1 

UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF NEW JERSEY 

ROBERT C. KAUFHOLD, et al., 

 Plaintiffs, 

 v. 

GERALD CAIAFA, et al.,

 Defendants.

Civ. No. 2:11-cv-01460 (WJM) 

OPINION

 

WILLIAM J. MARTINI, U.S.D.J.: 

Plaintiffs Robert C. Kaufhold and Joseph Aurthur McGuckin were the guitarist 

and drummer of the iconic punk rock band, the Misfits. Plaintiffs filed this action against 

the band’s bassist, Gerald Caiafa, and his music label, Cyclopian Music, Inc. 

(“Cyclopian”) (collectively “Defendants”), alleging that Defendants improperly asserted 

exclusive ownership rights over the Misfits trademarks. This matter comes before the 

Court on Defendants’ motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) 

for failure to state a claim upon which relief may be granted. There was no oral 

argument. Fed. R. Civ. P. 78(b). For the reasons set forth below, Defendants’ motion to 

dismiss is DENIED. 

I. BACKGROUND 

The following facts are drawn from the Amended Complaint. 

The Misfits was a punk rock band formed in 1977. The band is known for 

pioneering and defining the musical genre of “horror punk,” combining the themes, 

imagery, and narrative of horror fiction with punk rock music. During all relevant times, 

the Misfits had four members: a guitarist, a drummer, a bass player, and a vocalist. 

Plaintiff Kaufhold was the Misfits’ guitarist from approximately November 1978 to 

approximately October 1980, and performed under the name Bobby Steele. Plaintiff 

McGuckin was the Misfits’ drummer and performed under the name Arthur Googy from 

approximately April 1979 to approximately April 1982. McGuckin was the longest 

serving drummer in the band. Defendant Caiafa joined the band in 1977 as a replacement 

for the original bass player Diane DiPiazza, and performed under the name Jerry Only. 

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Glenn Anzalone p/k/a Glenn Danzig (“Danzig”), the band’s vocalist, is not a party to this 

action. 

The band’s primary recording period was from 1978 to 1982 (Plaintiffs refer to 

this as the band’s “classic period”). Am. Compl. ¶ 18, ECF No. 7. During this period, 

the band performed under the name the “Misfits” and used certain logos and stylized 

versions of that name (the “Misfits Marks”), which distinctively identified their services 

to the public. Although the Misfits disbanded in 1983, classic-period Misfits recordings 

continue to be sold today. For the past 15 years, Plaintiffs have received, and continue to 

receive, royalties for their work on the Misfits recordings. 

For 12 years after the breakup of the Misfits, between 1983 and 1995, there was 

no group that toured or recorded as the Misfits. The Amended Complaint alleges that, 

during these 12 years, Defendant Caiafa publicly rejected his association with the Misfits 

and the Misfits Marks. The Amended Complaint further alleges that, from 1983 through 

1995, Plaintiff Kaufhold was the only member of the band to use the Misfits Marks. 

Kaufhold alleges that he used the Misfits Marks from 1983 to the present on flyers, 

posters, and advertisements. From 1988 through 1992, Kaufhold sold the Misfits Live 

‘79 record (which prominently features the Misfits trademark) at shows for his band the 

Undead. Kaufhold continues to sell the Misfits Live ‘79 album to this day from his 

website. Immediately after his departure from the Misfits, and continuing through today, 

Kaufhold played and recorded Misfits songs in concert, and even recorded a 12 song 

album of Misfits songs entitled “12 Hits From Hell.” Kaufhold also sold Misfits branded 

t-shirts from the time he exited the band. 

