2001 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

2-9-2001

Marshak v. Treadwell

Precedential or Non-Precedential:

Docket 99-5614

Follow this and additional works at: http://digitalcommons.law.villanova.edu/thirdcircuit_2001

This decision is brought to you for free and open access by the Opinions of the United States Court of Appeals for the Third Circuit at Villanova

University School of Law Digital Repository. It has been accepted for inclusion in 2001 Decisions by an authorized administrator of Villanova

University School of Law Digital Repository. For more information, please contact Benjamin.Carlson@law.villanova.edu.

Recommended Citation

"Marshak v. Treadwell" (2001). 2001 Decisions. Paper 25.

http://digitalcommons.law.villanova.edu/thirdcircuit_2001/25
Filed February 9, 2001 

UNITED STATES COURT OF APPEALS 

FOR THE THIRD CIRCUIT 

No: 99-5614 

LARRY MARSHAK, 

 Appellant 

v. 

FAYE TREADWELL; TREADWELL DRIFTERS, INC; THE 

DRIFTERS, INC.; BOWEN AGENCY LTD/ADMIRAL 

TALENT 

On Appeal from the United States District Court 

for the District of New Jersey 

Dist. Ct. No. 95-cv-03794 

District Court Judge: The Honorable Nicholas H. Politan 

Argued: January 13, 2000 

Before: ALITO and BARRY, Cir cuit Judges, 

and ALDISERT, Senior Circuit Judge 

(Opinion Filed: February 9, 2001) 
 Stephen B. Judlowe, Esq. (argued) 

 Lisa M. Ferri, Esq. 

 Eve Kunen, Esq. 

 Vincent A. Sireci, Esq. 

 Hopgood, Calimafde, Kalil & 

 Judlowe, LLP 

 60 East 42nd Street 

 New York, New York 10165 

 Kenneth D. McPherson, Jr., Esq. 

 Mark J. Ingber, Esq. 

 Waters, McPherson, McNeill 

 300 Lighting Way 

 P.O. Box 1560, 7th Floor 

 Secaucus, New Jersey 07096 

 Attorneys for Appellant 

 James P. Flynn, Esq. (argued) 

 Epstein Becker & Green, P.C. 

 Gateway Two 

 12th Floor 

 Newark, New Jersey 07102 

 Joshua Levine 

 Law Office of Ira Levine 

 0-99 Plaza Road 

 P.O. Box 2777 

 Fair Lawn, New Jersey 07410 

 Attorneys for Appellees 

OPINION OF THE COURT 

ALITO, Circuit Judge: 

This is an appeal from orders enter ed by the District 

Court after a trial concerning the right to use the mark 

"The Drifters" for a singing group. Larry Marshak, who 

acquired a federally registered service mark for "The 

Drifters" name in 1978, brought this action against Faye 

Treadwell and others, claiming that they were infringing his 

mark. The defendants contended that Marshak's federally 

registered mark had been procur ed by fraud and that 

Marshak was infringing senior common-law rights. After a 

 2 
trial and post-trial motions, the District Court or dered that 

Marshak's federally registered mark be canceled, 

permanently enjoined Marshak from using the mark in

commerce, and required an accounting of all profits

received by Marshak since he began using the mark. 

Marshak then took this appeal. We affir m in part and 

dismiss in part for lack of appellate jurisdiction.

I. 

The Drifters were one of the classic popular singing 

groups of the 1950s and early 1960s. Among their wellknown hits were "Under the Boardwalk," "On Broadway," 

and "Save the Last Dance for Me." 

The Drifters first appeared in 1953 and came under the 

management of George Treadwell the following year. From 

then until his death in 1967, George T readwell managed 

the group through The Drifters, Inc., a New York 

corporation that he formed. George T readwell hired and 

paid salaries to the members of the group, who changed 

continually over the years. He also scheduled the gr oup's 

performances, negotiated their r ecording contracts, and 

chose their music and arrangements. 

In 1959, George Treadwell r eleased all of the thencurrent members of the group and signed the former 

members of a group called the Five Crowns to perform as 

The Drifters. The new members included Charlie Thomas, 

Elsbeary Hobbs, and Dock Green. Like all other members of 

the Drifters, Thomas, Hobbs, and Green signed contracts 

that provided in pertinent part as follows: 

 The Artist agrees that the name THE DRIFTERS

 belongs exclusively to the employer and that he will not 

 at any time use the name of The Drifters or any name 

 similar thereto or any name incorporating The Drifters. 

 In the event the employee leaves the employ of The 

 Drifters he will not in any way advertise or attempt to 

 publicize the fact that he had been a member of a 

 singing group known as The Drifters and will not 

 associate his name in any manner with The Drifters; 

 and he further acknowledges that the name, The 

 Drifters, is a valuable property and any violation of this 

 3 
 paragraph could not be adequately compensated by 

 money damages and he therefore agr ees that the 

 employer shall be entitled to an injunction in any 

 Court of competent jurisdiction to enjoin any violation 

 or threatened violation of the contract by the Artist. 

App. at 1264. 

When George Treadwell died, his wife, Faye Treadwell, 

whom he married in 1955, became the sole shar eholder of 

The Drifters, Inc., and she took over the management of the 

group. She later formed Treadwell's Drifters, Inc., a New 

Jersey corporation, and all of the assets and contractual 

rights of The Drifters, Inc. were transferr ed to the new 

corporation. 

By the time of George Treadwell's death, Hobbs and 

Green had already left the group. Charlie Thomas left 

shortly thereafter, but other members continued to perform 

under Treadwell's direction. By the late 1960s, however, the 

popularity of "The Drifters" and similar gr oups had waned 

in this country, and Treadwell focused her efforts on 

Europe, where the group remained popular. After 1970, the 

Drifters made few live appearances in this country, but the 

group's classic recordings continued to be played on the 

radio, and Atlantic Records continued to pay r oyalties to 

The Drifters, Inc. or Treadwell's Drifters, Inc. See App. at 

720. 

Larry Marshak's involvement with The Drifters began in 

1969. CBS radio had recently changed fr om a 

contemporary to an "oldies" format. T o generate 

enthusiasm for its format change, CBS appr oached Rock 

Magazine and proposed a partnership to r eunite old singing 

groups to perform live concerts. Marshak, who was an 

editor at Rock Magazine, was given the task of reuniting 

some of these groups for the first revival concert at the New 

York Academy of Music. Among the groups that Marshak 

attempted to reunite was "The Drifters." Marshak contacted 

several former members of the group, including Thomas, 

Hobbs, and Green, all of whom agreed to perform for

Marshak. The revival concerts were a success, and the 

reunited members agreed to continue per forming under 

"The Drifters" name. In 1972, Thomas, Hobbs, and Green 

signed an exclusive management contract with Marshak. 

