throbber
Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA369003
`ESTTA Tracking number:
`09/17/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92051212
`Plaintiff
`Karen L. Willis
`KAREN L. WILLIS
`740 MARKET STREET
`SAN DIEGO, CA 92101
`UNITED STATES
`karen@victorwillisworld.com
`Opposition/Response to Motion
`Karen L. Willis
`karen@victorwillisworld.com
`//Karen L. Willis//
`09/17/2010
`Opposition to MSJ.pdf ( 16 pages )(1265679 bytes )
`Declaration of Karen L. Willis.pdf ( 3 pages )(193276 bytes )
`Declaration of Victor E. Willis.pdf ( 3 pages )(185356 bytes )
`Exhibit A.pdf ( 2 pages )(74042 bytes )
`Exhibit B.pdf ( 96 pages )(16510010 bytes )
`Exhibit C.pdf ( 136 pages )(13050885 bytes )
`Exhibit D.pdf ( 16 pages )(2053895 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Registration No: 2,184,290
`Registration Date: August 25, 1998
`
`CANCELLATION NO: 92051212
`
`KAREN L. WILLIS,
`
`v.
`
`Petitioner,
`
`CAN’T STOP PRODUCTIONS, INC.
`
`Registrant
`
`PETITIONER’S BRIEF IN OPPOSTION TO REGISTRANT ’S
`
`MOTION FOR SUMMARY JUDGMENT
`
`INTRODUCTION
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`Registrant, Can’t Stop Productions, Inc. (“CAN‘T STOP”) seeks Summary
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`Judgment against Petitioner Karen L. Willis (“Willis”) who seeks to cancel the mark
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`“Village People” (Serial No. 2,184,290) for Fraud, Abandonment, and Genericness.
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`Can’t Stop’s in-artful and creative reading have led it to conclude that the cancellation
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`petition is filled with unsupportable allegations and conclusions. In reality, Willis’
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`Petition has substantial merit and ample evidence annexed with declarations and
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`supporting evidentiary documents requiring the motion for summary judgment be denied
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`in every respect.
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`

`
`BACKGROUND
`
`CANT STOP is a company setup in America by a French citizen named Henri
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`Belolo. From day one, CAN’T STOP’s purpose has been to defraud; to the personal
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`benefit of Belolo and his French music publishing empire known as Scorpio. Throughout
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`the 1970s and early 1980s, CAN’T STOP functioned as a production/record company
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`with use of major distribution companies like Casablanca and Polygram Music.
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`In 1976 CAN’T STOP secured a questionable agreement with Willis’ husband
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`[Victor Willis, the original lead singer and writer for Village People]. The deal called for
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`Willis’ husband to record as album for non-existent group called Village People.
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`However, CAN’T STOP did not have a group at that time so they recruited Willis’
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`husband to record an album as if he was a group called Village People. In efforts to
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`further deceive the public; CAN’T STOP found random models to grace the cover of the
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`album, and for financial gain, quickly released the album to the non-suspecting public.
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`The album quickly raced up the charts and soon Willis’ husband was being
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`offered concert appearances, as well as Dick Clark’s American Bandstand. But there was
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`one problem; Village People was simply Willis’ husband. So CAN’T STOP quickly
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`assembled 5 guys to accompany Willis’ husband on American Bandstand in efforts to
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`continue deceiving the public i11to believing that Village People was something real. It
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`was not. The other guys were quickly let go after the American Bandstand appearance
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`with Willis’s husband.
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`Only after Willis’ husband had all but completed the second Village People album
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`titled Macho Man did CAN’T STOP hold auditions for 5 guys to back Willis’ husband as
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`Village People. But there was one other problem, the Village People product mark and
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`

