Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA279836
`ESTTA Tracking number:
`04/23/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181092
`Plaintiff
`The John W. Carson Foundation
`Jonathan S. Jennings
`Pattishall, McAuliffe, Newbury, Hilliard et al
`311 South Wacker Drive, Suite 5000
`Chicago, IL 60606
`UNITED STATES
`Motion for Summary Judgment
`David Beeman
`dmb@pattishall.com, jsj@pattishall.com, pb@pattishall.com,
`rop@pattishall.com, njc@pattishall.com
`/David Beeman/
`04/23/2009
`HERES JOHNNY Motion SJ Redacted.pdf ( 60 pages )(2665844 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 77/068,472: HERE’S JOHNNY
`Published in the Ofiicial Gazette of August 28, 2007, Page TM 723 in International Class 11
`
`THE JOHN W. CARSON FOUNDATION,
`
`Opposer,
`
`V.
`
`TOILETS.COM, INC.,
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`Applicant.
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`\/‘\./\/\/§/\./\./%\/
`
`Opp. No. 91181092
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`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`ON COUNTS I AND II OF THE NOTICE OF OPPOSITION
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`In accordance with Rule 56 of the Federal Rules of Civil Procedure and rule 2.127 of the
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`Trademark Rules of Practice, Opposer moves for summary judgment on Counts I and II of the
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`Notice of Opposition — res judicata and Applicant’s lack of a bonafide intent to use the applied-
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`for mark, respectively.1 As set forth in the accompanying Memorandum, there are no genuine
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`issues of material fact as to these counts and Opposer is entitled to judgment sustaining the
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`opposition as a matter of law.
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`PATTISHALL, MCAULIFFE, NEWBURY,
`& GE
`
`LDSON LLP
`
`Dated: April 23, 2009
`
`By
`
`
`Robert M. New ury
`Jonathan S. Jennings
`Phillip Barengolts
`David Beeman
`
`311 South Wacker Drive, Suite 5000
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`Chicago, Illinois 60606
`Telephone (312) 554-8000
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`1 Oppposer reserves its right to move for summary judgment on Count III and Count IV of the Notice of Opposition
`should it not prevail in this motion.
`
`Attorneys for Opposer
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 77/068,472: HERE’S JOHNNY
`Published in the 0fi“icial Gazette of August 28, 2007, Page TM 723 in International Class 11
`
`THE JOHN W. CARSON FOUNDATION,
`
`Opposer,
`
`V.
`
`TOILETS.COM, ]NC.,
`
`Applicant.
`
`\_/\-/\/\/\/§/\J§/\)
`
`O
`Opp. No. 91181092
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`OPPOSER’S MEMORANDUM IN SUPPORT OF ITS
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`MOTION FOR SUMMARY JUDGMENT
`ON COUNTS I AND II OF THE NOTICE OF OPPOSITION
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`Applicant is attempting to register a mark that it is permanently enjoined from using. It
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`therefore can have no bona fide intent to use the applied-for mark. Moreover, this Board has
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`sustained an opposition against the registration of the same mark by the legally equivalent
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`applicant in an earlier proceeding (Opp. No. 59,479). Opposer, The John W. Carson Foundation
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`(“Opposer”), therefore is entitled to judgment as a matter of law as to Counts I and II of the
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`Notice of Opposition.
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`312952V13
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`

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`1.
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`STATEMENT OF UNDISPUTED FACTS
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`A.
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`The Same Parties That Contested the Prior Proceedings
`Are the Same Parties That Are Contesting This Proceeding
`
`1.
`
`Earl J. Braxton Owned and Controlled Here’s Johnny
`Portable Toilets, Inc.kand Owns and Controls Toilets.com, Inc.
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`Earl J. Braxton was the President and owner of Here’s Johnny Portable Toilets, Inc. See
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`Notice of Opposition ‘M 10-11 (hereinafter, “Opposition”); Answer to Notice of Opposition ‘][fl[
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`10-11 (hereinafter, “Answer”); December 31, 2008, Board Order, p. 3 (“Board Order”)? The
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`same Earl J. Braxton currently is the President and owner of Applicant, Toilets.com, Inc. See
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`Opposition ‘J[‘][ 9, 11; Answer ‘H 9, 11; Board Order, p. 3.
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`2.
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`Opposer Owns Carson’s Right of Publicity
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`John W. Carson, also known as “Johnny” Carson, created the John W. Carson Trust in
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`1988, to which he served as sole Trustee. See Exhibit A, Declaration of Lawrence L. Witzer, ‘j[ 3
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`(Ex. 1) (“Witzer Decl.”). When Carsonidied in 2005, he was domiciled in California. See Ex. A,
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`Witzer Decl. ‘][ 4. Pursuant to Carson's Will, Carson’s right of publicity passed to the John W.
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`Carson Trust upon his death. Id. Also at the time of his death, Alexis M. Carson and Lawrence
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`L. Witzer became Trustees of the John W. Carson Trust, and, as such, became the legal owners
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`of all assets of the Trust, including Carson’s right of publicity. See Ex. A, Witzer Decl. ‘JI 4 (Ex.
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`2). On June 6, 2008, in accordance with Carson’s Trust, Alexis M. Carson and Lawrence L.
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`Witzer, as Trustees of the John W. Carson Trust, assigned all rights of publicity of Carson and all
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`rights to Carson’s personality, including, but not limited to, Carson’s name, Voice, signature,
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`photograph, and likeness, to Opposer, The John W. Carson Foundation. See Ex. A, Witzer Decl.
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`‘M 5-7 (Ex.’s 3-5).
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`2 Under 37 CFR §2.122(b), the official file for Application No. 77—O68,472 is a part of the record of this proceeding
`and may be referred to for any competent purpose without any action by the parties.
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`-3-
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`