In 1994, a settlement agreement was executed between Defendant Caiafa and 

other former members of the Misfits (“1994 Settlement”). Plaintiffs were not parties to 

the 1994 Settlement. However, after the settlement was reached, Caiafa allegedly 

informed Plaintiffs that the parties to the settlement had agreed that each of the former 

members of the band (including Plaintiffs) co-owned the Misfits Marks, and no member 

would apply for exclusive rights to use the Misfits Marks. In 1995, a second settlement 

agreement was executed (“1995 Settlement”), wherein the parties agreed to allow Caiafa 

to apply for the exclusive right to use the Misfits Marks. Plaintiffs were not parties to the 

1995 Settlement, and Caiafa did not tell Plaintiffs about the 1995 Settlement. 

In 1996, the Misfits Box Set was released, containing nearly all of the band’s 

classic-period material recorded from 1977 to 1983. The release of the box set in 1996 

made the Misfits’ complete early catalog widely available for the first time. Also around 

1996, Caiafa recruited new band members and began to tour as the Misfits (referred to 

here as the “new Misfits”).1

 The new Misfits did a 25th Anniversary Tour and a 30th

 

1

 From 2001 through 2005 Caiafa took over lead vocal duties in addition to playing bass guitar, 

and recruited veteran musicians Dez Cadena, former guitarist of Black Flag, and Marky Ramone, 

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Anniversary Tour. The new Misfits also released albums in 1997, 1999, and 2003. None 

of these albums cracked the Billboard Record charts top 100. Defendants Caiafa and 

Cyclopian sold and continue to sell merchandise with the Misfits Marks. 

Beginning in approximately October 2000, without the knowledge of the 

Plaintiffs, Caiafa and Cyclopian filed five applications with the U.S. Patent and 

Trademark Office (“PTO”) to register the Misfits Marks, three of which have matured 

into trademark registrations. In applying for registration, Caiafa represented that 

Cyclopian was the owner of the Marks, and that, to the best of his knowledge and belief, 

no other person had the right to use the Marks in commerce. The Amended Complaint 

alleges that, at the time he made those representations, Caiafa knew that Kaufhold had 

senior rights to the Marks and made those representations with the intent to deceive the 

PTO. 

Plaintiffs assert that they were completely unaware of the trademark applications 

as well as the exploitation of the Misfits Marks by Defendants. It was not until August of 

2009 that Plaintiff McGuckin saw a billboard in New York City for Van’s sneakers with 

the Misfits Marks that he had any indication that the Misfits Marks were being exploited 

other than in the continued record sales. McGuckin proceeded to research the improper 

use of the Misfits Marks, notifying Kaufhold of the extent of their use sometime in the 

early part of 2010. On June 11, 2010, Plaintiffs filed an action against Defendants in the 

Southern District of New York. See Kaufhold, et al. v. Cyclopian et al., No. 1:10-cv04588, 2010 WL 5094630, at *2 (S.D.N.Y. Dec. 14, 2010). In an Opinion and Order 

dated December 14, 2010, the Honorable Denise Cote granted Defendants’ motion to 

dismiss that action, finding that the Southern District lacked personal jurisdiction over 

Defendants. Id. at *5. 

On March 15, 2011, Plaintiffs filed a complaint in this Court. On June 22, 2011, 

Plaintiffs filed the Amended Complaint at issue here. In the Amended Complaint, 

Plaintiffs assert three causes of action: (1) trademark infringement under 15 U.S.C. § 

1125(a); (2) cancellation of Defendants’ trademark registrations based on fraudulent 

procurement; and (3) declaratory judgments that Plaintiffs co-own the Misfits Marks and 

that Defendants’ trademark applications are based on Caiafa’s fraudulent claims to the 

PTO. Defendants now move to dismiss the Amended Complaint in its entirety. 

 

II. LEGAL STANDARD 

Federal Rule of Civil Procedure 12(b)(6) provides for the dismissal of a complaint, 

in whole or in part, if the plaintiff fails to state a claim upon which relief can be granted. 

The moving party bears the burden of showing that no claim has been stated. Hedges v. 

United States, 404 F.3d 744, 750 (3d Cir. 2005). In deciding a motion to dismiss under 

 

former drummer of the Ramones. 

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Rule 12(b)(6), a court must take all allegations in the complaint as true and view them in 

the light most favorable to the plaintiff. See Warth v. Seldin, 422 U.S. 490, 501 (1975); 

Trump Hotels & Casino Resorts, Inc. v. Mirage Resorts Inc., 140 F.3d 478, 483 (3d Cir. 