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`sound, with use of Willis’ husband’s lead vocals and his heavily-dubbed background
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`vocals with additional professional background vocals, was solidified in the public’s
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`mind by that time. So CAN’T STOP decided that though 5 guys had been hired to back
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`Willis’ husband as Village People, all Village People recordings would continue with use
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`of Willis’ husband’s vocals backed with professional background vocals as before, not
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`with use of the other 5 Village People members. And so it was with all other Village
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`People hits like “Y.M.C.A.” “Macho Man,” “In the Navy,” “Go West,” etc., the albums
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`continued to be recorded by Victor Willis, not other Village People members.
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`Willis’ husband’s name, voice and music are synonymous with the Village People
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`and is the source with which the mark is associated. By the early 1980s Petitioner’s
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`husband had had enough of the fraud and was quickly let go. The group was
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`immediately finished as a hit recording group with Willis’ departure and soon disbanded.
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`In the late 1980s CAN’T STOP started licensing the mark Village People for
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`purposes of live performances (not for recording purposes) without informing the public
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`that this new Village People is not the same as the product with which the mark is
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`associated, therein causing public confusion.
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`For example, CAN’T STOP has in the past, and continues to license the Village
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`People mark in a manner which allows the current Village People to pass themselves off
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`as being one in the same as the original Victor Willis Village People which recorded hits
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`like YMCA and Macho Man with which the mark is associated, which likewise causes
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`public COI]fllSlOIl. This interferes with Willis’ husband’s ability to claim and reap the
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`benefits of his own success as a singer and writer and interferes with Willis ability to
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`

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`properly manage him. Moreover, CAN’T STOP continues to prevent from commerce
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`the actual source [Victor Willis] of the product with which the mark is associated.
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`By 2009, Willis had had enough and sought to cancel the Village People marks
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`based on Fraud, Abandonment, and Genericness.
`
`In response CAN’T STOP filed a
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`motion for summary judgment. In the midst of this however, CAN’T STOP sensing it’s
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`vulnerability on the issue of phonograph records and audio cassettes and knowing the
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`TTAB would refuse any effort by them to amend the application to remove these items,
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`CAN’T STOP, being the dishonest company it has always and continues to be, file an
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`application for a new mark in class 9 on December 21, 2009, about 5 months after Willis
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`filed the subject petition for cancellation.
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`Unbeknownst to Willis, and obviously unbeknownst to the examining attorney
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`and Interlocutory Attorney in this matter, CAN’T STOP’s new Village People trademark
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`in international class 9, which conveniently omits phonograph records and audio
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`cassettes, actually registered on July 20, 2010 (Registration No. 3,821,800). See Ex. A
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`Registration Certificate. Willis will file a new petition to cancel the new mark forthwith,
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`Registration No. 3,821,800, as a sham and fraud. Willis will also seek to have the new
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`petition merged with Cancellation No. 92051212.
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`CAN’T STOP’s attempt to have any decision to cancel the mark based their
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`obviously discontinued marketing of phonograph records and audio cassette recordings as
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`moot, must fail. Furthermore, CAN’T STOP should not be allowed to circumvent, and
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`make a mockery out of the TTAB proceedings.
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`

`
`STANDARD FOR SUMMARY JUDGMENT
`
`Rule 56(a) of the Federal Rules of Civil Procedure, adopted as TBMP § 528,
`
`allows for summary judgment when there are no genuine issues of material fact in
`
`dispute. Summary judgment is inappropriate if a dispute about a material fact is
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`genuine, “that is, if the evidence is such that a reasonable jury could return a verdict for
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`the nonmoving party.” Anderson V. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`Summary judgment will be granted “only where the moving party is entitled to judgment
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`as a matter of law, where it is quite clear what the truth is, .
`
`.
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`. [and Where] no genuine
`
`issue remains for trial .
`
`.
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`. [for] the purpose of the rule is not to cut litigants off from the
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`right of trial .
`
`.
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`. if they really have issues to try.” Poller V. Columbia Broadcasting Sys.,
`
`Inc., 368 U.S. 464,467 (1962) (quoting Sartor v. Arkansas Natural Gas Corp., 321 U.S.
`
`620, 627 (1944)).
`
`To prevail on its Motion, CAN’T STOP must prove that there are no disputed
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`facts and that there is an “absence of evidence to support the non-moving pa1ty’s case.”
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`TBMP § 528.01. “The burden in a motion for summary judgment is on the moving party
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`to establish prima facie that there is no genuine issue of material fact .
`
`. .” Shalom
`
`Chi1dren’s Wear Inc. v. ln-Wear A/S, 26 USPQ2d 1516, 1518 (TTAB 1993), and “all
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`inferences to be drawn from the undisputed facts must be viewed in the light most
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`favorable to the nonmoving party. . .”
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`Moreover, “ [a] ll doubts as to whether or not particular factual issues are
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`genuinely in dispute must be resolved against the moving party.” Flately v. Trump, 11
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`USPQ2d 1284, 1287 (TTAB 1989). When all inferences are drawn in favor of WILLIS,
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`