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`B.
`
`The Prior Action Between the Parties Resulted in a Permanent Injunction
`Prohibiting Braxton’s Use of HERE’S JOHNNY, which He Does Not.Dispute
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`On June 21, 1976, Here’s Johnny Portable Toilets, Inc., filed an application to register
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`HERE’S JOHNNY in the Patent and Trademark Office (“USPTO”) as a mark for portable toilets
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`(Application Ser. No. 73-091,178). See Opposition ‘i[ 13; Answer ‘J[ 13; Board Order, p. 4;
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`Applicant’s Motion for Judgment on the Pleadings, Statement of Undisputed Fact, ‘J[ 1
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`(hereinafter, “Applicant’s Motion”). On March 30, 1977, John W. Carson opposed Application
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`Ser. No. 73-091,178 (Opposition No. 59,479). See Opposition ‘j[ 14; Answer ‘j[ 14; Board Order,
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`p. 4; Applicant’s Motion, ‘][ 2.
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`Carson also filed a civil action against Here’s Johnny Portable Toilets, Inc., in the District
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`Court for the Eastern District of Michigan over its use of HERE’S JOHNNY for portable toilets.
`See Opposition ‘i[‘][ 8, 12; Answer ‘H 8, 12; Board Order, pp. 2-4; Exhibit B, Declaration of
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`Robert M. Newbury, ‘I[‘][ 3-4 (Ex.'s 1-2) (“Newbury Dec1.”); Applicant’s Motion, ‘M 2-5. On
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`appeal, in Carson v. Here ’s Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983) (the
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`“Sixth Circuit Decision”), the United States Court of Appeals for the Sixth Circuit held that
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`Carson had a right of publicity in the phrase “Here’s Johnny”. See Opposition ‘][ 8; Answer ‘][ 8;
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`Board Order, pp. 2-3; Ex. B, Newbury Decl., ‘][ 3 (Ex. 1). The court further held that the use of
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`HERE’S JOHNNY in connection with portable toilets violated Carson’s right of publicity under
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`Michigan common law. Id.; Applicant’s Motion, ‘J[ 4.
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`On remand, the United States District Court for the Eastern District of Michigan,
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`Southern Division, in Civil Action No. 77-70147, entered a nationwide permanent injunction
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`against defendant Here’s Johnny Portable Toilets, Inc., stating:
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`Defendant, its agents, servants, employees, attorneys and all others in active
`concert or participation with defendant, are hereby enjoined and restrained from
`using the phrase ‘Here’s Johnny’ as a corporate name or trade name, and from
`using said phrase on or in connection with the advertising, promotion, offering for
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`-4-
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`