1998). 

Although a complaint need not contain detailed factual allegations, “a plaintiff’s 

obligation to provide the ‘grounds’ of his ‘entitlement to relief’ requires more than labels 

and conclusions, and a formulaic recitation of the elements of a cause of action will not 

do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). Thus, the factual allegations 

must be sufficient to raise a plaintiff’s right to relief above a speculative level, such that it 

is “plausible on its face.” See id. at 570; see also Umland v. PLANCO Fin. Serv., Inc., 

542 F.3d 59, 64 (3d Cir. 2008). A claim has “facial plausibility when the plaintiff pleads 

factual content that allows the court to draw the reasonable inference that the defendant is 

liable for the misconduct alleged.” Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009) (citing 

Twombly, 550 U.S. at 556). While “[t]he plausibility standard is not akin to a 

‘probability requirement’ . . . it asks for more than a sheer possibility.” Iqbal, 129 S.Ct. 

at 1949 (2009).

III. DISCUSSION 

Defendants move to dismiss the Amended Complaint on two grounds: (1) the 

doctrine of laches, and (2) failure to state a claim under the Lanham Act. Each issue will 

be addressed in turn. 

a. THE DOCTRINE OF LACHES 

Defendants assert that Counts I and III of the Amended Complaint are barred by 

the doctrine of laches.2

 Because the laches defense depends on disputed factual issues, 

the motion to dismiss based on the laches defense is denied as premature. 

Because the Lanham Act does not include a specific statute of limitations, the 

Third Circuit has found that laches applies to bar stale claims. Santana Products, Inc. v. 

Bobrick Washroom Equip., Inc., 401 F.3d 123, 138 (3d Cir. 2005). Under Third Circuit 

law, the doctrine of laches bars a Lanham Act claim when there is “(1) inexcusable delay 

in bringing suit, and (2) prejudice to the defendant as a result of the delay.” Id. 

 

2

 Defendants initially argued that all of Plaintiffs’ claims were time-barred under the doctrine of 

laches. Defs.’ Br. at 9. However, Defendants appear to acknowledge in their reply brief that the 

remedy of laches does not apply to Count II (Cancellation of U.S. Trademark Registrations). See

Defs.’ Reply Br. at 6 n.2. Indeed, it is well-settled in the Third Circuit and elsewhere that the 

defense of laches is not available for a claim for cancellation based on fraudulent procurement.		

Marshak v. Treadwell, 240 F.3d 184, 192-94 (3d. Cir. 2001) (according to the Supreme Court, 

the PTO, and the plain language of the statute, a fraudulent procurement claim may be asserted at 

any time); see also 15 U.S.C. § 1064(3). 

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“Inexcusable delay” for purposes of laches is measured by looking to “the most 

analogous” state statute of limitations. Santana, 401 F.3d at 135. Claims under the 

Lanham Act are properly analogized to New Jersey’s six year fraud statute. See Zinn v. 

Seruga, No. 05-372, 2009 WL 3128353, at *24 (D.N.J. Sep. 28, 2009); N.J.S.A. § 2A:14-

1. It is the law in this Circuit that, “[o]nce the statute of limitations has expired, the 

defendant ‘enjoys the benefit of a presumption of inexcusable delay and prejudice.’” 

Santana, 401 F.3d at 138-39 (quoting EEOC v. The Great Atlantic & Pacific Tea Co., 

735 F.2d 69, 80 (3d Cir. 1984)). When this presumption applies, the burden shifts to the 

plaintiff to prove that its delay in bringing the claim was excusable, and that the delay did 

not prejudice the defendant. See Santana, 401 F.3d at 138-39.

Plaintiffs do not dispute that Defendants are entitled to the presumption of delay 

and prejudice in this case. Instead, Plaintiffs argue that “Defendants are barred from 

asserting the equitable claim of latches [sic] based on their own inequitable conduct.” 