 4 
Soon after the revival group began per forming, Marshak 

received a letter from Treadwell's attorney asserting that 

Marshak was infringing her right to use the gr oup's name. 

App. at 244. The letter pointed out that the for mer 

members of the group had signed contracts with The 

Drifters, Inc. in which they had given up any right to use 

the group name. Id. Despite this war ning, Marshak 

persisted in his efforts to promote and market his group. 

In 1971, Treadwell brought an action against Marshak in 

state court in New York. Treadwell's request for a 

preliminary injunction to prevent Marshak and his group 

from using "The Drifters" name was denied, and the suit 

was eventually dismissed in 1973 because Tr eadwell

"willfully defaulted and failed to answer interr ogatories 

propounded by defendants." App. at 1245. At the trial in 

the current case, Treadwell testified that she and her group 

stopped performing in the United States in part because 

she did not have the financial resour ces to defend her mark 

against Marshak through extended litigation. See App. at 

598. 

Marshak, in contrast, benefitted from a r enewed interest 

in "The Drifters" in the United States that had resulted 

from a wave of nostalgia for the early days of rock and roll. 

Throughout the 1970s, Marshak's group made recordings, 

appeared on television, and gave live per formances. 

Marshak began to litigate against other groups that used 

the name "The Drifters" or a variant. In 1976, Marshak 

learned that "The Platters," another r evived 1950s singing 

group, had been successful in preventing others from using 

their name by registering their service mark, and Marshak 

urged Thomas, Hobbs, and Green to do the same. Marshak 

convinced the trio that if they agreed to assign their rights 

to the name to him, he would continue as their manager 

and prevent others groups from using"The Drifters" name. 

In December 1976, Thomas, Hobbs, and Green, acting as a 

partnership, filed an application with the United States 

Patent & Trademark Office (PTO) to r egister "The Drifters" 

as a service mark for a singing group, and they assigned 

their rights to Marshak. See App. at 1267. In their

registration application, Thomas, Hobbs, and Gr een each 

attested that 

 5 
 no other person, firm, corporation, or association, to 

 the best of his knowledge and belief, has the right to 

 use such mark in commerce either in the identical 

 form thereof or in such near resemblance thereto as to 

 be likely, when applied to the goods of such other 

 person, to cause confusion, or to cause mistake, or 

 deceive. 

See 15 U.S.C. S 1051 (1976). 

Marshak filed the present action in 1995, following the 

publication of Faye Treadwell's book, Save the Last Dance 

for Me, in which Treadwell claimed to be the sole owner of 

the Drifters mark. See App. at 875. Named as defendants 

were Faye Treadwell, The Drifters, Inc., Treadwell's Drifters, 

Inc., and a booking company. Marshak alleged that the 

defendants had infringed his mark and had thr eatened to 

continue to do so by offering Tr eadwell's book for sale and 

by engaging a group to perform as The Drifters. He asserted 

a claim under Section 32 of the Lanham Act, 15 U.S.C. 

S 1114(a), for infringement of his federally r egistered mark, 

as well as a claim under Section 43(a), 15 U.S.C.S 1125(a), 

and under the statutes of New York for violation of his 

common-law rights. He sought declaratory and injunctive 

relief and treble and punitive damages. 

In their answer, the defendants claimed that Treadwell's 

Drifters had a superior common-law right to the mark, and 

they asserted as an affirmative defense that Marshak's 

federal registration had been procur ed by fraud. As a 

counterclaim, Treadwell's Drifters r epeated the allegation of 

fraudulent procurement. In addition, alleging that Marshak 

had infringed and continued to infringe its common-law 

right to the mark, Treadwell's Drifters asserted a claim 

under Section 43(a) of the Lanham Act and a state-law 

claim for unfair competition. The counterclaim sought, 

among other things, cancellation of Marshak's mark,

declaratory and injunctive relief, and an accounting of 

Marshak's profits. 

The case was tried before a jury, which found that 

Marshak or his assignors had perpetrated a fraud on the 

PTO in 1976. See App. at 1562. In accor dance with this 

finding, the District Court ordered the PTO to cancel 

 6 
Marshak's federal registration. The jury also found, 

however, that Treadwell and her corporation had 

abandoned their common-law right to "The Drifters" mark 

by 1976. Moreover, the jury found that Marshak had 

established protectable common-law rights in the name by 

that time. 

On cross post-trial motions, the District Court upheld the 

jury's verdict regarding Marshak's fraud on the PTO, but 

the Court vacated the jury verdict insofar as it found that 

Treadwell had abandoned her rights in 1976. Instead, the 

Court held that the continuous stream of r oyalty revenues 

collected by Treadwell since the 1960s was sufficient to 

defeat Marshak's claim of abandonment. See Marshak v. 

Treadwell, 58 F. Supp. 2d 551 (D.N.J. 1999). After 

additional briefing regarding appr opriate remedies, the 

Court molded the judgment to reflect that Marshak had 

infringed Treadwell's Drifters' common law rights. The 

Court then permanently enjoined Marshak fr om further use 

of the "The Drifters" mark in commerce and ordered an 

accounting of Marshak's profits for the entir e period of his 

infringement -- viz., from 1970 to 1998. Marshak appealed. 

II. 

We begin by examining our jurisdiction to r eview the 

various orders challenged on appeal. Under 28 U.S.C. 

S 1292(a)(1), we plainly have jurisdiction to review the 

permanent injunction prohibiting Marshak from using The 

Drifters mark. Under Santana Products, Inc. v. Compression 

Polymers, Inc., 8 F.3d 152 (3d Cir . 1993), the order 

requiring cancellation of Marshak's federally r egistered 

mark, standing alone, is not appealable under S 1292(a)(1), 

but Santana Products did not r each the question whether 

an order of cancellation may be reviewed pursuant to 

S 1292(a)(1) when a district court also issues an injunction 

against the use of the mark, as occurred her e. 8 F.3d at 

155 & n.3. 