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`sale or lease, selling, leasing or otherwise furnishing goods, and from otherwise
`misappropriating the public identity of John W. Carson for commercial
`exploitation.
`
`(hereinafter the “Permanent Injunction”.)3 See Opposition ‘][ 12; Answer ‘]{ 12; Board Order, pp.
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`3-4; Ex. B, Newbury Decl. ‘J[ 4 (Ex. 2); Applicant’s Motion, ‘][ 5. The United States Court of
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`Appeals for the Sixth Circuit affirmed the Permanent Injunction and its nationwide scope in
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`Carson 12. Here ’s Johnny Portable Toilets, Inc., 810 F.2d 104 (6th Cir. 1987). See Ex. B,
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`Newbury Decl. ‘][ 6 (Ex. 4).
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`Pursuant to the Permanent Injunction, on December 11, 1984, the Trademark Trial and
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`Appeal Board sustained Carson’s opposition, entered judgment against Here’s Johnny Portable
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`Toilets, Inc., and denied the application to register HERE’S JOHNNY for portable toilets
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`(hereinafter the “1984 Order”). See Opposition ‘][ 15; Answer ‘][ 15; Board Order, p. 4; Ex. B,
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`Newbury Decl. ‘][‘][ 4-5 (Ex.'s 2-3); Applicant’s Motion, ‘][‘][ 5-7. As the Board noted, “The
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`[District] court ordered, among other things, that the defendant, (applicant herein), be
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`permanently enjoined and restrained from using the phrase ‘I-lERE”S JOHNNY’ [sic]”. See Ex.
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`B, Newbury Decl. ‘H 5 (Ex. 3); Applicant's Motion, ‘][ 6. Not only does the District Court’s
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`Permanent Injunction prohibit the trademark application of HERE’S JOHNNY for portable
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`toilets, its plain language prohibits the use of “said phrase on or in connection with the
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`advertising, promotion, offer for sale or lease, selling, leasing or otherwise furnishing goods, and
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`from otherwise misappropriating the public identity of John W. Carson for commercial
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`exploitation.” Opposition ‘][ 12; Answer ‘][ 12; Board Order, pp. 3-4; Ex. B, Newbury Decl. ‘j[ 4
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`(Ex. 2); Applicant’s Motion, ‘][ 5.
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`3 This decision also is contained in the official records of the Patent and Trademark Office because it is contained in
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`the file for Opposition No. 59,479.
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`-5-
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`

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`Applicant has stated that it does not dispute the terms of the Permanent Injunction. See
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`Applicant’s Motion, ‘][‘][ 5-7.
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`II.
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`ARGUMENT
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`Summary judgment is appropriate when no genuine issue of material fact remains. Fed.
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`R. Civ. P. 56(c); see also Octocom Systems, Inc. v. Houston Computer Science, Inc., 918 F.2d
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`937, 940-41 (Fed. Cir. 1990). Though the burden is on the moving party, the non-moving party
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`must demonstrate, through specific evidence, that a genuine issue of material fact remains.
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`Celotex Corp. v. Catrezt, 477 U.S. 317, 322-27 (1986). Where the nonmoving party does not
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`present proof of a factual dispute on an essential element, summary judgment should be entered
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`against it. Anderson v. Liberty Lobby, 477 U.S. 242, 249 (1986).
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`The Board has previously acknowledged that “Opposers’ allegations sufficiently set forth
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`its claims for res judicata and lack of bona fide intent to use the mark in commerce.” See Board
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`Order dated December 31, 2008.
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`A.
`
`Opposer is Entitled to Summary Judgment as to Count II Because
`Applicant Can Have No Bona Fide Intent to Use HERE’S JOHNNY
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`Applicant must have a “bona fide intention, under circumstances showing the good faith
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`of such person” to use an app1ied—for trademark in commerce. See 15 U.S.C. § 1051. As shown
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`below, Applicant is the legally equivalent entity to Here’s Johnny Portable Toilets, Inc.
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`Applicant does not dispute the terms of the Permanent Injunction. See Applicant’s Motion, fl[‘][ 5-
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`7. Because Applicant is bound by the Permanent Injunction, Applicant’s intent to use HERE’S
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`JOHNNY in commerce cannot be bonafide. This alone establishes Opposer’s entitlement to
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`judgment as a matter of law.
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`Applicant is barred from using and applying to register the mark HERE’S JOHNNY for
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`portable toilets through its President and owner, Earl J . Braxton. The Peimanent Injunction
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`-5-
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`

