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
`ESTTA373184
`ESTTA Tracking number:
`10/14/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92051215
`Plaintiff
`Karen L. Willis
`KAREN L. WILLIS
`9115 Judicial Drive #4521
`SAN DIEGO, CA 92122
`UNITED STATES
`karen@victorwillisworld.com
`Opposition/Response to Motion
`Karen L. Willis
`karen@victorwillisworld.com
`/Karen L. Willis/
`10/14/2010
`opposition to msj1.pdf ( 3 pages )(112578 bytes )
`opposition to msj2.pdf ( 3 pages )(92412 bytes )
`opposition to msj3.pdf ( 15 pages )(605028 bytes )
`opposition to msj4.pdf ( 16 pages )(2056079 bytes )
`opposition to msj5.pdf ( 3 pages )(173977 bytes )
`opposition to msj6.pdf ( 4 pages )(384847 bytes )
`opposition to msj7.pdf ( 2 pages )(11347 bytes )
`opposition to msj8.pdf ( 136 pages )(13563874 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Registration No: 1,101,013
`Registration Date: August 29, 1978
`
`CANCELLATION NO: 92051215
`
`KAREN L. WILLIS,
`
`. V.
`
`Petitioner,
`
`CAN’T STOP PRODUCTIONS, INC.
`
`A Registrant
`
`DECLARATION OF VICTOR E. WILLIS »
`
`1, Victor E. Willis, declare:
`
`1.
`
`I am the original lead singer of the Village and People,
`
`.9 2.
`
`I am not a party to the petition for cancellation.
`
`3., At the time. of the 1977 application, the mark Village Peoplewas not beingusled —
`
`I
`
`in commerce "for entertainment services by a musical and vocal group because no such
`group existed at the time.‘ In fact, at that time Village -People was simply a concept group
`idea and Registrantknew this it to be true because I had personallyrdiscuss this concern
`with Registrant Henri Belolo.
`A
`4. All of my Village People recording, which was each:and every hit album, were
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`

`
`recorded by me with use of background singers who were not part the Village People
`
`group.
`
`5. Village People never sung as a vocal group or musical because none of the
`
`members could hold a tune as a group, i.e., they could not harmonize as a group in the
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`studio or for live performances. So background singers were placed behind the curtains
`
`at every concert as the other Village People members simply lip synced. In fact, I was
`
`the only person to ever sing live at a Village People concert. Moreover, since my solo
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`performance as Village People for the first two albums had solidified my Village People
`
`sound, to add the new members would have disturbed or drastically changed the sound.
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`So Registrant decided not to use the new members for recording purposes either.
`Therefore, I continued to record alone as Village People with use of non Village People
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`member background singers.
`
`I knew Village‘People was a sham on the public for financial benefit and.
`’ 6.
`Registrant knew this to be a fact‘too because I personally discussed my concerns with
`registrant when I was asked to perform on American Bandstand but couldn’t because
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`there was not musical and vocal group.
`7.
`‘ As a result, Registrant decided to quickly assemble random phantom group
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`members to foolthe public into believing Village People was real when it fact, it was»
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`simply a sham and Registrant knew it. After our appearance on American Bandstand, all
`the temporary group members were let go.
`I
`8, Registrant’s sham and fraud continues to be perpetrated to this daytrough its
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`licensee to the Sixuvus Village People are causing consumer confusion by claiming that
`they are the same Village People who recorded and performed the original hits I wrote
`
`I Declaration of Victor E. Willis in Opposition to Motion for Summary Judgment
`
`2
`
`V
`
`V
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`

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`and sung like “Y.M.C.A.” “Macho Man” and “In the Navy.” In 2007, I asked Registrant
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`to stop the fraud by at least allowing me to perform once again as Village People.
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`Registrant refused the request and stated that as the owner of the mark, Village People
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`who he says it is, regardless of whether its publicly _correct and is misleading to the
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`public.
`
`9.
`I have personal knowledge that all subsequent filing dates, Can’t Stop knowingly
`made (false, material misrepresentations with the intent to deceive the USPTQ when it
`
`swore that the mark is being used for entertainment services by a musical and Vocal
`
`group '
`
`10. I have personal knowledge that the Village People to this day is simply a concept
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`group.
`
`P
`
`11. I haye personal knowledge that Can’t Stop. and its licensees had abandoned the
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`mark’s use in connection with entertainment services by a musical and Vocal group.
`I declaregiunder penalty ofperjury that the forgoing is true and correct.
`Victor \lVillis
`
`
`
`Octoberil3, 2010
`
`Declaration of Victor E. Willis in Opposition to Motion for Summary Judgment
`
`3
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`‘BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Registration No: 1,101,013 1
`Registration Date: August 29, 1978
`
`CANCELLATION NO: 92051215 ~
`
`KAREN L. WILLIS,
`
`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. 1,101,013, I am the wife and business manager of Victor Willis, the original lead
`
`singer of Village and People.
`
`2.
`
`I first discovered that the Sixuvus Village People was performing its shows by _
`
`simply lip syncing to prerecorded music in 2007. Since that time I have witnessed _
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`numerous appearances ‘where they continue not to sing as a group but simply lip syncs to
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`prerecorded music;
`
`3.
`
`I have personal knowledge that at the time of Registrant’s application, and all
`
`P
`
`