`
`this Opposition presents genuine issues of material fact which compel denial of CAN’T
`
`STOP’ Motion for Summary Judgment.
`
`ARGUMENT
`
`1.
`
`STATEMENT OF DISPUTED FACTUAL ISSUES
`
`The following unresolved issues of material fact preclude Summary Judgment:
`
`A. AS TO FRAUD:
`
`1. Whether at the time of filing the November 17, 1993 application, and all
`
`subsequent related filings, CAN’T STOP knowingly made false, material
`
`representations with the intent to deceive the PTO when it knew it had already
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`used the mark “Village People,” as early as 1977 as opposed to the 1978 date
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`stated in its application;
`
`2. Whether at the time of filing its November 17, 1993 application, and all
`
`subsequent filings, CAN’T STOP knowingly made false, material representations
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`with the intent to deceive the PTO when it swore that the mark shown had been in
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`continuous use in interstate commerce for at least five years from August 25,
`
`1998 to the present” on all the goods and services identified in each and every
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`category, i.e., “pre—recorded phonograph records [and] audio cassettes [and]
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`compact discs.”
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`3. Whether CAN’T STOP or any LICENSEE at the time of filing its November 17,
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`1993 application, and all subsequent related filings, was actually using the mark
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`in commerce on or in connection with ALL the goods and/or services identified in
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`each and every category listed, i.e., “pre-recorded phonograph records [and] audio
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`cassettes [and] compact discs.”
`
`

`
`The following unresolved issues of material fact preclude Summary Judgment:
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`B. AS TO ABANDOMENT:
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`1. Whether CAN’T STOP or its licensee at the time of filing its November 17, 1993
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`application, and all subsequent related filings, had abandoned for purposes of
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`commerce; the production, marketing and/or distribution of (a) pre-recorded
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`phonograph records; and (b) pre-recorded audio cassettes with respect to the mark
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`in question;
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`2. Whether CAN’T STOP or its related company or licensees, intend to restune a
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`bona fide use in commerce of (a) pre-recorded phonograph records; and (b) pre-
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`recorded audio cassettes with respect to the Village People products in question.
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`3. Whether CAN’T STOP’s refusal and/or failure to record new Village People
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`music for use in commerce constitutes abandonment of recorded and/or pre-
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`recorded music in international class 9.
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`The following unresolved issues of material fact preclude Summary Judgment:
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`C. AS TO GENERICNESS:
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`1. Whether the term Village People, now as in the past, being widely used
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`descriptively by the media, the public, tribal communities, nonprofit
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`organizations, banks, global/intemational assistance programs, radio music
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`programs and festivals, supports the contention that the mark is generic;
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`2. Whether the term Village People is a common descriptive term, which cannot
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`function as a mark.
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`

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`II.
`
`IT IS AN UNRESOLVED ISSUE OF FACT AS TO
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`WHETHER REGISTRANT MADE AN INTENTIONAL
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`FALSE MISREPRESENTATION WITH THE INTENT
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`TO DECEIVE WITH RESPECT TO THE DATE OF FIRST USE
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`In its motion for summary judgment, Registrant conveniently limits its argument
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`to simply a first use date issue. “A misstatement of the date of first use in the application
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`is not fatal to the securing of a valid registration as long as there has been valid use of the
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`mark prior to the filing date.” Motion, p.5. Registrant however omits the crux of the
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`Fraud argument alleged in the petition for cancellation. That is, that “no such use by
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`Registrant in connection with the goods identified in the application and the specimen
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`provided, was in commerce by Registrant.” Petition j 10. The goods identified are the
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`“Village People,” consisting of six performers of “music and vocals.” See Ex. B
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`Application and Record; See also specimens contained therein.
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`As stated in the declaration of Victor Willis annexed hereto, no six group
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`members existed in 1977. In fact, no Village People existed at all in 1977, simply Victor
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`Willis. Moreover, random models were selected to grace the album cover in efforts by
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`Registrant to deceive the public into believing that a music and vocal group existed when
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`it did not. In fact, not even Victor Willis appeared on the album cover. And he was the
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`only singer. The purpose was simply to deceive the public, to the financial benefit of
`
`
`Registrant. V. Willis Dec.j5.
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`There is a genuine issue of fact as to whether there was indeed a valid use of the
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`mark in commerce prior to the filing date. This challenges Registrant’s contention that
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`“[a] misstatement of the date of first use in the application is not fatal to the securing of a
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`valid registration as long as there has been valid use of the mark prior to the filing date.
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`Here, the petition for cancellation alleges the use was not valid in 1977. “No such use by
`/
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`