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`enjoins defendant Here’s Johnny Portable Toilets, Inc., “its agents, servants, employees and all
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`others in active concert or participation with defendant.” Carson v. Here ’s Johnny Portable
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`Toilets, Inc., Civil Action No. 77-70147 (E.D. Mich. 1984), attached as EX. B, Newbury Decl. ‘j[
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`4 (Ex. 2). Applicant admits that Earl J. Braxton was the former President and owner of Here’s
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`Johnny Portable Toilets, Inc. See Opposition fl[‘j[ 9-11; Answer ‘][‘][ 9-11; Board Order, p. 3. As
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`President and owner of Here’s Johnny Portable Toilets, Inc., Earl J. Braxton, was an officer and
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`agent of defendant, and therefore bound by the plain terms of the Permanent Injunction. See
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`Opposition fl[‘][ 9-12; Answer ‘][‘j[ 9-12; Board Order, pp. 3-4; see also Fed. R. Civ. P. 65(d);
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`United States v. Hochschild, 977 F.2d 208, 213 (6th Cir. 1992) (“as an officer personally
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`identified with the corporation, defendant had actual notice of the injunction”); Dole Fresh Fruit
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`Co. v. United Banana Co., 821 F.2d 106, 109 (2d Cir. 1987) (officers and employees subject to
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`injunction under Rule 65(d) even if they “were not parties to the underlying action and were not
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`personally served”).
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`Earl J. Braxton, the President and owner of the former applicant, is now the President and
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`owner of the current Applicant. Thus, Applicant is owned and controlled bythe same individual
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`who is barred from using I-lERE’S JOHNNY. See Opposition ‘][‘][ 9-12, 15; Answer ‘M 9-12, 15 ;
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`Board Order, pp. 3-4. Applicant has actual notice of the Permanent Injunction through Mr.
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`Braxton, is in active concert and participation with him and is in privity with him. Fed. R. Civ.
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`P. 65(d) (An injunction is binding “upon the parties to the action, their officers, .
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`.
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`. and upon
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`those persons in active concert or participation with them”); Regal Knitwear v. NLRB, 324 U.S.
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`9, 14 (1945) (Rule 65(d) is derived from the “common-law doctrine that a decree of injunction
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`not only binds the parties defendant but also those identified with them in interest, in ‘privity’
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`with them, represented by them or subject to their control [because they may] be
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`

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`instrumentalities through which defendant seeks to evade order”); see also Vitronics -Corp. v.
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`Conceptronic Inc., 27 USPQ2d 1046, 1049 (D.N.H. 1992) (“there is no question that” founder,
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`president and CEO of corporation is in privity with corporation).
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`The Board’s recent decision in DaimlerChrysler Corp. v. Maydak confirms that it will
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`uphold a district court’s permanent injunction prohibiting an applicant from applying to register
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`a mark. DaimlerChrysler Corp. v. Maydak, 86 USPQ2d 1945, 1950 (TTAB 2008). In
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`DaimlerChrysler, the opposer also sued the applicant in the United States District Court for the
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`Eastern District of Michigan. Id. at 1947. Plaintiff/opposer prevailed in the litigation and, as a
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`result, the district court entered a permanent injunction prohibiting defendant/applicant from
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`using and registering the mark FORADODGE. Id. at 1949. The United States Court of Appeals
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`for the Sixth Circuit affirmed the district court’s decision. Id. at 1947. At the time the district
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`court issued the permanent injunction, it was aware of defendant/applicant’s pending application
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`to register FORADODGE in the USPTO. Id. at 1950. Upon the conclusion of the litigation, the
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`Board noted, “the decision of the Federal district court is typically binding upon the board.” Id.
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`at 1950. Moreover, the Board noted that, because of the permanent injunction, the applicant
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`would never be able to use FORADODGE in commerce, stating:
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`[W]e find that applicant is precluded from registering his mark. A requisite
`condition for registration of a mark which is the subject of an application based on
`use or an application based on intent—to—use, which may only be registered after
`use commences, is use of the mark. Thus, because the injunction permanently
`prohibits applicant from using the applied—for mark, it is a legal impossibility for
`applicant to obtain a registration.
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`Id. at 1950. The Board found opposer, former plaintiff, “entitled to summary judgment in its
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`favor as a matter of law because the terms of the permanent injunction prohibit applicant from
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`using or registering his FORADODGE mark for any goods or services”. Id. The opposition was
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`sustained. Id.
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`

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`Here, the Permanent Injunction issued by the United States District Court for the Eastern
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`District of Michigan prohibits Applicant from using HERE’S JOHNNY. It is a legal
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`impossibility for Applicant to obtain a registration, and therefore its intent to use HERE’S
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`JOHNNY cannot be bonafide under the Lanham Act.
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`B.
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`Opposer is Entitled to Summary Judgment As to Count
`I Because the Permanent Injunction and 1984 Order
`Bar the Application Under the Doctrine of Res Judicata
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`Application of res judicata is appropriate when the current and prior proceeding (1) cover
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`“identical marks and goods,” (2) involve “the same parties or those standing in privity
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`therewith,” and (3) include an “identical issue.” Foodland, Inc. v. Foodtown Super Markets,
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`Inc., 138 USPQ 591, 593 (TTAB 1963). All three prongs of this test are met and, therefore, res
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`judicata bars the application opposed herein.
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`1.
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`The Same Mark and Same Goods Are at Issue
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`In 1976, Here’s Johnny Portable Toilets, Inc., owned by Earl J. Braxton, attempted to
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`register HERE’S JOHNNY for portable toilets. Here, Toilets.Com, Inc., owned by the same
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`individual, Earl J. Braxton, has applied to register HERE’S JOHNNY for portable toilets. Thus,
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`the identical mark and the identical goods that were the subject of the prior application that
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`Carson successfully opposed are at issue in the present proceeding.
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`2.
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`Privity
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`a)
`
`Applicant Is in Privity with the Applicant
`For Application Ser. No. 73—091,l78
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`Res Judicata applies to “the same parties or those standing in privity therewith.”
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`Foodland, 138 USPQ at 593. Here, Applicant is owned and controlled by the same individual
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`who owned and controlled Here’s Johnny Portable Toilets, Inc. — Earl J. Braxton. Thus,
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`