When we have jurisdiction to review an or der relating to 

an injunction under S 1292(a)(1), our jurisdiction extends to 

matters inextricably linked to the appealable or der. See 

S.E.C. v. Black, 163 F.3d 188, 194 (3d Cir. 1998). In this 

 7 
case, the ground on which cancellation of the federally 

registered mark was ordered-- fraud on the PTO -- was 

also asserted by Treadwell as a defense to Marshak's claim 

that she was infringing his incontestable mark. All of the 

arguments raised by Marshak on appeal in connection with 

the cancellation order apply as well to that defense. Under 

these circumstances, the link between the or der of

cancellation and the injunctive order is close enough to 

permit review of the order of cancellation at this time. See 

Wrist-Rocket Mfg. Co. v. Saunders Archery Co., 516 F.2d 

846, 849 (8th Cir. 1975) (court has jurisdiction under 28 

U.S.C. S 1292(a)(1), to examine the merits of order granting 

a permanent injunction and ordering the cancellation of 

registration). 

By contrast, we lack jurisdiction to review the portion of 

the District Court order requiring an accounting of

Marshak's profits. Marshak contends that we have 

jurisdiction under the final order rule of 28 U.S.C. S 1291, 

but we do not agree. A final order is one that "leaves 

nothing for the court to do but execute the judgment." 

Catlin v. United States, 324 U.S. 229, 233 (1945). A finding 

of liability that does not also specify damages is not a final 

decision. See, e.g., Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 

737, 744 (1976); Sun Shipbldg. & Dry Dock Co. v. Benefits 

Rev. Bd., 535 F.2d 758, 760 (3d Cir . 1976). Although the 

practical finality rule, also known as the For gay-Conrad 

doctrine, permits appellate review of an order that is not 

technically final but resolves all issues that are not purely 

ministerial, see Forgay v. Conrad, 47 U.S. (6 How.) 201, 

204-05 (1848); Cromaglass Corp. v. Fer m, 500 F.2d 601, 

605 (3d Cir. 1974) (en banc), the accounting at issue in this 

case does not come within that rule. 

Our decision in Apex Fountain Sales, Inc. v. Kleinfeld, 27 

F.3d 931 (3d Cir. 1994), a trademark infringement case, is 

apposite. In Apex Fountain Sales, the District Court entered 

a contempt order that, among other things, or dered an 

accounting of the net profits realized from sale of the 

infringing items. We held that the or der was not reviewable 

under the Forgay Conrad doctrine because the 

determination of net profits would not be easily reached. 

See id. at 936. 

 8 
In Goodman v. Lee, 988 F.2d 619 (5th Cir. 1993), the 

Fifth Circuit addressed circumstances similar to those with 

which we are confronted. In that case, Shirley Goodman 

sued the heirs of her former recor ding partner, Audrey Lee, 

for copyright ownership rights to their 1956 hit song, "Let 

the Good Times Roll." The jury found in favor of Goodman, 

and the District Court ordered the r egistrar of copyrights to 

correct the records of the copyright office to reflect 

Goodman's ownership. Furthermore, the Court ordered

Lee's heirs to account to Goodman for one-half of all 

royalties paid over the 29-year period between the time of 

the song's release and the date of the judgment. The 

District Court did not reduce the award to a certain sum. 

On appeal, the Fifth Circuit acknowledged a line of cases 

in which appeal had been permitted prior to afinal 

accounting because the accounting was viewed as"purely 

`ministerial' and/or `mechanical.' " Id. at 626 (citing Winston 

Network v. Indiana Harbor Belt R. Co., 944 F .2d 1351 (7th 

Cir. 1991); Parks v. Pavkovic, 753 F .2d 1397 (7th Cir. 

1985)). However, the Goodman Court concluded that the 

accounting in the case before it would not be purely 

ministerial: 

 The award contemplates identifying royalties paid on 

 one particular song to songwriter now dead and 

 thereafter to his heirs over an almost thirty (30) year 

 period. . . . Clearly, the amount to be divided is not 

 known, was not identified in the extensive district 

 court experience and must be reconstructed r equiring 

 factual determinations by the district court. 

Id. at 627. Therefore, the Court held that the judgment was 

not within the Forgay-Conrad rule and was not an 

appealable final order. Id. 

A similar result was reached in Zwack v. Kraus Bros & 

Co., 237 F.2d 255 (2d Cir. 1956). There, a Hungarian firm 

sought injunctive relief against its United States distributor 

to enforce its trademark, as well as damages and an

accounting of profits. The District Court held the 

distributor liable but referred the matter to a special master 

for an accounting of profits. The Second Cir cuit held that 

the reference to the special master to determine damages 

rendered the entire order interlocutory. See id. at 261. 

 9 
In this case, as in the cases noted above, the accounting 

cannot reasonably be characterized as mer ely ministerial. 

The District Court ordered Marshak "to account to 

Treadwell for the profits he ear ned in each year, beginning 

with the first act of infringement in 1970 and ending with 

the first day of trial testimony in this case." App. at 87. As 

in Apex Fountain Sales, the parties her e have a long history 

of contentious litigation, and there is a substantial 

likelihood that "one or both parties will dispute the ultimate 

amount of damages awarded, leading to a second appeal. 

This would be contrary to the federal judiciary's general 

policy against piecemeal litigation." Apex Fountain Sales, 27 

F.3d at 935. 

We are aware that the District Court, in denying 

Treadwell's request that a special master be appointed, 

expressed the opinion that "the accounting will not be 

complicated or exceptional," App. at 1687 n.2, but that 

statement was made in a notably differ ent context. An 

accounting may seem simple enough to persuade a District 

Court that the appointment of a special master is not 

necessary and still be far from ministerial in the sense 

relevant here. We must ther efore dismiss Marshak's appeal 

insofar as it contests the portion of the district court order 

requiring an accounting.1 

III. 

Turning to the merits of the issues over which we have 

jurisdiction, we first consider Marshak's ar guments relating 

to Treadwell's fraudulent procur ement defense and 

counterclaim. 

_________________________________________________________________ 

1. We are thus unable to expr ess our view as to whether any accounting 

should have been limited to the period of the appr opriate statute of 

limitations. If on remand the District Court goes forward with the 

accounting, consideration of the propriety of that remedy will have to 

await the completion of the accounting and the entry of a final order. We 

recognize that this procedure may r esult in a considerable waste of time 

and resources in connection with the accounting, but the scope of our 

appellate jurisdiction leaves no alternative. 

 10 
A. 

Marshak argues that the fraudulent procur ement defense 

and counterclaim are time-barred. Relying chiefly on our 

decision in Beauty Time, Inc. v. VU Skin Sys., Inc., 118 F.3d 

140, 143 (3d Cir. 1997), Marshak maintains that the

Lanham Act does not specify the time within which a claim 

of fraudulent procurement may be asserted, that it is 

therefore appropriate to borr ow the most analogous state 

statute of limitations, and that under the most analogous 

state statute -- either the New York or the New Jersey sixyear statute of limitations for actions sounding in fraud -- 

Treadwell's claim is barred. W e reject this argument based 

on the plain language of the Lanham Act. 