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`Registrant in connection with the goods identified in the application and the specimen
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`provided was in commerce by Registrant.” Petition j 10. Registrant knew this to be a
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`fact so he omitted this date in lieu of a more convenient use date of 1978, therein
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`willfully deceiving the USPTO.
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`Accordingly, a question of fact remains as to whether Registrant knowingly made
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`a false, material representation with the intent to deceive the PTO with respect to the
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`misstatement of the date of first use. “As a general rule, the factual question of intent is
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`particularly unsuited to disposition on summary judgment.” Copelands ’ Enterprises, Inc.
`
`v. CNV, Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed Cir. 1991).
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`What is more, the declaration of Henri Belolo failed to suggest that his obvious
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`misstatement of the date of first use was occasioned by honest misunderstanding, or
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`inadvertence, without a willful intent to deceive, pursuant to the holding in Re Bose.
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`Clearly Petitioner’s evidence, inter alia, the declaration of Victor Willis, and the
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`Applicant’s record annexed hereto, support an inference of deceptive intent, which
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`remains a question of fact. The declaration of Henri Belolo fails to challenge this in any
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`respect.
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`III.
`
`IT IS AN UNRESOLVED ISSUE OF FACT AS TO
`WHETHER REGISTRANT MADE AN INTENTIONAL
`
`FALSE NIISREPRESENTATION WITH THE INTENT
`TO DECEIVE WITH RESPECT THE ISSUE OF FIVE
`YEARS CONTINUOUS USE
`
`Here Registrant’s creative reading of the petition for cancellation continues in the
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`narrowest sense. Registrant stated “[a] submitted specimen must illustrate current use (as
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`of the time of its submission) and there is no requirement that the specimen itself was in
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`

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`use for five years prior to the submission.” Motion 12.7.
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`If all Petitioner eluded to was
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`the specimen that Registrant likewise alludes to, Registrant might have a point.
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`But there’s more. The petition for cancellation states “[n]o such use by Registrant
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`in connection with the goods identified in the application and the specimen provided, was
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`in commerce by Registrant.” Petition j 13. The goods identified in the application are
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`“pre-recorded phonograph records, audio cassettes, audio tapes and compact discs
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`featuring music and vocals.”
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`etition 15. The no such use, inter alia, “continuous use in
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`interstate commerce for at least five years from August 25, 1998 to the present,” refers
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`not only to the specimen but to phonograph records, and/or audio cassettes as well.
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`There remains a glairing question of fact whether CAN’T STOP, or any of its so
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`called affiliates or licensees, still had in interstate commerce in 1993, 2004, and 2008,
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`any audio cassettes, and/or any phonograph records of the Village People product in
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`question, at the time of filing its November 17, 1993 application, and all subsequent
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`related filings (2004-2008).
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`Nowhere, in the declaration of Henri Belolo does it challenge this question of
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`fact. Moreover, in support of his declaration, Belolo proffers Exhibit F in support of his
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`use of the mark in interstate commerce. However, Belolo’sfy. e., and Barnes and Nobel
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`attachment in support of the declaration suggests that the use ofthe mark in interstate
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`commerce is only in connection CD ’s, i.e., compact discs. And there’s good reason for
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`this. Belolo knows that he and his affiliates and or licensee discontinued audio cassettes
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`and CD’s at least 25 years ago and are unable to show evidence of the mark in use on
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`audio cassette and phonograph records, in 1993, 2004 and 2008.
`
`10
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`