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`Applicant is in privity with the entity subject to the Permanent Injunction and the 1984 Order.
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`See Opposition ‘J[‘][ 9-12, 15; Answer ‘][‘][ 9-12, 15; Board Order, pp. 3-4.
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`In Kreager v. General Electric Co., 497 F.2d 468, 471 (2nd Cir. 1974), the court held
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`that, under the doctrine of res judicata, a President and sole stockholder of a closely held
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`corporation was precluded from re—litigating individually claims brought by the closely held
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`corporation in a prior suit. The President previously had brought suit for conspiracy against
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`several companies in the name of his corporation. Id. at 469-470. When that action was
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`defeated, the President brought a virtually identical action, but substituted himself as the
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`plaintiff. Id. at 472. The court held that because the President and sole—stockholder had an
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`identity of interest with his corporation, he was bound under res judicata by the previous
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`judgment against the corporation. Id; see also Lewis v. Microsoft Corp., 2005 TTAB LEXIS
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`140, *15—16, Cancellation No. 92043487 (TTAB, March 17, 2005) citing Kreager at 472 (privity
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`found where petitioners admitted that they were the sole shareholders of the closely held
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`corporation that was the prior petitioner, and the record of the prior action revealed that one of
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`the current petitioners controlled the prior litigation between those parties); Vitronics Corp. v.
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`Conceptronic Inc., 27 USPQ2d 1046, 1049 (D.N.H. 1992) (founder and CEO of corporation in
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`privity with corporation).
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`In this case, Earl J. Braxton, the President and owner of the former applicant, is now the
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`President and owner of the current Applicant. Therefore, privity is established because the
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`owner and controller of the entities is the same.
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`-10-
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`

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`b)
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`Opposer Is in Privity with Carson
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`Opposer is in privity with Carson.4 See EX. A, Witzer Decl. ‘][‘][ 3-7 (EX.’s 1-5). John W.
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`Carson, who was domiciled in California at the time of his death, transferred his entire interest in
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`his right of publicity to the John W. Carson Trust; the John W. Carson Trust subsequently
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`assigned it to Opposer, The John W. Carson Foundation. Id. California law governs the
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`question of whether Carson’s right of publicity survives his death. Cairns v. Franklin Mint Co.,
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`24 F.Supp.2d 1013, 1029 (C.D. Cal. 1998), afi”d 216 F.3d 108 (9th Cir. 1999) (“[T]he law of the
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`decedent’s domicile governs whether a right of publicity is included in the decedent’s estate”);
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`see also 2 J. Thomas McCarthy, The Rights of Publicity and Privacy § 11:15 (2d ed. 2008) (in
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`California, question of post-mortem right of publicity is governed by place of domicile at time of
`
`death). Under California law:
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`[Publicity] rights. . .are property rights, freely transferable or descendible, in
`whole or in part, by contract or by means of any trust or any other testamentary
`instrument. . .The rights established by this section shall also be freely transferable
`or descendible by contract, trust, or any other testamentary instrument by any
`subsequent owner of the deceased personality’s rights as recognized by this
`section.
`
`Cal. Civ. Code § 3344.1(b); see also 2 McCarthy, The Rights of Publicity and Privacy § 9:20
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`(California has a postmortem right of publicity).
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`Even if this issue were governed by Michigan law, the outcome is the same because
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`Michigan also grants a right of publicity after death, which is transferable and descendible. See,
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`e. g., Herman Miller, Inc. v. Palazzetti Imports and Exports, Inc., 270 F.3d 298, 325 (6th Cir.
`
`2001) (acknowledging that the right of publicity is descendible under Michigan law); 2
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`4 Under the doctrine of res judicata, it does not matter if, in a subsequent action, the plaintiff “names fewer or more
`parties than the previous action,” so long as one party is in privity. Coggins v. Carpenter, 468 F.Supp. 270, 280
`(D.C. Pa. 1979); see also Drefits v. First Nat’l Bank, 424 F.2d 1171, 1175-1176 (7th Cir. 1970), cert. denied 400
`U.s. 832 (1970).
`
`-11-
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`