Treadwell's counterclaim was br ought under Section 14 

of the Lanham Act, 15 U.S.C. S 1064, which specifies in 

detail the time limits for petitioning to cancel a mark on 

various grounds. This provision states in relevant part: 

 A petition to cancel a registration of a mark, stating the 

 grounds relied upon, may, upon payment of the 

 prescribed fee, be filed as follows by any person who 

 believes that he is or will be damaged . . . by the 

 registration of a mark on the principal r egister 

 established by this chapter . . . 

 * * * 

 (1) Within five years from the date of the registration 

 of the mark under this chapter. 

 (2) Within five years from the date of publication 

 under section 1062(c) of this title of a mark 

 registered under the Act of March 3, 1881, or the Act 

 of February 20, 1905. 

 (3) At any time if the register ed mark becomes the 

 generic name for the goods or services, or a portion 

 thereof, for which it is registered, or has been 

 abandoned, or its registration was obtained 

 fraudulently or contrary to the provisions of section 

 1054 of this title or of subsection (a), (b), or (c) of 

 section 1052 of this title for a registration under this 

 chapter. 

 11 
Lanham Act S 14, 15 U.S.C. S 1064 (emphasis added).

The first step in interpreting a statute is to determine 

"whether the language at issue has a plain and 

unambiguous meaning with regard to the particular 

dispute in the case." Robinson v. Shell Oil Co., 519 U.S. 

337, 340 (1997). See also, e.g., Michael C. v. Radnor 

Township Sch. Dist., 202 F.3d 642, 648-49 (3d Cir. 2000); 

Deane v. Pocono Med. Ctr., 142 F .3d 138, 146 (3d Cir. 1998) 

(en banc). "The plainness or ambiguity of statutory

language is determined by reference to the language itself, 

the specific context in which that language is used, and the 

broader context of the statute as a whole." Robinson, 519 

U.S. at 341. Where we find that the statutory language has 

a clear meaning, we need not look further. Id. at 340. 

Here, the meaning of the phrase "at any time" in Section 

14 (3) is clear even if that particular subsection is viewed in 

isolation. Moreover, the contrast between the five-year time 

limits imposed in subsections (1) and (2) and the use of the 

phrase "at any time" in subsection (3) r einforces the point 

that the language of subsection (3) means what it says: a 

petition falling within subsection (3), including a petition 

seeking cancellation based on fraud, is not subject to any 

time limit but may be filed "at any time." W e note that the 

Supreme Court has recognized that the pr edecessor of the 

current Section 14(3) "allows cancellation of an 

incontestable mark at any time . . . if it was obtained 

fraudulently." Park `n Fly, Inc. v. Dollar Park and Fly, Inc., 

469 U.S. 189, 195 (1985) (emphasis added).2 

We recognize that Section 14(3) itself applies to a petition 

filed with the Patent and Trademark Office, rather than a 

claim asserted in court, but Section 37 of the Lanham Act, 

15 U.S.C. S 1119,3 gives federal courts concurrent authority 

_________________________________________________________________ 

2. We also note that the PTO has consistently held that the phrase "at 

any time" precludes a laches defense to a cancellation action premised 

on fraudulent procurement. See Harjo v. Pro Football, Inc., 30 U.S.P.Q.2d 

1828, 1831 (T.T.A.B. 1994); TBC Corp. v. Grand Prix Ltd., 12 U.S.P.Q.2d 

1311, 1313 (T.T.A.B. 1989); Bausch & Lomb, Inc. v. Leupold & Stevens, 

Inc., 1 U.S.P.Q.2d 1497, 1499-1500 (T .T.A.B. 1986). 

3. Section 37 provides: 

 12 
to cancel registered marks when the validity of the mark is 

called into question in a judicial proceeding. See Ditri v. 

Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 

873 (3d Cir. 1992); Simmonds Aerocessories, Ltd. v. Elastic 

Stop Nut Corp., 257 F.2d 485, 491 (3d Cir . 1958). As we 

explained in Ditri, "[a]lthough a petition to the Patent and 

Trademarks Office is the primary means of securing a 

cancellation, the district court has concurr ent power to 

order cancellation as well for the obvious r eason that an 

entire controversy may thus be expediently resolved in one 

forum." Id. at 873. We see no r eason why Congress would 

have wanted to allow a petition for cancellation under 

Section 14(3) to be filed with the PTO "at any time" but to 

subject an identical request, when entertained by a District 

Court pursuant to its concurrent power under Section 37, 

to a state statute of limitations. Such a regime would 

prevent a case like the one before us fr om being 

"expediently resolved in one forum." Id. 

The language of the Lanham Act also makes it clear that 

there is no time limit on the assertion of fraudulent 

procurement as a defense to an infringement claim brought 

by the holder of a mark that has become incontestable. 

Under Section 15 of the Lanham Act, 15 U.S.C. S 1065, an 

otherwise incontestable mark may be attacked "on a 

ground for which application to cancel may befiled at any 

time under paragraphs (3) and (5) of section 1064 of this 

title." Accordingly, the language of the Lanham Act makes 

it clear that a claim for cancellation of a mark based on 

fraudulent procurement and a defense to an otherwise 

_________________________________________________________________ 

 In any action involving a registered mark the court may determine 

 the right to registration, order the cancellation of registrations, 

and 

 otherwise rectify the register with r espect to the registrations 

of any 

 party to the action. Decrees and orders shall be certified by the 

 court to the Director, who shall make appropriate entry upon the 

 records of the Patent and Trademark Office, and shall be controlled 

 thereby. 