Pls.’ Opp. Br. at 12. Plaintiffs are correct that, “[w]here there is evidence of other factors 

which would make it inequitable to recognize the defense despite undue delay and 

prejudice, the defense may be denied.” See A.C. Aukerman Co. v. R.L. Chaides 

Construction Co., 960 F.2d 1020, 1032 (Fed. Cir. 1992). 

Plaintiffs argue that it would be inequitable to recognize the defense of laches in 

this case for two reasons. First, Plaintiffs argue that the defense is barred by the doctrine 

of unclean hands because Defendants’ own actions caused the delay. See Intertech 

Licensing Corp. v. Brown & Share Mfg. Co., Inc., 708 F.Supp. 1423, 1429 (D. Del. 1989) 

(A plaintiff may overcome a presumption of laches when “the one asserting the defense 

of laches was responsible for the plaintiff’s delay”). Specifically, Plaintiffs allege that 

Caiafa told them that no member of the band would apply for exclusive rights to use the 

Misfits Marks after the 1994 Settlement, and then misleadingly failed to tell them, only 

one year later, when the other former band members agreed to let Caiafa apply for 

exclusive rights to use the Marks. Second, Plaintiffs argue that Defendants’ submission 

of a fraudulent PTO application operates to bar the defense of laches. See Merisant Co. 

v. McNeil Nutritionals, LLC, 515 F.Supp.2d 509, 523 (E.D. Pa. 2007). 

Ruling on Defendants’ laches defense at this stage would be premature. “[W]hen 

the defense of laches is clear on the face of the complaint, and where it is clear that the 

plaintiff can prove no set of facts to avoid the insuperable bar, a court may consider the 

defense on a motion to dismiss.” Solow Bldg. Co., LLC v. Nine West Group, Inc., No. 

00-7685, 2001 WL 736794, *3 (S.D.N.Y. June 29, 2001). However, when the defense of 

laches depends on disputed facts, it is inappropriate to make a determination on a motion 

to dismiss. See Compagnie Des Bauxites de Guinee v. L'Union Atlantique S.A. 

D'Assurances, 723 F.2d 357, 363 (3d Cir. 1983) (dismissal on the basis of laches was 

inappropriate when the defense depended on “disputed issues of fact.”); Fannie v. 

Chamberlain Mfg. Corp., Derry Div., 445 F. Supp. 65, 75 (W.D. Pa. 1977) (denying 

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laches defense in a motion to dismiss as “premature” because there were open “questions 

of fact”). 

With respect to the laches defense in this case, the only issue in dispute is whether 

there was inequitable conduct on the part of Defendants. The facts underlying 

inequitable conduct are heavily disputed. For example, the parties dispute whether 

Caiafa’s failure to inform Plaintiffs of the 1995 Settlement constituted bad faith, whether 

Kaufhold was using the Marks continuously after leaving the band, whether Defendants 

were aware of Kaufhold’s use of the Marks, whether Defendants acted with intent to 

deceive the PTO when they applied for the Marks, etc. Moreover, these disputed facts go 

to the heart of the merits of the case. As such, dismissal on the basis of laches at this 

stage of the litigation would be inappropriate. 

Accordingly, the motion to dismiss Counts I and III based on the defense of laches 

is denied as premature. Defendants may re-raise the defense at a later stage of litigation. 

b. FAILURE TO STATE A CLAIM UNDER THE LANHAM ACT 

Defendants argue that all of Plaintiffs’ Lanham Act claims fail as a matter of law 

because Plaintiffs have not alleged continuous use in commerce of the Misfits Marks. 

The Court disagrees. 

Defendants are correct that each Count in the Amended Complaint requires 

Plaintiffs to allege use of the Marks in commerce. Counts I and III require a showing that 

Plaintiffs own the Marks. See A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 

237 F.3d 198, 210 (3d Cir. 2000) (to state a claim for trademark infringement under 15 

U.S.C. § 1125(a), a plaintiff must establish, among other things, that he owns the mark); 

Am. Compl. ¶ 98 (“Plaintiffs seek a declaratory judgment that they are, at the very least, 

co-owners of the Misfits Marks”). To establish ownership, a plaintiff must plead (among 

other things) that he has used the mark continuously in commerce. Ford Motor Co. v. 