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`Be that as it may, Registrant swore time and time again that phonograph records,
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`and audio cassettes are likewise still in interstate commerce. And that phonograph
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`records, and audio cassettes had been in interstate commerce for at least five consecutive
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`years at the time of the 1993 application and all related renewals (2004-2008).
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`Statements under oath in statements of use, Section 8 declarations of use and
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`renewals should be made “with a degree of solemnity requiring through investigation
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`prior to signature and submission to the USPTO.” Herbaceuticals Inc. v. Xel
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`Herbaceuticals Inc., 86 USPQ2d I5 72, 1 5 77 (TTAB 2008). “Fraud carmot be cured
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`merely by deleting from the registration those goods on which the mark was not used at
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`the time of the signing of a use-based application or Section 8 affidavit.” Turbo
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`Sportswear Inc. v. Marmot Mountain Ltd., 77 USPQ2d I I I5, 115 (TTAB 2005).
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`If fraud can be shown in the procurement of a registration, the registration is Void in the
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`international classes in which fraud based on nonuse has been committed.
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`Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d I5 72, I 5 77 (TTAB 2008).
`
`As stated prior, there remains a question of fact whether CAN’T STOP, or any of
`
`its so called affiliates or licensees, still had in interstate commerce in 1993, 2004, and
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`2008, audio cassettes, and/or any phonograph records of the Village People product in
`
`question. Registrant’s declaration failed to offer any evidence that challenges this
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`remaining question of fact.
`
`Finally, in its summary judgment motion, CAN’T STOP states “[p]etitioner’s
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`basis for asserting non-use by Registrant in 1993, 2004 and 2008 appears to be based on
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`the contention that the actual usage was made by Universal Music and Video
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`Distribution.” Motion p. 8. Petitioner hereby concedes this argument pursuant to the
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`11
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`

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`authorities provided in support thereof and will no longer pursue this as one of the
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`reasons for cancellation of the mark.
`
`IV.
`
`IT IS AN UNRESOLVED ISSUE OF FACT AS TO
`WHETHER REGISTRANT AND ITS LICENSEES HAS
`ABANDONED THE MARK FOR USE IN INTERSTATE
`COMMERCE ON AUDIO CASSETTES AND
`
`PHONOGRAPH RECORDS
`
`There remains an unresolved question of fact as to whether Registrant has
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`abandoned the mark for use in interstate commerce on audio cassettes and phonograph
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`records. Even if other arguments with respect to abandonment are dismissed, and they
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`cannot be, the strongest argument for abandonment remains the question of fact as to
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`whether by virtue of CAN’T STOP and its licensees, no longer having in commerce
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`phonograph records and audio cassettes, this would likewise support a cause of action for
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`abandonment of the mark for use on those items pursuant to the application, Section 8
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`renewal and other renewals swearing the marking was in use on those items. They are
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`not.
`
`Section 45 of the Trademark Act, 15 U.S.C. Section 1127, provides that a mark is
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`abandoned when "its use has been discontinued with intent not to resume use....
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`Nonuse for three consecutive years shall be prima facie evidence of abandonment."
`
`Here, Registrant’s own evidence in support of its declaration show only CD’s for sale.
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` . For example, the oldest product shown to be
`
`in interstate commerce is the Macho Man CD with a release date of 1994. The latest CDs
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`appear to be Night: The History (12/27/2005). mid.
`
`In its declaration, CAN’T STOP did not address the issue of abandonment as
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`alleged in the petition for cancellation. Therefore, the abandonment cause of action is not
`
`12
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`