15 U.S.C. S 1119. 

 13 
incontestable mark on a similar ground may be asserted at 

any time.4 

The reason for this rule is quite simple--the interest 

vindicated by Section 14 is not just the injury to the 

challenging party, but the integrity of the r egister. Where 

the interest at issue is the integrity of the federal register, 

a statute of limitations should not operate to frustrate that 

interest. See Harjo v. Pro Football, Inc., 30 U.S.P.Q.2d 1828, 

1831 (T.T.A.B. 1994) ("The Boar d has held that the

equitable defenses of laches and estoppel ar e not available 

against claims of fraud and abandonment because ther e 

exists a broader interest--a `public policy' interest--in 

addition to a private interest in removing from the register 

those registrations procured or maintained by fraud and 

those registrations for marks that have been abandoned."); 

TBC Corp. v. Grand Prix Ltd., 12 U.S.P.Q.2d 1311, 1313 

(T.T.A.B. 1989) ("Where the pr oposed ground for 

cancellation is abandonment, equitable defenses should be 

unavailable for the same reason they have been held

unavailable when the ground asserted is descriptiveness or 

fraud. It is in the public interest to r emove abandoned 

registrations from the register . We therefore hold that the 

_________________________________________________________________ 

4. The origins of the "at any time" language of Section 14(3) support this 

conclusion. This language derives from Section 13 of the Trademark Act 

of 1905, 15 U.S.C. S 93. That section pr ovided that "whenever any 

person shall deem himself injured by the r egistration of a trade-mark in 

the Patent Office he may at any time apply to the Commissioner of 

Patents to cancel the registration." (emphasis added). The accepted 

meaning of the phrase "at any time" under the 1905 Act was that it 

excluded the defense of laches in a cancellation pr oceeding. See DwinellWright Co. v. National Fruit Prod. Co., 129 F.2d 848, 853 (1st Cir. 1942); 

White House Milk Prods. Co. v. Dwinell-W right Co., 111 F.2d 490, 493 

(C.C.P.A. 1940); Cluett, Peabody & Co. v. Hartogensis, 41 F.2d 94, 97 

(C.C.P.A. 1930). The language in the 1905 Act, in turn, was derived from 

a line of Supreme Court precedent holding that laches would not bar an 

injunction against future infringement, but only an accounting for past 

profits. See Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19 (1900); 

Menendez v. Holt, 128 U.S. 514 (1888); McLean v. Fleming, 96 U.S. (6 

Otto.) 245 (1877). It is telling that although the Lanham Act now 

specifically provides that an infringement action is subject to equitable 

defenses, see 15 U.S.C. S 1125, the statute continues to provide that a 

mark is vulnerable to a cancellation proceeding"at any time." 

 14 
prior registration defense is unavailable in a proceeding 

where the issue is abandonment."). Accor dingly, we hold 

that Treadwell's fraudulent procur ement defense and 

counterclaim were not time-barred. 

Marshak's only attempt to address the language of the 

Lanham Act permitting fraudulent procur ement to be

asserted in these contexts "at any time" appears in his 

reply brief, where he argues that this language merely 

reflects the fact that the grounds for cancellation covered 

by Section 14(3), such as a mark's becoming generic,"are 

of a type in which the right to bring cancellation may arise 

`at any time', i.e., some years (very possibly more that the 

five years of Section 1064(1)) after trademark r egistration." 

Reply Br. at 4 (emphasis in original). Marshak suggests that 

once a plaintiff has become aware of the necessary 

predicate for bringing a cancellation pr oceeding, the 

plaintiff should be required to do so within the limitations 

period specified by the most analogous state statute. 

Marshak's argument cannot be reconciled with the plain 

language of Section 14(3), which, as noted, pr ovides 

unambiguously that a petition seeking cancellation based 

on fraudulent procurement "may . . . befiled" "at any time." 

Marshak would read Section 14(3) as essentially a tolling 

provision, but the drafters of this provision would surely 

have selected different language if that is what they had 

intended. For all these reasons, we hold that T readwell's 

counterclaim and defense are not time-barr ed. 

This holding is entirely consistent with our decision in 

Beauty Time, on which Marshak relies. In Beauty Time, 

count XI of the complaint asserted a claim under Section 

38 of the Lanham Act, 15 U.S.C. S 1120, which provides as 

follows: 

 Any person who shall procure registration in the Patent 

 and Trademark Office of a mark by a false or

 fraudulent declaration or representation, oral or in 

 writing, or by any false means, shall be liable in a civil 

 action by any person injured thereby for any damages 

 sustained in consequence thereof. 

A claim for damages brought under Section 38 is not

governed by any of the time limits set out in Section 14(3) 

 15 
or any other provision of the Act specifying a limitations 

period, and therefore we held that the plaintiff 's Section 38 

claim for fraud was subject to Pennsylvania's two-year 

statute of limitations for actions based on fraud. 118 F.3d 

at 143-49. We did not mention Section 14(3) or suggest that 

a request for cancellation pursuant to that section is 

subject to a state statute of limitations. Thus, Beauty Time 

does not support Marshak's argument her e.5 

B. 

Marshak argues that Treadwell's fraudulent procurement 

defense and counterclaim were barr ed by principles of 

collateral estoppel. In the District Court, Marshak relied on 

several prior adjudications, but on appeal he focuses on 

Marshak v. Sheppard, 666 F.Supp. 590 (S.D.N.Y. 1987), a 

Lanham Act action brought by Marshak against, among

_________________________________________________________________ 

5. Marshak also relies (see Appellant's Br . at 33, Reply Br. at 2) on the 

statement in 5 J. Thomas McCarthy, McCarthy on T rademarks and 

Unfair Competition S 31:59, at 31-108 (4th ed. 2000), that "[w]hen fraud 

is used as a basis for challenging the validity of an incontestable 

registration, the claim must be asserted within the relevant statute of 

limitations." On its face, this statement supports Marshak's argument, 

but we decline to follow it in the particular context here, i.e., where 

Section 14(3) applies. The treatise does not attempt to explain how this 

sweeping statement can be reconciled with the language of Section 14(3), 

and elsewhere the treatise recognizes that a request to cancel based on 

fraud may be filed at any time. 5 McCarthy, supra, S 31:80. 

Furthermore, the authority cited by the treatise in support of this 

statement, Calzaturificio Rangoni S.p.A. v. United States Shoe Corp., 868 

F.Supp. 1414 (S.D.N.Y 1994), is unconvincing. Borrowing a state statute 

of limitations, the District Court in that case r elied solely on a prior 

District Court decision that had applied a state statute to a false 

advertising claim brought under Section 43(a) of the Lanham Act. See 

868 F.Supp. at 1420 (relying on PepsiCo., Inc. v. Dunlop Tire & Rubber 

Corp., 578 F.Supp. 196, 198 (S.D.N.Y . 1984)). A false advertising claim 

under Section 43(a), however, is quite dif ferent from a request for 

cancellation under Section 14(3). Assuming that it is appropriate to 

apply a state statute to such a Section 43(a) claim, it does not follow 

that 

all other Lanham Act claims or defenses relating to fraud must be 

treated similarly even if the language of the Act expressly addresses the 

question of the time within which those claims or defense may be 

asserted. 

 16 
others, a performer who appeared with a group called "Rick 

Sheppard and the Drifters."6 In that case, Sheppard

unsuccessfully sought cancellation of Marshak's r egistered 

mark on grounds very similar to those asserted by 

Treadwell in this case, and Marshak contends that 

Treadwell is bound by the judgment in that case. Marshak 

acknowledges that Treadwell was not a party in Marshak v. 

