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Stanfield v. Osborne Industries, Inc.

52 F.3d 867 (10th Cir. 1995)

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Stanfield v. Osborne Industries, Inc.

United States Court of Appeals for the Tenth Circuit

52 F.3d 867 (10th Cir. 1995)

Facts

Phillip Stanfield (plaintiff) designed a heating pad for newborn hogs and other agricultural products. Stanley and Ronald Thibault were the president and vice-president of Osborne Industries, Inc. (Osborne) (defendants). Osborne manufactured Stanfield’s products in exchange for royalties on the sales. Osborne also hired Stanfield as an employee. When Osborne decided to develop a trademark for Stanfield’s products, Stanfield insisted that the word “Stanfield” appear in the mark. Osborne agreed, and entered into a licensing agreement with Stanfield to license the Stanfield mark for 15 years. Osborne developed two marks using the word “Stanfield” and registered the marks with the Patent and Trademark Office. Two months later, Stanfield resigned from Osborne and was no longer involved with the company in any way. After Stanfield’s 15-year licensing agreement with Osborne expired, Osborne continued to use the marks over Stanfield’s objection. Among other claims, Stanfield sued Osborne for trademark infringement. Osborne argued that Stanfield had abandoned his rights to the marks by executing a naked license with Osborne. A naked license gives a licensee use of a trademark without the licensor exercising control over the quality of type of goods bearing the mark. The district court found for Osborne. Stanfield appealed.

Rule of Law

Issue

Holding and Reasoning (Tacha, J.)

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