`
`specifically challenged with a competent declaration and supporting evidence. Summary
`
`judgment will be granted “only where the moving party is entitled to judgment as a
`
`matter of law, where it is quite clear what the truth is, .
`
`. .” Poller v. Columbia
`
`Broadcasting Sys., Inc., 368 US. 464, 467 (1962) (quoting Sartor v. Arkansas Natural
`
`Gas Corp., 321 US 620, 627 (1944)). In addition, abandonment of a mark cannot be
`
`reversed by subsequent re—adoption of a mark. Parfums Nautee Ltd. v. American
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`International Industries, 22 USPQ2d 1306, 1310 (TTAB 1992).
`
`CAN’T STOP’s own declaration suggest that the total lack of corroborating
`
`evidence of sales and use of such goods under the mark clearly establishes a prima facie
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`case of abandonment of Registrant’s mark with respect to audio cassettes and phonograph
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`records. As such, an issue of fact remains as to whether Registrant has abandoned the
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`mark in connection with phonograph records and audio cassettes for at least three
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`consecutive years.
`
`V.
`
`IT IS AN UNRESOLVED ISSUE OF FACT AS TO
`
`WHETHER REGISTRANT MARK IS GENERIC
`
`CAN’T STOP provided no declaration and supporting evidence that the mark
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`isn’t generic. In fact, the term generic is not so much as hinted at in the declaration.
`
`Therefore, Registrant has not competently challenged Petitioner’s contention that the
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`mark is in fact generic. As such, an unresolved question fact remains.
`
`Exhibit C annexed hereto by Petitioner show the mark used generically in use
`
`with over 25 different associations with numerous articles, products and services. In fact,
`
`the mark has been exposed to the public countless times and numerous associations’
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`other than Registrant’s product. In fact, Registrant is on record confirming that the mark
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`is simply descriptive of people in the New York’s Greenwich Village. Beloloz “We
`
`13
`
`

`
`named it the Village People, because we discovered these characters in the Village. So
`
`we said, OK, they are the guys ofthe Village. ” EX. D, Henri Belolo & Jacgues Morali,
`
`p.3. gSee also Village People Biography, p.2 ). Here, the owner of the mark seems to
`
`admit that the mark is not only generic but also descriptive which clearly poses a question
`
`of fact with respect to genericness. And just like the mark suggest, Village People is the
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`definition of a community of people. The words are indeed compound.
`
`Annexed hereto is the declaration of Petitioner with proof of over 25 instances of
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`different uses of the mark Village People in interstate commerce. Substantiating the term
`
`is widely used by the public, media, publications, festivals, banks, nonprofits,
`
`entertainment dance troupe, music/radio programs, on products and services other than
`
`registrant’s goods and services. The genericness inquiry is made according to a two-part
`
`test: “First, what is the genus of goods or services at issue? Second, is the term sought to be
`
`registered .
`
`.
`
`. understood by the relevant public primarily to refer to that genus of goods or
`
`services?” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed.
`
`Cir. 1986).
`
`Petitioner’s evidence establishes a question of fact whether the mark is understood by
`
`the relevant public for a genus of goods or services, other than the Registrant’s good or
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`services.
`
`//
`
`//
`
`//
`
`//
`
`//
`
`//
`
`14
`
`

`
`CONCLUSION
`
`For all the reasons set forth in Petitioner’s opposition the Registrant’s motion for
`
`summary judgment, the motion should be denied with respect to each and every basis for
`
`cancellation.
`
`Respectfully submitted,
`
`Dated: September 17, 2010
`
`
`
`
`
`
`Karen /. Willis, J.D.
`Petitioner
`
`15
`
`

`
`CERTIFICATE OF SERVICE
`
`Pursuant to C.R.I7. § 2.11, I hereby certify that on September 17, 2010, a true and correct
`
`copy of the foregoing Brief in Opposition to Summary Judgment was served, Via
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`overnight courier, on Registrant Can’t Stop Productions, Inc., at the following address:
`
`Elliott W. Lippins
`Jay A. Bondell
`LADAS & PARRY LLP
`26 West 61“ Street, 4th Floor
`New York, New York 10023
`
`
`
`16
`
`