Sheppard, but he maintains that she is bound on the

ground that she wielded a "laboring oar" on behalf of the 

defendants. Appellant's Br. at 49. 

The principle on which Marshak relies is aptly stated as 

follows in the Restatement (Second) of JudgmentsS 39: 

 A person who is not a party to an action but who 

 controls or substantially participates in the control of 

 the presentation on behalf of a party is bound by the 

 determination of issues decided as though he were a 

 party. 

Comment c. adds: 

 To have control of litigation requir es that a person have 

 effective choice as to the legal theories and proofs to be 

 advanced in behalf of the party to the action. He must 

 also have control over the opportunity to obtain review. 

Cf. Collins v. E.I. DuPont de Nemours & Co., 34 F.3d 172, 

176 (3d Cir. 1994) (New Jersey law). 

Here, Marshak has not pointed to any dir ect evidence 

that Treadwell exercised any contr ol over the prior 

litigation. Indeed, his brief notes only two concr ete facts 

that are relevant: Treadwell testified in the prior case and 

had an interest in the outcome (in the sense that she would 

have benefitted if Marshak's federally registered mark had 

_________________________________________________________________ 

6. The section of Marshak's brief concerning collateral estoppel 

(Appellant's Br. at 48-49) does not r efer to the dismissal of Treadwell's 

1971 action in New York state court. As noted, that case was dismissed 

because Treadwell did not comply with discovery. The District Court held 

that, under New York law, such a dismissal was without prejudice. See 

Marshak, 58 F. Supp. 2d at 562 n.17 (citing Maitland v. Trojan Elec. & 

Mach. Co., 480 N.E.2d 736, 737 (N.Y. 1985)). Because Marshak does not 

rely on this dismissal as a basis for his collateral estoppel argument, we 

need not consider that issue here. 

 17 
been ordered canceled). Appellant's Br . at 49. Without 

more, these facts are plainly insufficient to permit a 

reasonable inference that she exer cised any control over 

litigation decisions or strategy. Marshak's collateral 

estoppel argument must therefore be rejected. 

C. 

Marshak contends that the jury's finding of fraud was 

based on an erroneous jury instruction, which stated that 

fraud on the PTO could be shown by proof that the 

applicants "should have known" about T readwell's superior 

right to "The Drifters" name. Although we agr ee with 

Marshak that this instruction was erroneous, we are

convinced that the error was harmless. 

Most of the District Court's lengthy instruction on

fraudulent intent is unobjectionable,7 but at several points, 

the Court told the jury that "[t]he defense of fraud will turn 

upon whether you believe that the persons who r egistered 

the mark knew or reasonably should have known that 

someone else had legal rights to the name `The Drifters.' " 

App. at 1482-83 (emphasis added). Marshak objects that 

the "should have known" language misstates the nature of 

the PTO oath and the requisite measure of proof. 

At the time when Thomas, Hobbs, and Green submitted

their declaration, an applicant was requir ed to state that 

 no other person, firm, corporation, or association, to 

 the best of his knowledge and belief, has the right to 

 use such mark in commerce either in the identical 

 form thereof or in such near resemblance thereto as to 

 be likely, when applied to the goods of such other 

 person, to cause confusion, or to cause mistake, or 

 deceive. 

15 U.S.C. S 1051 (1976) (emphasis added). Thus, applicants 

attested only to their own subjective knowledge and belief. 

To demonstrate that a federal registration was 

fraudulently procured, therefor e, a challenging party must 

_________________________________________________________________ 

7. Much of the charge is set forth in the District Court's opinion. See 

Marshak, 58 F. Supp. 2d at 566-67. 

 18 
adduce evidence that the registrant actually knew or 

believed that someone else had a right to the mark. See 

Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 

336, 340 (Fed. Cir. 1997); see also 5 McCarthy supra, 

S 31:76. Accordingly the instruction given by the District 

Court was not entirely correct.8 

The error, however, was har mless because " `it is highly 

probable that [it] did not affect the outcome of the case.' " 

West v. Philadelphia Elec. Co., 45 F .3d 744, 752 (3d Cir. 

1995). The "should have known" language used by the

District Court could have affected the ver dict only if a 

properly instructed jury would have found that the 

applicants had an actual but unreasonable belief that no 

one else had a right to use "The Drifters" name. However, 

based on the evidence in this case, we are convinced that 

a properly instructed jury would not have made such a 

finding. Marshak has not called to our attention any 

appreciable evidence that the applicants had a sincere 

belief that no one else had a right to the mark, and there 

was very strong evidence to the contrary. Marshak's cross- 

_________________________________________________________________ 

8. In support of its instruction, the District Court relied on G.H. Mumm 

& CIE v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 1296 (Fed. Cir. 1990), 

and Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 49 (Fed. Cir. 1986). 

In both of those cases, the Court stated that an applicant knowingly 

attempts to mislead the PTO if the applicant files a renewal application 

stating that its mark is currently in use in interstate commerce but the 

applicant "knows or should know" that this is not true. Neither case 

involved a jury instruction, and we do not interpr et those cases as 

taking 

the position that proof of subjective bad faith is unnecessary in order to 

prove fraud on the PTO. On the contrary, T orres emphasizes that an 

applicant must act "knowingly" in order to commit such a fraud. 808 

F.2d at 48. We understand these opinions to mean simply that in the 

particular context presented there -- where the representation related to 

a matter about which the applicant almost certainly had subjective 

knowledge, i.e., whether the applicant's own company was using the 

mark in commerce -- proof that the applicant should have known was 

ample to prove actual knowledge. We note that the Federal Circuit has 

subsequently held that proof of actual knowledge or belief is necessary 

in the context of fraudulent procurement.See Metro Traffic Control, 104 

F.3d at 340. We also note that even T readwell's brief seems to give G.H. 

Mumm and Torres a similarlynarrow interpretation. See Appellee's Br. at 

48-49 & n. 12. 

 19 
examination, in which excerpts of Thomas' deposition were 

read, essentially produced the admission that George 

Treadwell had been "the true owner of the Drifters' name," 

that George Treadwell "had rights to the name," and that 

Thomas had simply been "an employee." App. 470. 

Similarly, when Marshak was asked whether a member of 

"The Drifters" during the George T readwell era "would . . . 

have had the right to use the name Drifters," Marshak 

responded that "[t]he only person who has the right to the 

name is the person that develops it and keeps it in the 

public's eye." App. 510. Marshak also testified that a 

member of "The Drifters" was simply an "employee" and 

that an employee of a group that provides entertainment 

cannot "go around saying he is [the gr oup]." See App. 1662. 