`
`subsequent related filings, Can’t Stop knowingly made false, material misrepresentations
`
`with the intent to deceive the USPTO when it misrepresented the 1977 date of first use.
`
`4.
`
`I have personal knowledge that all subsequent filing dates, Can’t Stop knowingly
`
`made false, material misrepresentations with the intent to deceive the USPTO when it
`
`swore that the mark is being used for entertainment services by a musical and vocal
`group
`7
`
`5.
`
`I have personal knowledge that the Village People to this day is simply a concept
`
`group.
`
`S
`
`6.
`
`I have personal knowledge that Can’t Stop and its licensees had abandoned the
`
`marks use in connection with entertainment services
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`a musical and vocal group.
`
`7.
`
`I personally researched and printed each and every item attached to Exhibit E.
`
`Accordingly, the documents contained in Exhibit E are true and correct copies of the
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`documents I personally researched and printed by me in support of the opposition to the
`motion for summary judgment. Based on this extensive research, it is my professional
`opinion that the Village People mark is generic and widely usediby others to describe a
`
`subset of a community or tribe. Moreover, my findings suggest the mark is widely used
`
`by others in the areas of, including but not limited to, entertainment, radio, media, and
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`sales of products.
`
`8. i The interview with the mark’s owner, Henri Belolo, in Exhibit A, was personally
`
`researched by me and attached hereto is a true and correct copy of the interview. I
`
`personally communicated with the author of the piece and he personally verified the truth
`
`of the interview’s content to me.
`
`9. Exhibit D is a true and correct copy of the Library of Congress subject headings
`
`2
`,
`Declaration of Karen L. Willis in Opposition to Registrant’s Motion for Summary Judgment
`
`

`
`which show that there is a distinction between Vocal groups, Vocal groups, and musical
`groups.
`
`10. Exhibit B is a true and correct copy of the definition musical -group which show it
`
`to mean v“an organization of musicians performing together.”
`
`11. Exhibit C is a true and correct copy of the definition of a vocal group of Vocalists
`
`singing together.
`
`I declare under penalty of perjury that the forgoing is true and correct. -
`
`-
`
`///
`
`.W'11‘
`
`‘1 1s
`
`* K
`
`aren},
`
`i
`I
`
`Petit 0 er
`
`October 13, 2010
`
`.
`3
`V
`Declaration of Karen L. Willis in Opposition to Registrant’s Motion for Summary Judgment
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Registration No: 1,101,013
`Registration Date: August 29, 1978
`CANCELLATION N0: 92051215
`
`KAREN L. WILLIS,
`
`V.
`
`Petitioner,
`
`CAN ’T STOP PRODUCTIONS, INC.
`
`Registrant
`
`PETITIONER’S BRIEF IN OPPOSTION TO REGISTRANT’S
`
`MOTION FOR SUMMARY JUDGMENT
`
`A INTRODUCTION
`
`‘The petition for cancellation which is the subject of registrant’s motion for
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`summary judgment focuses primarily on entertainment services by a musical and Vocal
`
`group. Registrant, Can’t Stop Productions, Inc. (“CAN’T STOP”) seeks Summary
`
`Judgment against Petitioner Karen L. Willis (“Willis”) who seeks to cancel the mark
`
`“Village People” (Registration No. 1,101,013) for Fraud, Abandonment, and
`
`Genericness. Can’t Stop’s in artful but creative reading of the petition has led it to
`
`conclude that the cancellation petition is filled with unsupportable allegations and
`
`conclusions. In reality, Willis’ Petition has substantial merit and ample evidence annexed
`
`

