Two years ago in March, in honor of National Peanut Month, we recounted the truly epic struggle for the SKIPPY mark between the once-iconic cartoon character and the still-iconic peanut butter brand. The story began nearly 90 years ago and involves a multi-generational dispute between one indefatigable family and a succession of large food companies. The very first decision in this dispute was issued by the US Trademark Office in 1933. The most recent was issued by the TTAB last month.
The Story So Far
In 1923, Percy L. Crosby created Skippy, a cartoon character that quickly became a nationally syndicated favorite. He registered the SKIPPY mark in 1925, and the cartoon got its own candy bar, appeared on a stamp, and was made into a 1931 Academy Award-winning film. In 1932, in the wake of film’s success, the Rosefield Packaging Company changed the name of its peanut butter product from “Luncheon Brand” to “Skippy,” and began (without permission) using artwork strikingly similar to the cartoon, including a similar font and scenery.
In 1933, Rosefield tried to register the SKIPPY mark for peanut butter, but the registration was denied in light of Crosby’s prior registration for his cartoon and other products. However, Crosby subsequently fell on hard times and his registration lapsed. He was involuntary committed in 1947, and that same year Rosefield swept in and finally registered the SKIPPY mark for peanut butter under the newly-passed Lanham Act.
After Crosby’s death, his daughter, Joan Crosby Tibbetts, took over the cartoon property, and there ensued several legal battles against Rosefield’s predecessors in interest, which are recounted in greater detail here. One of those battles took place in the 1980’s, when CPC International successfully blocked Crosby Tibbets’ attempt to register the SKIPPY mark in connection with various merchandise, including a Skippy-brand caramel popcorn and peanut snack. Then, in 2002, Crosby Tibbetts petitioned for cancellation of the SKIPPY peanut butter mark, alleging the discovery of new evidence that Rosefield had obtained its 1947 registration by fraud, including by not disclosing the earlier refusal to register the same mark in 1933. However, the TTAB denied this petition on the grounds that these allegations did not constitute “newly discovered evidence,” and a District Court subsequently affirmed.
The 2015 Petition
In 2015, Crosby-Tibbets filed another petition for cancellation of the SKIPPY peanut butter mark, alleging again that the initial registration was issued in error and as a result of an 81-year conspiracy to wrench the SKIPPY identity from the Crosby family. Rosefield’s current predecessor moved to dismiss and, on February 26, 2016, the TTAB allowed the motion and issued an opinion.
The TTAB held that Crosby Tibbetts’ petition was basically a repeat of the petition brought in 2002, and also that she should have made her cancellation bid in the 1980’s as a compulsory counterclaim in the action against CPC International. In fact, Crosby Tibbets had attempted to do just that in 1986, but by then it was already a few years into the proceedings, so her motion to amend and add the counterclaim was denied as untimely. The upshot: res judicata barred the 2015 petition, and the merits of Crosby Tibbets’ 70 year-old “fraud on the PTO” theory still have not been heard.
Will this be the last chapter in perhaps the longest running trademark dispute of all time? We’ve thought so before but Crosby Tibbetts, now in her 80’s, doesn’t appear to give up so easily. Two things are certain, however. First, there is perhaps no better cautionary tale for trademark owners who think it’s no big deal to let their registrations lapse. Second, as confirmed by an animated cartoon on Crosby Tibbetts’ ever-defiant website, “Skippy [Still] Hates Peenut Butter.”
Attorney David Kluft gets plaudits for reporting on this Skippy battle that he refers to as “epic”. The Skippy infringer, Hormel Foods, still claims falsely that it “owns” the SKIPPY name since 1933 at common law. But it deliberately omits the fact that, in 1934, the Trademark office Examiner denied the registration and ruled for Opposer, Skippy, Inc. Applicant Rosefield did not appeal but instead conspired to steal the SKIPPY trade name and good will Percy Crosby created, then had him locked up as a mental patient for the last 15 years of his life. Although Crosby’s daughter-Administratrix won 2 cases in New York for the Crosby estate, Hormel and its predecessors refuse to recognize that NY law governs and is res judicata in favor of Administratrix Tibbetts for Percy Crosby.
The conspiracy to steal SKIPPY by Rosefield et al. began in 1934, which multi-million dollar peanut butter racket continues. Hormel Foods refuses to pay, and ignores the common law definition of larceny: outright theft from Percy Crosby as Skippy’s celebrity creator, who was falsely imprisoned, denied his pleas for release, and denied due process.
The USPTO TTAB does not have jurisdiction to decide cases that involve serious constitutional issues of due process and denial of full faith and credit, under the “takings clause” of the Fifth Amendment. Hormel knows it has no defense of laches, res judicata, or good faith adoption with its concocted lies, and will have to make restitution as a matter of law.
Many thanks to attorney David Kluft for following this “epic” case.