`
`Registration No: 2,184,290
`Registration Date: August 25, 1998
`
`CANCELLATION NO: 92051212
`
`
`
`KAREN L. VVILLIS,
`
`V.
`
`Petitioner,
`
`CAN’T STOP PRODUCTIONS, INC.
`
`Registrant
`
`DECLARATION OF KAREN L. WILLIS
`
`I, Karen L. Willis, declare:
`
`1.
`
`I am the Petitioner in the cancellation matter of U.S. Trademark Registration
`
`No. 2, 184,290. I am the wife and business manager of Victor Willis, the original lead
`
`singer of Village People, and writer of such hits as “Y.M.C.A,” Macho Man,” “In the
`
`Navy,” and “Go West.”
`
`2.
`
`I first discovered that Can’t Stop was claiming to still have in commerce audio
`
`cassettes and phonograph records in January 2009 after performing a search and review
`
`of the trademarks held by the company.
`
`3.
`
`I have personal knowledge that on November 17, 1993 and all subsequent related
`
`

`
`filing dates, Can’t Stop knowingly made false, material misrepresentations with the intent
`
`to deceive the USPTO when it failed to disclose the l977 date of fist use of the mark
`
`Village People.
`
`4.
`
`I have personal knowledge that on November 17, 1993 and all subsequent
`
`related filing dates, Can’t Stop knowingly made false, material misrepresentations with
`
`the intent to deceive the USPTO when it swore that the mark had been in continuous use
`
`in interstate commerce for at last five years from August 25, 1998 to the present, on
`
`prerecorded phonograph records and audio cassettes. And that neither Can’t Stop nor its
`
`licensees was actually using the mark in interstate commerce on phonograph records and
`
`audio cassettes for at least 3 years prior to the 1993 application and all subsequent filings
`
`and renewals.
`
`5.
`
`I have personal knowledge that audio cassettes and phonograph records was
`
`discontinued in interstate commerce by Registrant with respect to the use ofthe mark as
`
`far back as 1988.
`
`6.
`
`I have personal knowledge that Can’t Stop and its licensees had abandoned the
`
`mark’s use with audio cassettes and phonograph records as far back as 1988.
`
`7.
`
`I personally researched and printed-out each and every item attached to Exhibit C
`
`Accordingly, each and every documents contained in Exhibit C are true and correct
`
`copies ofthe documents I personally researched and printed out in support ofthis
`
`opposition to the summary judgment. Based on this extensive research, it is my
`
`professional opinion that the Village People mark is generic and widely used by others to
`
`describe a subset of a community or tribe. I am also a historian familiar with cultural
`
`subsets in America and historical use of commercial buildings and services. Moreover,
`
`

`
`my findings suggest the mark is widely used by others in the areas of, including but not
`
`limited to, entertainment, radio, media, and sale of products.
`
`8. The interview with the mark’s owner, Henri Belolo, in Exhibit D, was personally
`
`researched by me and is a true and correct copy of the interview. I personally
`
`communicated with the author of the interview and he has verified to me the truth and
`
`authenticity of interview’s content.
`
`9. Exhibit A is a true and correct copy of the USPTO registration certificate.
`
`10. Exhibit B is a true and correct copy of the record of USPTO Registration
`
`No. 2, 184,290, supplied to me by the USPTO in 2009.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`
`Igaiéil L. Willis
`September 17, 2010
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Registration No: 2,184,290
`Registration Date: August 25, 1998
`
`CANCELLATION NO: 92051212
`
`
`KAREN L. WILLIS,
`
`V.
`
`Petitioner,
`
`CAN’T STOP PRODUCTIONS, INC.
`
`Registrant
`__:
`
`DECLARATION OF VICTOR E. WILLIS
`
`1, Victor E. Willis, declare that I have knowledge ofthe following and if called as
`
`a witness would testify:
`
`1. The Petitioner is my wife and business manager.
`
`2.
`
`I am not a party to the petition for cancellation.
`
`3.
`
`I am the original lead singer ofVillage People, and writer of such hits as
`
`“~Y.M.C.A,” Macho Man,” “In the Navy,” and “Go West.”
`
`4.
`
`In 1977 I was recruited by Can’t Stop Productions (Henri Belolo) to record an
`
`album for a nonexistent recording group called Village People.
`
`5. Registrant told me that ifthe album failed to be a success, no group would ever be
`
`