`
`with declarations and supporting evidentiary documents requiring the motion for
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`summary judgment be denied in every respect.
`
`BACKGROUND
`
`CANT STOP is a company setup in America by a French citizen named Henri
`
`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.
`In 1976 CAN’T ST(dP 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’
`husband to record an album as if he was a group called Village People. Essentially,
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`Village People at that time was simply an idea, a concept group not yet in existence.
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`Nevertheless, in efforts to deceive the public, CAN’T STOP continued—on and found
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`random models to grace the cover of the album, and for financial gain, quickly released
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`the album to a non—suspecting public.
`
`The album quickly raced up the charts and soon Willis’ husband was being
`
`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
`
`assembled .5 guys to accompany Willis’ husband on American Bandstand in efforts to
`
`continue deceiving the public into believing that Village People was something real. It
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`2
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`

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`was not. The other guys were quickly let go after the American Bandstand appearance
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`with Wi1lis’s husband.
`
`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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`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
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`professional background vocals as before, not
`
`with use of the other 5 Village People members. And so it was with all other Village
`
`People hits like “Y.M.C.A.” “Macho Man,” “In the Navy,” “Go West,” etc., the albums
`continued to be recorded by Victor Willis, not other Village People members.
`
`Willis’ husband’s name, Voice and music are synonymous with the Village People
`
`and are 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.
`
`In the late 1980s CAN’T STOP started licensing the mark Village People for
`
`purposes of live performances (not for recording purposes) without informing the public
`
`that this new Village People is not the same as the product with which the mark is
`associated, therein causing public confusion.
`’
`
`For example, CAN’T STOP has in the past, and continues to license the Village
`
`People mark in a manner which allows the current Village" People to pass themselves off
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`3
`
`

`
`as being one in the same as the original Victor Willis Village People which recorded hits
`
`like YMCA and Macho Man with which the mark is associated, which likewise causes
`
`public confusion. This interferes with Willis’ husband’s ability to claim and reap the
`
`benefits of his own success as a singer and writer and interferes with Willis ability to
`
`properly manage him. Moreover, CAN’T STOP continues to prevent from commerce
`
`the actual source [Victor Willis] of the product with which the mark is associated.
`
`By 2009, Willis had had enough and now seeks to cancel the Village People
`marks based on Fraud, Abandonment, and Genericness.
`In response CAN’T STOP filed
`
`its motion for summary judgment.
`
`Interestingly, Registrant being aware that Petitioner was about to serve her first
`
`set of admissions in March 2010, as well as, request for the production of documents,
`
`convinced Petitioner to withhold such discovery requests in lieu of a suspension of
`
`prosecution of the petition from March to September. Registrant then spent this/time
`
`preparing its summery judgment motion, and on the day the suspension was lifted,
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`quickly filed it’s motion for summery judgment before Petitioner could serve her first
`
`round interrogatories and document request. This dirty-tactic by Registrant must fail.
`
`STANDARD FOR SUMMARY ,!UDGMENT
`
`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
`
`genuine, “that is, if the evidence is such that a reasonable jury could return a Verdict for
`
`the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
`
`Summary judgment will be granted “only where the moving party is entitled to judgment
`
`i
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`4
`
`

`
`as a matter of law, where it is quite clear what the truth is, .
`
`.
`
`. [and where] no genuine
`
`issue remains for trial .
`
`.
`
`. [for] the purpose of the rule is not to cut litigants off from the
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`right of trial .
`
`.
`
`. if they really have issues to try.” Poller V. Columbia Broadcasting Sys.,
`
`Inc., 368 U.S. 464,467 (1962) (quoting Sartor v. Arkansas NaturalGas Corp., 321 U.S.
`
`A 620, 627 (1944)).
`
`To prevail on its Motion, CAN’T STOP must prove that there are no disputed
`
`facts and that there is an “absence of evidence to support the non-moving party’s case.”
`TBMP 528.01. “The burden in a motion for summaryjudgment is on the moving party
`to establish prima facie that there is no genuine issue of material fact .
`. .” Shalom
`1
`
`Children’s Wear Inc. V. ln-Wear NS, 26 USPQ2d 1516, 1518 (TTAB 1993), and “all
`
`inferences to be drawn from the undisputed facts must be viewed in the light most
`
`favorable to the nonmoving party. . .”
`
`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,
`
`this Opposition presents genuine issues of material fact which compel denial of CAN’T
`
`STOP’ Motion for Summary Judgment.
`
`1.
`
`STATEMENT OF DISPUTED FACTUAL ISSUES
`
`ARGUMENT
`
`The following unresolved issues of material fact preclude Summary Judgment:
`
`A. AS TO FRAUD:
`
`1. Whether at the time of its application, Registrant’s mark was in use with respect
`
`to the services recited.
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`5
`
`