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`McCarthy, The Rights of Publicity and Privacy § 9:27 (Michigan has a postmortem right of
`
`publicity).
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`Thus, under both California and Michigan law, Carson’s death does not affect Opposer’s
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`right to proceed against the current application to register HERE’S JOHNNY because Opposer is
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`the owner of Carson’s right of publicity.
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`3.
`
`This Opposition Involves Identical Issues
`as the Past Proceedings Between the Parties
`
`This opposition raises identical issues to those addressed in the prior proceedings,
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`namely, the right to register HERE’S JOHNNY for portable toilets.
`
`a)
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`Federal Court Decisions
`
`As previously stated, the Permanent Injunction enjoins Applicant from registering or
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`using HERE’S JOHNNY. In Carson, the Court held that Carson has a right of publicity in the
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`phrase “Here’s Johnny” and the use of HERE’S JOHNNY in connection with portable toilets
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`violated this right. The District Court thereafter issued the Permanent Injunction. The Sixth
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`Circuit Decision and the Permanent Injunction continue in force.
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`Carson’s subsequent death does not affect the Sixth Circuit Decision and Permanent
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`Injunction under California or Michigan law. California, Carson’s domicile at the time of his
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`death (and thus the governing law for postmortem property issues like the right of publicity),
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`recognizes a descendible, postmortem right of publicity for 70 years after the death of the
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`personality. Cal. Civ. Code § 3344.1; see also Ex. A, Witzer Decl. ‘][ 4; 2 McCarthy, The Rights
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`of Publicity and Privacy § 9:20. Likewise, under Michigan law, where the Sixth Circuit
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`Decision and Permanent Injunction were entered, the right of publicity extends after the death of
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`the personality. See Herman Miller, Inc. v. Palazzetti Imports and Exports, Inc., 270 F.3d 298,
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`325 (6th Cir. 2001); see also 2 McCarthy, The Rights of Publicity and Privacy § 9:27.
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`-12-
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`

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`The Board should give effect to the binding decisions of the Sixth Circuit and District
`
`Court. Whopper—Burger, Inc. v. Burger King Corporation, 171 USPQ 805 (TTAB 1971); TBl\/LP
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`§ 510.02(a); DaimlerChrysler, 86 USPQ2d at 1950. In Whopper—Burger, the court held that the
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`decision of a United States District Court is binding upon the Patent and Trademark Office. Id.
`
`at 807. The decision was based on the recognition that a civil action resolves the question of the
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`relative rights of the parties. Id. Here, the Sixth Circuit Court of Appeals and the District Court
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`have already made a determination regarding the relative rights of the parties.
`
`b)
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`The TTAB’s 1984 Order
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`Similarly, the Board’s 1984 Order denying Applicant’s predecessor a right to register
`
`HERE’S JOHNNY for portable toilets under Section 2(a) of the Lanham Act continues in force.
`
`Even if Applicant did challenge the 1984 Order, it would make no difference. Section
`
`2(a) prohibits registration of marks that “falsely suggest a connection with persons, living or
`
`dead.” 15 U.S.C. § 1052. Therefore, Section 2(a) applies even when the famous personality is
`
`deceased, as is the case here. See, e. g., In Re Sloppy Joe ’s International Inc., 43 USPQ2d (BNA)
`
`1350, 1997 WL 424966 (TTAB 1997) (use of Ernest Herningway’s portrait and word mark
`
`without farnily’s permission for a Florida bar violated section 2(a)); see also Bufiet v. Chi-Chi ’s,
`
`Inc., 226 USPQ 428, 429 & n.4 (TTAB 1985) (noting Section 2(a) embraces the right of
`
`publicity and citing Carson, 698 F.2d at 831, for the proposition that Section 2(a) protects a
`
`person’s identity beyond simply his name or likeness). The 1984 Order and its underlying
`
`reasoning remain intact, and so the current application must be denied.
`
`All of the preceding decisions were final, and they were adjudicated on the merits. In
`
`sum, Count I for res judicata should be sustained where, as here, there exists an equivalence of
`
`marks and goods, parties and issues.
`
`-13-
`
`