`
`assembled. The album was recorded by me at the behest ofthe Registrant as a financial
`
`experiment on how to record an album under a mark while tricking the public into
`
`believing in a group and product that simply did not exist.
`
`6.
`
`It was only after the success ofthe second album recorded by me that Registrant
`
`was forced to assemble a group lest the fraud be exposed.
`
`7. As the writer of all ofthe Village People major hits like “Y.M.C.A.,” “Macho
`
`Man,” and “In the Navy, I receive royalty statements from the Registrant twice a year for
`
`record sales which reflect exactly what product is sold, and its format as well.
`
`8.
`
`I can state with certainty that no phonograph records and audio cassettes have
`
`been in interstate commerce by Registrant since the mid-1980s, as reflected by my
`
`royalty statements which identify the items by CDs, streaming audio, downloads, etc.
`
`9. As a recording artist Who’s specialty is the business ofprerecorded music
`
`sales, I can confirm that Can’t Stop Productions abandoned phonograph records and/or
`
`audio cassettes in the mid-1980s. Can’t Stop Productions as Iunderstand the company
`
`has no plans to resume the manufacturing ofaudio cassettes and phonograph records in
`
`the foreseeable future.
`
`10. As the original lead singer ofVillage People, it was always understood by me that
`
`the term Village People was used by Registrant to describe the group that I eventually
`
`became a part ofbecause many ofthe characters resembled those who Registrant found
`
`to be from the Greenwich Village area ofNew York. This understanding was personally
`discussed between me, Henri Belolo and Jacques Morali onnumerous occasions.
`
`11. Without question, Village People is descriptive ofthe generic characters we
`
`‘portrayed for the goods and services marketed.
`
`2
`Declaration of Victor E. Willis in Opposition to Registrant’s Motion for Summary Judgment
`
`

`
`I declarge under penalty of peijury that the foregoing is true and correct.
`5*
`
`September 17, 2010
`gr”
`:7!
`
`Victor Willis
`
`Declaration ofVictor E. Willis in Opposition to Registrant’s Motion for Summary Judgment
`
`3
`
`

`
`EXHIBIT A
`
`EXHIBIT A
`
`

`
`“mu gtatez of gmer
`Uliniteil fitates ifiatent ant: fltrahemark ®fft'I:e
`
`VILLAGE PEOPLE
`
`CAN'T STOP PRODUCTIONS INC. (NEW YORK CORPORATION)
`Reg, No, 3,821,800
`C/O MARCUM LLP, 750 THIRD AVE, 11TH FL
`_
`Reglstered July 20, 2010 NEW YORK, NY 10011
`
`Int. Cl.: 9 2
`
`FOR: COMPACT DISCS FEATURING MUSIC AND VOCALS; DOWNLOADABLE MUSICAL
`SOUND RECORDINGS, IN CLASS 9 (U.S. CLS. 21, 23, 26, 36 AND 38).
`
`TRADEMARK
`
`FIRST USE 0-0-1988; IN COMMERCE 0-0-1933.
`
`PRINCIPAL REGISTER
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SER. NO. 77-897,876, FILED 12-21-2009.
`
`INGA ERVIN, EXAMINTNG ATTORNEY
`
`
`
`Director uflhe l_‘n1tcd States Patent um] lmdelnurk Office
`
`

`
`EXHIBIT B
`
`EXHIBIT B
`
`

`
`%//
`
`Attorney Docket #0885-012T/MAG
`
`DECLARATION UNDER SECTIONS 8 & 15
`
`
`Mark:
`
`VILLAGE PEOPLE
`
`Registration No.:
`
`2,184,290
`
`Registrant:
`
`Can’t Stop Productions, Inc.
`
`TO THE COMNHSSIONER FOR TRADEMARKS:
`
`The following statements are made by applicant’s attorney, upon information and belief, on
`
`the basis of information provided by the applicant:
`
`The undersigned declarant is the attorney for
`
`Can’t Stop Productions, Inc.,
`
`a corporation of the State of New York, located and doing business at c/o Jay L. Wallberg, CPA,
`Marcum & Kliegman LLP, 655 Third Avenue, 16th Floor, New York, NY 10017, and declares that
`said corporation owns Registration No. 2,184,290, issued August 25, 1998, as evidenced by the
`
`records of the Patent and Trademark Office;
`
`that the mark shown therein is still in use in interstate commerce as evidenced by the

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