`
`2. Whether at the time of the application and subsequent renewals Registrant’s, use
`
`of the mark constituted entertainment services by a musical and vocal group.
`
`The following unresolved issues of material fact preclude Summary Judgment:
`
`B. AS TO ABANDOMENT:
`
`1. Whether CAN’T STOP or its licensee has abandoned the musical and vocal group
`
`requirement of the services offered.
`
`2. Whether CAN ’T STOP or its or licensees has ever offered entertainment services
`
`by a musical and vocal group as stated in the application.
`
`3. Whether CAN’T STOP or its or licensees, intends to engage in a bona fide use in
`
`interstate commerce, as stated in the application and subsequent renewals,
`
`entertainment services by a musical and vocal. group.
`
`The following unresolved issues of material fact preclude Summary Judgment:
`
`C. AS TO GENERICNESS:
`
`1. Whether the term Village People, now as in the past, being widely used
`
`descriptively by the media, the public, tribal communities, nonprofit
`
`organizations, banks, global/intemational assistance programs, radio music
`
`programs and festivals, supports the contention that the mark is generic;
`
`2. Whether the term Village People is a common descriptive term, which cannot
`
`function as a mark.
`
`II.
`
`IT IS AN UNRESOLVED ISSUE OF FACT AS TO WHETHER
`
`AT THE TIME OF ITS APPLICATION, REGISTRANT’S
`MARK WAS IN USE IN COMMERCE WITH RESPECT TO
`THE SERVICES RECITED
`
`In its motion for summary judgment, Registrant states its creative version of the
`
`petition for cancellation, then oddly suggests that the “nature of the entertainment
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`6
`
`

`
`services” as recited in the application is of little or no consequences because Petitioner is
`
`not challenging the fact the Registrant was at least “using the VILLAGE PEOPLE in
`
`
`connection with entertainment services as of the filing date of the application.” Motion
`
`p._7. This position by Registrant is highly flawed and otherwise false.
`
`First, challenging the nature of use, or more artfully, challenging whether a mark
`
`is being used as recited in the application can and does frequently subject marks to
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`cancellation based on fraud. For example, if fraud canbe shown in the procurement of a
`
`registration, the registration is void in the international classes in which fraud based on
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`nonuse has been committed. Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86
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`USPQ2d 1572, I 5 77 (TTAB 2008).
`
`Second, Petitioner alleges Registrant is not now, nor has he ever in the past, used
`
`its mark as recited in the application, that is, entertainment services by a musical and
`
`Vocal group. If proven, this would clearly constitute nonuse related to the goods or
`
`services recited. Moreover, if Registrant’s mark was not in use in interstate commerce on
`
`the item or items recited, at the time of the application, nor prior thereto, this would
`
`hardly constitutes use pursuant to entertainment services by a musical and vocal group.
`
`What is more, if Registrant is licensing the mark for use in interstate commerce by an
`
`entity which simply lip syncs to prerecorded music with no sound coming out of their
`
`voices other that to talk to the audience from time to time, this likewise does not
`
`constitutes a musical and Vocal group, notwithstanding the licensing of the mark in this
`
`manner is public deception. The declarations of Karen Willis and Victor Willis
`
`establishes a question of fact as to whether the mark is currently being used as recited
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`7
`
`

`
`application notwithstanding the fact that the mark could not have been in used as stated in
`
`the 1977 application. Dec. K. Willis, Dec. V. Willis.
`
`The USPTO will not issue a registration covering goods upon which the mark has
`
`not been used. See Trademark Rule 2.88(c);8 TMEP § 1109.03 (“The applicant may not
`
`file a statement of use until the applicant has made use of the mark in commerce on or in
`
`connection with all goods/services specified in the notice of allowance, unless the
`
`applicant files a request to divide.”)
`
`Exhibit A, page 3 annexed hereto along with the supporting declaration of Victor
`
`Willis clearly poses a question of fact as to whether at the time of Registrant’s 1977
`
`application and prior thereto, had he made use of the mark in commerce considering
`
`admittedly there was no group to make use of, let alone, make use of entertainment
`
`services by a musical and vocal group as recited in the application. Rather, the recording
`
`was simply a solo performance by Willis with use of non Village People related group-
`
`member background singers. The declaration Victor Willis further establishes that, for
`
`purposes of entertainment services, at the time of the 1977 application and prior thereto,
`
`not a single live performance or appearance by Village People had taken place in
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`interstate commerce nor any other respect because absolutely no such musical and vocal
`
`group existed at that time for live personal and performance appearances as Village
`
`People. There was only Victor Willis and the concept for a group not yet in existence
`
`and a promise of including an American Indian who was simply brought to the recording
`
`
`studio to observe, a time or two. Ex. A, 12.3, See also Dec. V. Willis and Petition for
`
`‘Cancellation, Ell 14. For no purpose other than to defraud the USPTO and the public at
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`8
`
`