`
`III.
`
`CONCLUSION
`
`The undisputed facts show that Applicant has no bonafide intent to use HERE’S
`
`JOHNNY, and Applicant’s application is barred by the doctrine of res judicata. Thus, Opposer
`
`is entitled to judgment as a matter of law. For the foregoing reasons, Opposer respectfully
`
`requests that the Board sustain this opposition.
`
`PATTISHALL, MCAULIFFE, NEWBURY,
`& GE
`LDSON LLP
`
`
`
`Dated: April 23, 2009
`
`By
`
`
`Robert M. New ry
`Jonathan S. Jennings
`Phillip Barengolts
`David Beeman
`
`311 South Wacker Drive
`
`Suite 5000
`
`Chicago, Illinois 60606
`Telephone (312) 554-8000
`
`Attorneys for Dpposer
`
`-14-
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing OPPOSER’S MOTION FOR SUMMARY
`
`JUDGMENT ON COUNTS I AND II OF THE NOTICE OF OPPOSITION and
`
`OPPOSER’S MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY
`
`JUDGNIENT ON COUNTS I AND II OF THE NOTICE OF OPPOSITION was served
`
`upon Remy J. VanOphem, 51543 Van Dyke Avenue, Shelby Township, MI 48316-4447, by
`
`first—class mail, postage prepaid, on April 23, 2009.
`
`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`I hereby certify that this OPPOSER’S MOTION FOR SUMMARY JUDGMENT ON
`
`COUNTS I AND II OF THE NOTICE OF OPPOSITION and OPPOSER’S
`
`MEMORANDUM IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT ON
`
`COUNTS I AND II OF THE NOTICE OF OPPOSITION is being electronically transmitted
`
`to the Patent and Trademark Office on April 23, 2009.
`
`

`
`EXHIBITA
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 77/068,472: HERE’S JOHNNY
`Published in the Official Gazette of August 28, 2007, Page TM 723 in International Class 11
`
`Opp. No. 91181092
`
`) ) ) )
`
`) )
`
`) ) )
`
`THE JOHN W. CARSON FOUNDATION,
`
`Opposer,
`
`V.
`
`TOILETS.COM, INC.,
`
`Applicant.
`
`DECLARATION OF LAWRENCE L. WITZER
`
`1, Lawrence L. Witzer, pursuant to 28 U.S.C. § 1746, hereby declare the following:
`
`i 1.
`
`I am Co-Executor of John W. Carson's estate, a Trustee of the John W. Carson
`
`Trust (the “Trust”), and an officer and director of The John W. Carson Foundation (the
`
`“Foundation”).
`
`2.
`
`I have personal knowledge of the facts stated herein, and could, if called as a
`
`witness, testify competently as to them.
`
`3.
`
`On October 14, 1988, John W. Carson, also known as Johnny Carson, created the
`
`Trust. Administration of the Trust is governed by California law. During his lifetime, John W.
`
`Carson served as the sole Trustee of the John W. Carson Trust. From time to time, John W.
`
`Carson amended the Trust document. Attached as Exhibit 1 are true and correct copies of pages
`
`from the Trust, as amended, including the first page and signature page.
`
`3l320Sv4
`
`

`
`4.
`
`John W. Carson was domiciled at 6962 Wildlife Road, Malibu, California 90265,
`
`at the time of his death in 2005. Pursuant to John W. Carson's Will, John W. Carson’s right of
`
`publicity passed to the Trust upon his death. Also at the time of his death, Alexis M. Carson and
`
`Lawrence L. Witzer became Trustees of the Trust and, as such, became the legal owners of all
`
`assets of the Trust, including John W. Carson’s right of publicity. Attached as Exhibit 2 is a true
`
`and correct copy of the portion of the Trust identifying Alexis M. Carson and myself as co-
`
`Trustees of the Trust.
`
`5.
`
`On June 6, 2008, the Trust assigned all rights of publicity of John W. Carson, also
`
`known as Johnny Carson, and all rights to John W. Carson’s persona, including, but not limited
`
`to, John W. Carson’s name, voice, signature, photograph, and likeness, to the Foundation.
`
`Attached as Exhibit 3 is a true and correct copy of the portion of the Trust instructing the
`
`Trustees of the Trust to assign John W. Carson’s right of publicity from the Trust to the
`
`Foundation. Attached as Exhibit 4 is a true and correct copy of the assignment of John W.
`
`Carson’s right of publicity from the Trust to the Foundation.
`
`6.
`
`The Trust registered its Claim as the successor-in-interest to all of the rights in
`
`John W. Carson’s personality with the California Secretary of State on March 9, 2005. Pursuant
`
`to the assignment of these rights to the Foundation, a representative of the Foundation registered
`
`its Claim as the successor—in-interest to all of the rights in John W. Carson’s personality with the
`
`California Secretary of State on June 6, 2008.
`
`7.
`
`The Foundation owns l00% of the interest to the rights in John W. Carson’s
`
`personality. Attached hereto as Exhibit 5 are true and correct copies of the California Secretary
`
`of State Successor-In-Interest of deceased personalities web pages obtained from the California
`
`