Summit Motor Prods., Inc., 930 F.2d 277, 292 (3d Cir. 1991) (“[T]he first party to adopt 

a trademark can assert ownership rights, provided it continuously uses it in commerce”). 

Similarly, Count II, cancellation on the basis of fraudulent procurement, requires 

Plaintiffs to show (among other things) that they have an actual commercial interest in 

the Marks. See Kelly v. Duprees MJA, LLC, No. 08-6046, 2012 WL 1019473, at *4 

(D.N.J. Mar. 23, 2012) (“To have the requisite standing [to bring a cancellation claim], a 

party must demonstrate a real and rational basis for his belief that he would be damaged 

by the registration sought to be cancelled, stemming from an actual commercial or 

pecuniary interest in his own mark”); Int’l Order of Job's Daughters v. Lindeburg & Co., 

727 F.2d 1087, 1091 (Fed.Cir. 1984). 

The Amended Complaint contains numerous factual allegations that support 

Plaintiffs’ claim of continuous commercial use of the Marks. The Amended Complaint 

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alleges that classic-period Misfits recordings featuring Plaintiffs have been sold 

throughout the relevant time period (from 1978 to the present). Am. Compl. ¶¶ 25-27, 

32-33, 57. The Amended Complaint further alleges that Plaintiffs have been receiving, 

and continue to receive, royalties for their work on these recordings. Am. Compl. ¶¶ 25, 

56. It is well-settled in this Circuit that receiving royalties for previously recorded 

material constitutes commercial use of a trademark. See Marshak v. Treadwell, 240 F.3d 

184, 200 (3d Cir. 2001) (“[T]he commercial exploitation of classic . . . recordings in this 

country constitutes use”); Kelly v. Estate of Arnone ex rel. Ahern, No. 08-6046, 2009 WL 

2392108, at *6 (D.N.J. Aug. 3, 2009) (holding that a band member “continue[d] to 

receive royalties and, therefore, ha[d] an ongoing commercial interest in the mark,” 

especially because “albums featuring [the band member] continue[d] to be marketed 

online and in stores”); see also Kingsmen v. K-Tel Int’l, Ltd., 557 F. Supp. 178, 183 

(S.D.N.Y. 1983) (“[T]he fact that these individuals continue to receive royalties for 

[their] recordings” establishes commercial use of the mark “[e]ven though plaintiffs 

disbanded their group in 1967”). 

Moreover, the Amended Complaint contains a litany of allegations regarding 

Kaufhold’s commercial use of the Marks. For example, the Amended Complaint alleges 

that: (1) Kaufhold used the Misfits Marks on flyers, posters, and advertisements from 

1983 to the present (Am. Compl. ¶ 31); (2) Kaufhold sold the Misfits Live ’79 album 

featuring Misfits Marks from 1988 through 1992 (Am. Compl. ¶ 32); (3) Kaufhold 

continues to sell the Misfits Live ’79 album from his website (Am. Compl. ¶ 33); (4) 

Kaufhold has played and recorded Misfits songs in concert since his departure from the 

band (Am. Compl. ¶ 34); (5) Kaufhold recorded a 12 song album of Misfits songs titled 

“12 Hits From Hell” (Am. Compl. ¶ 34); and (6) Kaufhold sold Misfits branded t-shirts 

from the time he exited the band (Am. Compl. ¶ 37). 

Based on these factual allegations, the Court finds that Plaintiffs have sufficiently 

alleged continuous use in commerce of the Misfits Marks. Accordingly, the motion to 

dismiss Plaintiffs’ Lanham Act claims is denied. 

IV. CONCLUSION 

For the reasons stated above, Defendants’ motion to dismiss is DENIED. An 

appropriate order follows. 

 

 /s/ William J. Martini 

 WILLIAM J. MARTINI, U.S.D.J. 

Date: May 31, 2012

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