Unclean Hands." Wells Fargo &
`
`Co. v. Stagecoach Properties,
`
`Inc. 685 F2d 302 (9"‘ Cir. 1982) (an appeal from the
`
`Trademark Trial and Appeal Board by an unsuccessful applicant for registration of a
`
`symbol.)
`
`Courts are concerned primarily with their own integrity in the application of the clean
`
`hands maxim and even though not raised by the parties the court will of its own motion
`
`apply it. The clean hands maxim gives wide sweep to the equity court's exercise of
`
`discretion. Qgaudiosi v. Mellon, 269 F2d 873 (3'‘‘ Cir. 1959.)
`
`Patent infringement suit resulted in declaration of patent invalidity where unclean
`
`hands doctrine applied to misrepresentation in connection with application for the patent.
`
`Monsanto Company v. Rohm & Haas Co, 456 F2d 592 (3'‘’ Cir. 1972) citing Sto[y’s Eguity
`
`Jurisprudence (14"‘ Ed.) vol 1, §99 in footnote 11.
`
`“Misconduct which will bar relief in a court of equity need not necessarily be of such
`
`a nature as to be punishable as a crime or to constitute the basis of a legal action. Under
`
`this maxim, any willful act in regard to the matter to the matter in litigation, which could be
`
`condemned and pronounced wrongful by honest and fair—minded men, will be sufficient to
`
`make the hands of the applicant unclean.”
`
`

`
`The defense of unclean hands requires the defendant to show that he himself has
`
`been injured by the plaintiff’s conduct. Lawler v. Gilliam 569 F2d 1263 (4"‘ Cir. 1978)
`
`citing i_Pome[y, a Treatise on Eguity Jurisprudence as 399 in footnote 7
`
`Exactly what
`
`is the “Unc|ean Hands” of Opposer claimed by Applicant? The
`
`Fraudulem_D_eceitfu| Act By Opposer To Attempt To Gain An Unfair Advantage of filing a
`
`registration of the Service Mark, THE SUPERFREAKS with the Secretary of State of
`
`California while this action involving the same service mark was pending before this Board
`
`which Opposer actually knew of. This unethical and dishonest act by Opposer injured the
`
`Applicant and showed contempt and disrespect to this Board.
`
`2. Under California Law, Opposer’s Registration of the Service Mark “THE
`
`SUPERFREAKS” pursuant to Business and Professions Code 14240, 14241 and
`
`14242 gave him additional protections under state law for the Service Mark
`
`SUPERFREAKS causing injugy to the applicant.
`
`Witkin, Summam of California Law, 10"‘ Edition (2005) in Personal Property states:
`
`A Service Mark may be registered in the same manner as a trademark. (§81 p102).
`
`Trademarks are protected in several ways:
`
`(1)
`
`The registration procedure to evidence the mark (prima face evidence of
`
`ownership of the mark (§85 p107).
`
`(2)
`
`(3)
`
`An action for damages for infringement (B.&P.C. 14340(a)).
`
`An injunction against infringement (§82 p102-103).
`
`Thus Opposer’s action diminished App|icant’s rights in the State of California
`
`with regard to the Service Mark SUPERFREAKS since Opposer could utilize these
`
`protections against Applicant.
`
`

`
`3.
`
`Relationship Between Federal Law and State Trademark Law — State Law
`
`§_a_nnot Limit Federal Rights
`
`Professor McCarthy, Trademarks and Unfair Competition, Fourth Edition (2002)
`
`States:
`
`State Trademark Law and Registrations cannot override rights provided by Federal
`
`Law for Federal Registrations. That is, when state rules conflict with federal law, the
`
`Federal Trademark preempts state rules. Page 22-6.
`
`The Lanham Act effects a limited preemption of state law, resolving the conflict in
`
`favor of the Federal Registrant’s Rights. Page 22-7
`
`The Lanham Act does not preempt all state law pertaining to trademarks. §Lart_an
`
`Food Syst_erE; Inc. v. HFS Corp. 2 USPQ2d 1063 (1987).
`
`State registration without more is incompetent in opposition proceeding to establish
`
`actual use of a mark. Upjohn Co. v. Universal Wholesale Corp. 161 USPQ 558 (T.T.A.B.
`
`1969)
`
`The policy to provide protection of federally registered marks used in Interstate
`
`Commerce, may not be defeated or obstructed by state law and if state law conflicts with
`
`the policy it ‘Must Yield to the Superior Federal Law’ Davidoff Extension S.A. v. Davidoff
`
`Comercio_lE._|r1cl_us_tLal 17 USPQ2d 1514 (D.P.R. 1990.
`
`Regardless of the preemption by the Lantham Act of State Law, Opposer’s conduct
`
`was an attempt obtain an unfair advantage against the Applicant while this proceeding
`
`was pending.
`
`

`
`VI.
`
`CONCLUSION
`
`The “Unc|ean Hands” doctrine has been clearly shown here. Opposer offered little or
`
`no justification for his ethically questionable conduct herein at his sworn deposition. He
`
`attempted to gain an unfair advantage against Applicant with regard to the Service Mark
`
`SUPERFREAKS. Rather than merely filing an opposition to the registration before this
`
`board, Opposer acted in a deceitful, dishonest and fraudulent manner. This board must
`
`protect its own integrity as well as protecting the Applicant from Opposer’s misconduct.
`
`Opposer’s opposition should be dismissed and Applicant be permitted to register
`
`SUPERFREAKS Mark in his own name.
`
`Opposer’s request that this Board sanction Applicant is ludicrous indeed. Opposer’s
`
`conduct of “Unc|ean Hands” is an act of dishonesty.
`
`lf sanctions are appropriate,
`
`Opposer is the one to be sanctioned.
`
`Dated: January , 2006
`
`Respectfully submitted:
`
`
`
`Leonard H. Mandel, Attorney for Applicant
`3034 N. 1515‘ Lane
`
`
`
`Goodyear, Arizona 85338
`Telephone: (623) 935-3519
`
`10
`
`

`
`CERTIFICATION OF SERVICE
`
`I hereby certify that, on January // , 2006, a true and correct copy of the foregoing
`
`APPLICANT’-S MAIN BRIEF was served on Opposer’s counsel, via First Class Mail,
`
`postage prepaid, at the following address:
`
`Richard A. Clegg, Esq.
`Seltzer Caplan McMahon Vitek
`A Law Corporation
`750 B. Street, Suite 2100
`San Diego, California 92101
`
`
`
`Leonard H. Mandel
`
`11