`
`Secretary of State website [www.sos.ca.gov/business/sf/sf_siisearchhtm], which I reviewed on
`
`April 10, 2009.
`
`I hereby certify under penalty of perjury that the foregoing is true and correct.
`
`Executed in Los Angeles, California, this 10th day of April, 2009.
`
`Lawrence L. Witzer
`
`

`
`EXHIBIT 1
`
`

`
`REDACTED
`
`

`
`EXHIBIT 2
`
`

`
`REDACTED
`
`

`
`EXHIBIT 3
`
`

`
`REDACTED
`
`

`
`EXHIBIT 4
`
`

`
`REDACTED
`
`

`
`EXHIBIT 5
`
`

`
`California Business Portal — Special Filings - Successor-In-Interest Se...
`
`http://www.sos.ca.goV/cgi—bin/sii_search.cgi
`
`
`
`
`{R BLISEHEESS P{‘¥Pélstl_
`
`Successor—In—Interest
`
`The information displayed here is updated at the beginning of the month.
`It is not a complete or certified record of the Claim as Successor-
`In—Interest.
`.
`.
`..
`..
`
`......
`
`.
`
`.
`
`.
`
`.
`
`,,
`
`Fees and instructions for requesting information relating to a successor-
`in-interest of record are included on the Sgecial Filings Records Order
`Form_
`
`New Search
`
`j
`
`Special Filings 4
`
`5
`
`Successor-In-Interest
`fislt
` Immigration Consultant
`
`“a“fi°a“°“5 3"”
`1'
`‘ W!
`Fl§
`Forms & Fees
`
`Freguently Asked
`Questions
`§ g
`_california Codes
`.
`.
`
`-
`
`,
`
`,
`
`.
`
`Search
`Results
`for:
`
`Name:Johnny Carson
`
`Company:
`
`Johnny Carson
`John W. Carson
`2005-006
`
`Technical Assistance
`
` Celebrity Name:
`Legal Name:
`File Number:
`
` [
`
`
`
`Filing status:
`
`active
`
`File date:
`
`03/09/2005
`
`Date of death:
`
`01/23/2005
`
`Transferred by:
`
`trust
`
`Name of c|aimant; Alexis M. Carson and Lawrence L.
`Witzer, Trustees of the John W.
`Carson Trust dated October 14,
`1988
`
`Address of
`claimant;
`
`9350 Wilshire Blvd., Ste. 250.
`Beverly Hills, CA 90212
`
`Percentage
`interest claimed:
`
`100%
`
`Above percentage all types of rights
`claimed in:
`
`Celebrity Name:
`
`Johnny Carson
`
`Legal Name:
`
`John W. Carson
`
`File Number:
`
`2008-018
`
`Filing status:
`
`active
`
`File date:
`
`06/06/2008
`
`1of2
`
`4/l0/2009 9:39AM
`
`

`
`Calitornia Business Portal - Special Filings — Successor-In-Interest Se...
`
`http://www.sos.ca.gov/cgi-bin/sii_search.cgi
`
`Date of death:
`
`01/23/2005
`
`Transferred by:
`
`trust
`
`Name of Claimant: The John W. Carson Foundation
`
`Address of
`ciaimant;
`
`9350 Wilshire Blvd., Ste 250,
`Beverly Hills Ca 90212
`
`Percentage
`interest claimed:
`
`100%
`
`Above percentage all types of rights
`claimed in:
`
`New Search
`
`Copyright © 2004 California Secretary of State. ?iiiva§y4Sta,terg1“ent.
`
`2 of2
`
`4/10/2009 9:39AM
`
`

`
`EXHIBIT B
`
`

`
`/'
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 77/068,472: HERE’S JOHNNY
`Published in the Ofiicial Gazette of August 28, 2007, Page TM 723 in International Class 11
`
`THE JOHN W. CARSON FOUNDATION,
`
`Opposer,
`
`V.
`
`TOILETS.COM, 1Nc.’,
`
`Applicant.
`
`\./\./\—/§/\/\./\./\J\J
`
`Opp. No. 91181092
`
`DECLARATION OF ROBERT M. NEWBURY
`
`In accordance with 28 U.S.C. § 1746, 1, Robert M. Newbury, declare as follows:
`
`1.
`
`I am a partner with the law firm of Pattishall McAuliffe Newbury Hilliard &
`
`Geraldson LLP ("Pattisha1l "), counsel for Opposer, The John W. Carson Foundati