By Wilton H. Strickland

In 2015 I was struggling to establish my own practice, having sworn off working in law firms or for any other employer again. Times were tough. I was burning through savings while scrambling to find clients any which way I could, and many days would pass without hearing the phone or seeing an email. On one such day I was preparing to go to lunch and figure things out when the phone suddenly rang. When I answered, an elderly woman introduced herself as Joan Crosby Tibbetts, and she told me a story I never knew of and had difficulty believing.

Joan’s father, Percy Crosby, had created a wildly popular comic strip in the 1920s about a mischievous boy called Skippy, whose namesake had been stolen to advertise the famous peanut butter. In the 1930s a peanut-butter manufacturer named Rosefield Packing Company (“Rosefield”) attempted to use the Skippy name without authorization, and in 1934 Percy obtained a favorable ruling from the Patent and Trademark Office (“PTO”) prohibiting such use. Rosefield and its allies thereafter embarked on a strategy to ignore the ruling while undermining and destroying Percy. As part of this strategy, they defamed him as a tax cheat to mire him in legal troubles, and they made new applications with every state government to use the Skippy name for peanut butter. These efforts culminated in the late 1940s when Rosefield used the new Lanham Act to file a new Skippy application with the PTO that was granted, and when Percy was involuntarily committed to a mental asylum where he would live out his days until dying in 1964. Shortly after his death, the file containing the 1934 ruling in his favor was mysteriously destroyed. Joan went on to litigate these matters for decades in a desperate effort to reclaim her father’s legacy.

After hearing all this, I asked her what she wanted to do and how I might help. She explained that Hormel Foods recently had acquired the rights to Skippy peanut butter, and she wanted to file a new petition with the PTO to cancel the registration on the basis that Rosefield had obtained it by fraud (by falsely swearing there were no obstacles to Rosefield’s claim, when the adverse PTO decision from 1934 was well known). I told her that I had handled intellectual-property disputes on a few prior occasions, but this one appeared futile because of the many years of unsuccessful litigation that she already had waged. Hormel would surely argue that any new challenge was barred by preclusive doctrines such as res judicata and collateral estoppel. She urged me to review the file materials to see if I could find a credible argument to overcome those defenses, though she admitted that she would not be able to pay me much. I thought that, at a minimum, I should review the materials to make an informed decision. I also relished the challenge of taking on a behemoth such as Hormel, who surely retained the types of big law firms that I once worked for and knew to be far more expensive than skillful. On top of all that, Joan lived in a town in central Florida close to where my father had retired, and her mission to fight for her father resonated with me.

I reviewed the materials, performed some research, and concluded that indeed I could make a valid argument to cancel the Rosefield registration. One critical reason was the favorable 1934 decision by the PTO in favor of Percy, which was the original ruling that deserved deference but had been ignored ever since. Another critical reason was that the various and sundry holders of the Rosefield registration persistently relied on a 1980 federal court decision treating that registration as “incontestable,” ignoring that the decision had been vacated on appeal two years later in Skippy, Inc. v. CPC Int’l, Inc., 674 F.2d 209 (4th Cir. 1982). The Fourth Circuit ruled that the affidavit supporting the Rosefield registration indeed was false and that Joan (through her company Skippy, Inc.) remained free to challenge it as intentionally fraudulent. None of the proceedings since that time devoted serious analysis to these issues or the underlying facts, but rather swept them under the rug in a manner that can best be described as willful blindness.

So, I went to work with Joan and helped her prepare a new petition with new evidence showing that the Rosefield affidavit was fraudulent and could not support the current registration held by Hormel Foods. This was David versus Goliath, as an elderly woman with a nomadic lawyer by her side was going to war against a massive corporation and its entrenched, white-shoe law firms. Once we completed the essential components of the petition, I prepared an additional legal memorandum explaining why Hormel Foods could not rely on preclusive doctrines such as res judicata or collateral estoppel to avoid an examination of the merits, which was long overdue.

Predictably, Hormel filed a motion to dismiss that ignored most of my points and regurgitated the arguments that had worked for the prior holders of the Rosefield registration. I chuckled because I knew that Hormel’s lawyers must have charged an arm and a leg for this dishwatery response. I prepared an opposition that, among other things, reminded the PTO that defenses such as res judicata and collateral estoppel cannot support a motion to dismiss except in rare circumstances not at issue. The PTO agreed with me and decided that Hormel must bring its arguments as a motion for summary judgment that cited external evidence.

Hormel filed its motion for summary judgment and was more thorough this time, arguing that Joan had waived her arguments by failing to raise them during contested proceedings in 1986 and in 2002. In my response, I explained that the 1986 proceeding was an infringement claim against Joan that did not obligate her to assert a counterclaim to cancel the Rosefield registration. I also explained that the court in the 2002 proceeding refused to hear Joan’s arguments by treating them as barred by the 1980 federal decision, which was flatly incorrect as a matter of law because of the 1982 appellate ruling vacating that decision. In other words, Joan already had been deprived of her right to argue the merits of her claim and should be allowed to present those merits at long last.

The PTO eventually issued a terse ruling in favor of Hormel that echoed its points without probing beneath them or examining the merits of Joan’s claim. I was saddened but not particularly surprised. The long years and the large amount of money behind the Rosefield registration made it highly unlikely that any tribunal would question it, no matter how valid the reasons might be. This harsh reality contradicts the ancient legal maxim of ex injuria jus non oritur: “a right does not arise from a wrong.” Unfortunately, rights often do arise from wrongs.

I consoled Joan, who said she understood and that she still appreciated my help. She was a child of the Depression and tough as nails. In gratitude, she sent me a bound volume of some of the old Skippy cartoons (the volume’s cover is the image sitting atop this post). I went on with my life and found new battles to fight on behalf of new clients, fulfilling my dream of being my own boss. Joan passed away in 2019, just a few miles away from where my father passed away in 2018.

I do not eat Skippy peanut butter.