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Robert E. Warden, et al. v. Pamela Senk Falk

September 21, 2011


The opinion of the court was delivered by: Juan R. Sanchez, J.


Plaintiffs Robert E. Warden and ReWarden, Inc. ask this Court to enter summary judgment in their favor on Counts I through VI of the Complaint and seek cancellation of the "Bob Warden" trademark, Trademark Registration Number 3,635,725, which is currently registered in the name of Defendant Dynamic Housewares, Inc. (DHI). For the following reasons, this Court will grant in part and deny in part Plaintiffs' motion.*fn1


Warden is a television personality who has appeared on the QVC shopping network since 1987 to sell cookbooks and endorse the cookware products of others. The parties do not dispute that, through his appearances on QVC and elsewhere, Warden developed a common law trademark in his personal name, likeness, and professional image through his use in commerce of his name to sell cookbooks and endorse and promote the products of others.

In late 2006, Warden and Defendant Pamela Senk Falk, with whom Warden was previously involved in both business and romantic relationships at the time, decided to register a "Bob Warden" trademark (the Mark) with the United States Patent and Trademark Office (USPTO), and sought the assistance of attorney Christine Redfield to complete the trademark registration application. The trademark was to be registered in DHI's name. Before submitting the application, Redfield advised Warden and Falk that, for DHI to own the Bob Warden name and trademark in connection with cookware, housewares, and cookbooks, Warden would have to "assign all rights, title and interest in his name to [DHI]." Redfield email, Nov. 10, 2006. She further advised:

If the application is to be filed in the name of [DHI] based on an oral license agreement from Bob to [DHI], we can go ahead and file the application now. However, if Bob decides to assign his name to [DHI], we should have an assignment agreement executed prior to filing the application.

Id. At a preliminary injunction hearing held in July 2011, Falk stated she did not receive an assignment of Warden's rights, title, goodwill, and/or interest in his name before the trademark registration application was filed, and further conceded she has never received such an assignment. Instead, Falk testified that Warden refused to execute an assignment.*fn3 No material issue of fact exists as to whether Falk or DHI received an assignment from Warden of the ownership of his name and the goodwill and assets associated with his name.*fn4

On November 13, 2006, Redfield submitted an application for trademark registration on DHI's behalf, which stated DHI owned the Bob Warden trademark. The November 2006 application asserted "Bob Warden" had been used as a trademark to promote the goods of others through infomercials, books, and personal appearances since at least December 31, 1986, and that "Bob Warden" had been used to sell cookware, including utensils, electric knives, food processors, electric mixers, other products, and cookbooks since at least December 31, 1993.

On March 31, 2007, the USPTO sent notification of an "Office Action" regarding registration of the Mark which identified a number of deficiencies in the trademark application, including that the application did not specify whether "Bob Warden" identified a particular living individual. The notice further stated that, "[i]f the name in the mark identifies a particular living individual," DHI was required to submit "a signed, written consent from that individual, authorizing applicant to register the name as a trademark with the USPTO." Pl.'s Mot. for Prelim. Injunction, Ex. 25. Thereafter, DHI obtained a consent form from Warden, dated May 14, 2007, stating "The undersigned Bob Warden, hereby consents to the use and registration as a trademark in the U.S. Patent and Trademark Office of his name by Dynamic Housewares, Inc." Id., Ex. 31. Warden received no consideration from DHI for signing this consent form. The Bob Warden trademark was registered, effective June 9, 2009.*fn5

On June 23, 2011, approximately two months after filing his Complaint, Warden sent a letter to Falk, stating

In addition to the Complaint filed in Federal Court in the Eastern District of Pennsylvania, this letter is formal notice that I hereby revoke the Consent dated May 14, 2007, to the use and registration of my name[,] Bob Warden[,] as a trademark in the United States Patent and Trademark Office. . . .

This letter is also formal notice that I hereby revoke any and all licenses that I may have granted to [DHI] or to you personally, for the use of my name BOB WARDEN, or the trademark BOB WARDEN, in connection with the sale or distribution of any goods or services, whether oral, in writing, or implied by my ownership in, association with and/or by working with you and/or with Dynamic Housewares, Inc. Please be advised that [DHI] no longer has the right to use my name, or the trademark BOB WARDEN.

Pl.'s Mot. for Prelim. Injunction, Ex. 28.

Plaintiffs sought a preliminary injunction asking this Court to bar Falk from asserting she owned the Bob Warden name and Warden could not do business without her permission. On July 27, 2011, after finding Plaintiffs satisfied the standard for obtaining a preliminary injunction, this Court granted Plaintiffs' motion and enjoined Defendants from contacting Plaintiffs' business relations with the intent to interfere with Plaintiffs' right to contract, representing or suggesting they had control over Bob Warden's name, commercial appearances, and publications, and otherwise representing or suggesting they owned a trademark in Bob Warden's name. Plaintiffs now ask this Court to cancel DHI's registration of the Mark, arguing either the registration was void ab initio because DHI falsely represented it owned the Mark or that the only interest DHI had in the Mark was a license to ...

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