In view of the evidence, we are convinced that the mistake 

in the jury instruction was harmless. 

D. 

Marshak's final argument concerning fraudulent 

procurement is that there was insufficient evidence to 

support the jury's finding. The jury's ver dict must be 

sustained if it is rationally supported, see Starceski v. 

Westinghouse Elec. Corp., 54 F.3d 1089, 1098 (3d Cir. 

1995), and the verdict here has ample support. In addition 

to the direct evidence just mentioned r egarding the 

applicants' and Marshak's subjective knowledge and belief, 

there was substantial circumstantial evidence from which 

such knowledge or belief could be inferred. As noted, the 

applicants had signed contracts acknowledging that the 

name "The Drifters" belonged exclusively to their employer 

and that they had no right to that name. Under those 

contracts, if they left the group, they could not even 

publicize the fact that they had been members. 

In arguing that the evidence was insufficient, Marshak 

relies on the 1971 ruling of the New York state court 

denying Treadwell's request for a pr eliminary injunction 

and opining that Treadwell had not established that

Marshak or the members of his group "ha[d] been infringing 

upon [her] good name and good will." App. 724. This was 

certainly evidence for the jury to consider, but it is 

 20 
insufficient to overturn the jury's ver dict.9 We thus hold 

that fraud in the procurement of the federal mark was 

properly proven and that cancellation was justified. 

IV. 

We now consider Marshak's arguments r elating to 

Treadwell's claim that Marshak was infringing upon her 

superior common-law right. As previously noted, the

counterclaim of Treadwell's Drifters asserted a claim under 

Section 43(a) of the Lanham Act, 15 U.S.C. S 1125(a), based 

on Marshak's alleged infringement of their common law 

right to "The Drifters" mark. In order to prove this claim, 

the counterclaimant was required to show that "(1) the 

mark [was] valid and legally protectable; (2) the mark [was] 

owned by the plaintiff; and (3) [Marshak's] use of the mark 

to identify goods or services [was] likely to create confusion 

concerning the origin of the goods or services." Fisons 

Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472 (3d 

Cir. 1994). The jury did not find that the counterclaimant 

had established these elements. On the contrary, the jury 

found that Treadwell and her companies had abandoned 

their common law rights and that Marshak had not used 

"The Drifters" name in such a way as to misr epresent the 

source of his goods or services or to falsely suggest a 

connection between those services and Tr eadwell's Drifters. 

App. at 1562. The District Court, however, explicitly 

granted judgment as a matter of law in favor of the

counterclaimant on the issue of abandonment and, in

effect, did the same thing with respect to the entire Section 

_________________________________________________________________ 

9. The evidence regarding the 1971 state court ruling does not 

undermine our conclusion that the error in the jury instruction 

discussed in part III.C, supra, was har mless. The jury instruction error 

related to the question of subjective knowledge or belief, but the 

evidence 

concerning the 1971 state court ruling is evidence of objective 

reasonableness, not the applicants' subjective state of mind. As the 

District Court noted, "Marshak has cited no testimony or other evidence 

that he or his assignors subjectively believed that the dismissal of 

Treadwell's 1971 lawsuit constituted afinal adjudication of their 

trademark rights," 58 F.Supp. 2d at 562, and thus established that 

Treadwell had no right to the use of"The Drifters" name. 

 21 
43(a) counterclaim. On appeal, Marshak challenges this 

disposition on several grounds. 

A. 

Marshak contends that the District Court err ed in 

entering judgment as a matter of law against him on the 

issue of abandonment.10 W e do not agree. 

Section 45 of the Lanham Act, 15 U.S.C. S 1127, provides 

that "[a] mark shall be deemed abandoned . . . [w]hen its 

use has been discontinued with intent not to r esume use." 

"To establish the defense of abandonment it is necessary to 

show not only acts indicating a practical abandonment, but 

an actual intent to abandon." Saxlehner v. Eisner &

Mendelson Co., 179 U.S. 19, 31 (1900). "Intent not to 

resume may be inferred from cir cumstances," 15 U.S.C. 

S 1127, but "abandonment, being in the nature of a 

forfeiture, must be strictly proved." United States Jaycees v. 

Philadelphia Jaycees, 639 F.2d 134, 139 (3d Cir. 1981). 

Thus, in order to show that there was an abandonment 

of the common law rights originally acquired by George 

Treadwell and The Drifters, Inc., Marshak bore the burden 

_________________________________________________________________ 

10. Even if the jury had sustained Marshak's federal registration, it 

would still be necessary to consider the question of abandonment. Even 

if a junior user's mark has attained incontestable status, such status 

does not cut off the rights of a senior user . See Natural Footware Ltd. 

v. 

Hart, Schnaffner & Marx, 760 F.2d 1383, 1395 (3d Cir. 1985) ("[A] federal 

registrant is still subject to the defense of a prior user of the mark who 

has established a market in specific areas notwithstanding that senior 

user's failure to register.");see also 815 Tonawanda Street Corp.v. Fay's 

Drug Co., 842 F.2d 643, 646 (2d Cir . 1988) ("[T]he plain meaning of the 

S 1065 exception is that if a party has acquir ed common-law trademark 

rights continuing since before the publication of the federal 

registration, 

then to that extent the registration will not be incontestable.") 

(citations 

omitted)); Cuban Cigar Brands N.V. v. Upmann Int'l, Inc., 457 F. Supp. 

1090, 1100 (S.D.N.Y. 1978) ("[D]efendant's marks are not incontestable 

as against that of plaintiff for, since defendant's use infringes 

plaintiff 's 

valid common law rights obtained long prior to defendant's registration, 

it has no shield of incontestability in a suit by plaintiff to enforce 

that 

mark."). Since Marshak has used "The Drifters" continuously since 1970, 

his ability to enjoin Treadwell's use depends on whether she abandoned 

the mark. 
 22 
of "strickly" proving (a) that use of The Drifters mark had 

been discontinued in the United States1 1 and (b) that the 

owner of the common law rights had the actual intent to 

abandon the mark. Marshak could have established a 

prima facie case of abandonment, however, by proving nonuse in this country for two consecutive years. Lanham Act 

S 45, 15 U.S.C. 1127 (1994).12 

Here, the District Court found that ther e was no 

abandonment as a matter of law because "the original 

Drifters recordings have been played on the radio and sold 

in record stores, without interruption, for the past 40 

years." Marshak, 58 F. Supp. 2d at 575. The District Court 

adopted the reasoning of The Kingsmen v. K-Tel Int'l, Ltd., 

557 F. Supp. 178, 183 (S.D.N.Y. 1983), in which the court 

held that a mark designating a disbanded singing gr oup 

remained in use because the group's r ecordings were 

played and the group continued to collect r oyalties. The 

court wrote: 

 We find that defendants have failed to show either non- 

 use or intent to abandon. Even though plaintif fs 

 disbanded their group in 1967 and ceased r ecording 

 new material, there is no evidence suggesting that they 

 failed to use the name Kingsmen during the period 

 from 1967 to the present to promote their previously 

 recorded albums. Moreover, the fact that these 

 individuals continue to receive royalties for Kingsmen 

 recordings flies in the face of any suggestion of intent 

 to abandon use of the name Kingsmen. These plaintif fs 

 have no more abandoned their right to pr otect the 

 name of Kingsmen than have The Beatles, The 

 Supremes or any other group that has disbanded and 

 ceased performing and recor ding, but continues to 

 collect royalties from the sale of pr eviously recorded 

 material. We must reject defendants' contentions that 

_________________________________________________________________ 

11. For purposes of trademark rights in the United States, "use" means 

use in the United States, not in other nations. See Rivard v. Linville, 

133 

F.3d 1446, 1448-49 (Fed. Cir. 1998). 

12. In 1994, the statute was amended to pr ovide that three, not two, 

years of nonuse were needed to make out a prima facie case of 

abandonment. 

 23 
 the name Kingsmen has been abandoned to the public 

 domain. 

Id. 

We concur with this reasoning, and we also agree with 

the District Court that it mandates the entry of judgment 

as a matter of law against Marshak. As the District Court 

put it, "[a] successful musical group does not abandon its 

mark unless there is proof that the owner ceased to

commercially exploit the mark's secondary meaning in the 

music industry." Marshak, 58 F. Supp. 2d at 575; see also 

Robi v. Reed, 173 F.3d 736 (9th Cir . 1999); HEC Enters., 

Ltd. v. Deep Purple, Inc., 213 U.S.P.Q. 991 (C.D. Cal. 1980). 

Marshak bore the burden of proving non-use and actual 

intent to abandon. United States Jaycees v. Philadelphia 

Jaycees, 639 F.2d at 139. Tr eadwell's Drifters were entitled 

to judgment as a matter of law on the issue of 

abandonment because, even giving Marshak the benefit of 

all reasonable inferences, Bar na v. City of Perth Amboy, 42 

F.3d 809, 813 n.5 (3d Cir. 1994), the evidence was 

insufficient to establish those elements. Motter v. Everest & 

Jennings, Inc., 883 F.2d 1223, 1228-29 (3d Cir. 1989). 

Marshak did not prove non-use, i.e., that the classic 

recordings of "The Drifters" wer e not played and that the 

resulting royalties were not paid. On the contrary, the 

parties stipulated that "The Drifters" r ecords and albums 

continue to be played and sold in the United States and 

that many of their songs have now been recor ded on

compact disk and re-released. App. at 110. In addition, 

Treadwell testified that The Drifters, Inc. and Treadwell 

Drifters, Inc. have continuously received r oyalties from 

Atlantic Records for the sale of Drifters r ecords in the 

United States. App. at 720. Likewise, Marshak failed to 

prove an actual intent to abandon. The continuous use of 

the mark in connection with the commercial exploitation of 

the group's recordings in this country gave rise to a strong 

inference of an intent not to abandon the mark. 

In arguing that judgment as a matter of law was 

improper, Marshak relies on the following evidence. First, 

Treadwell dropped her 1971 action against Marshak in New 

York state court after the court denied her application for a 

 24 
preliminary injunction and issued an unfavorable opinion. 

Second, Treadwell did not oppose the federal registration of 

Marshak's mark or previously seek to have it canceled. 

Third, Treadwell failed to challenge numerous violations of 

"The Drifters" name, whereas Marshak stopped those uses 

through legal action. Fourth, Treadwell left for England in 

1972. Fifth, Treadwell's English r ecording contracts did not 

provide for distribution in the United States. However, once 

it is recognized that the commercial exploitation of classic 

Drifters recordings in this country constitutes use, it is 

apparent that the evidence that Marshak cites is 

insufficient to show either the non-use and or the actual 

intent to abandon that are necessary for afinding of 

abandonment. 

B. 

Marshak argues that the District Court err ed in holding 

that he infringed the common-law rights held by 

Treadwell's Drifters. We conclude, however, that Treadwell's 

Drifters were entitled to judgment as a matter of law on 

their infringement claim. 

As previously noted, Treadwell's Drifters were required to 

show (1) that their mark was valid and legally pr otectable; 

(2) that they owned the mark; and (3) that Marshak's use 

of the mark to identify his group was likely to create 

confusion concerning their origin. Fisons Horticulture, Inc., 

30 F.3d at 472. In view of our holding r egarding 

abandonment, there can be no question r egarding elements 

one and two, and we do not understand Marshak to contest 

those elements on any other ground. 

With regard to the third element, Marshak argues that 

the District Court should not have disturbed the jury's 

finding that Marshak had not used "The Drifters" name in 

such a way as to misrepresent the sour ce of his goods or 

services or to falsely suggest a connection between those 

services and Treadwell's Drifters. App. at 1562. We agree 

with the District Court, however, that a r easonable 

factfinder could not fail to find a likelihood of confusion on 

the facts of this case. As the District Court wr ote, 

"Marshak's group performs under the name `The Drifters' 

 25 
and sings the same hit songs that were r ecorded and made 

famous by the original Drifters in the fifties and sixties. 

There is surely a likelihood of confusion because the public 

is misled to believe that Marshak's singers and the famous 

Drifters records originate from the same source." App. at 

1681-82. Although infringement is generally a question for 

the jury, the evidence here mandated judgment for the 

counterclaimant and justified the entry of the permanent 

injunction barring Marshak from using the Drifters mark. 

We have considered all of Marshak's ar guments, and we 

find no basis for reversal of the portions of the District 

Court's orders that are properly before us. 

V. 

For these reasons, we affirm the or ders of the District 

Court insofar as they order cancellation of Marshak's 

federal registration and permanently enjoin Marshak from 

using The Drifters name in commerce. We dismiss the

appeal insofar as it contests the order for an accounting of 

profits. 

A True Copy: 

Teste: 

 Clerk of the United States Court of Appeals 

 for the Third Circuit 

 26