`
`large, Registrant purposely omitted this fact that would have precluded registration.
`
`Dec. V. Willis.
`
`See also Petition for Cancellation, fill 14.
`
`III.
`
`IT IS AN UNRESOLVED ISSUE OF FACT AS TO WHETHER
`
`AT THE TIME OF ITS APPLICATION AND SUBSEQUENT
`RENEWALS, THE USE OF THE MARK CONSTITUTED USE
`BY A MUSICAL AND VOCAL GROUP
`
`Registrant argues that “[m]usical is defined in Merriam-Webster’s dictionary as of
`
`or relating to music. Registrant further agues, “[m]usic is defined in Merriam-Webster’s
`
`dictionary as vocal, instrumental, or mechanical sounds having rhythm, melody, or
`
`harmony.” Moreover, Registrant argues a “[g]roup is defined in Merriam-Webster’s
`
`dictionary as a number of individuals assembled together or having some unifying
`
`relationship. And that “[v]ocal is defined as relating to, composed or arranged for, or
`
`sung by the human voice.” Thus Registrant states a “musical group is a number of
`
`individuals assembled together that create vocal, instrumental, and/or mechanical sounds
`
`having rhythm, melody or harmony. A “vocal group” is a number of individuals
`
`assembled together that perform and present vocal sounds having rhythm, melody or
`
`harmony.’ Motion, p.8.
`
`While Registrant offers Merria1n—Webster’s dictionary in an attempt to support in
`7’
`‘S
`
`the singular, its definition of “musical,” “music,
`
`group,” and “vocal.” He provides no
`
`supporting reference for the combined or compound definitions of “musical group,” and
`
`“vocal group.” But there’s a good reason for this, Registrant could find no reference to
`
`support his contrived and totally self-serving definitions of “musical group” and ‘Vocal
`
`groups,” as stated above. To thecontrary Registrant show the definition of musical
`
`group to be “an organization of musicians Who perform together.” Ex. B. See also
`
`Dec. K. Willis, p3. Further evidence by Petitioner show the definition of vocal group to
`
`Registrant’ s Opposition to Registrant’s Motion for Summary Judgment
`
`9
`
`

`
`be “a group of at least three (and not more that six) vocalists that sing together in
`
`harmony where each of the members has a particular part to sing.” Ex. C, p. 1.
`
`Moreover, the Library of Congress subject headings also support Petitioner’s
`
`contention that there’s a distinction between a musical group and vocal group. The
`
`reference sheet shows the Library of Congress distinguishes “Vocal groups” from “Vocal
`
`music groups” from “Musical groups.” Ex.D. This evidence supports the contention
`
`alleged in the petition for cancellation that the “musical group” referenced in the
`
`application can refer to nothing other than a group of musicians, i.e., instrumentation in
`
`the added context of a “vocal group.” For example, the Library of Congress index
`
`suggests there’s also a category of “vocal music group,” which further suggests that the
`
`entertainment services by a musical group referenced in the application, in its plain
`
`meaning, refers to a band or groups of musicians, not a group of vocalists as this is
`
`already stated in the application as, entertainment services by a “vocal group.”
`
`Accordingly, a question of fact remains as to whether Registrant knowingly made
`
`a false, material representation with the intent to deceive the PTO with respect to the
`
`misstatement of the date of first use and whether at the time of his application and
`
`subsequent renewals, the use of the mark constituted use by a musical and vocal group.
`
`“As a general rule, the factual question of intent is particularly unsuited to disposition on
`
`summary judgment.” Copelands’ Enterprises, Inc. v. CNV, Inc., 945 F.2d 1563, 20
`
`USPQ2d 1295 (Fed. Cir. 1991).
`
`Clearly Petitioner’s evidence, inter alia, the declarations of Victor Willis and
`
`Karen Willis, and the supporting exhibits annexed hereto, support an inference of
`
`deceptive intent, which remains a question of fact. The declaration of Mitch Weiss is
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`10
`
`

`
`insufficient to remove the question of fact as to Whether his use constitutes entertainment
`
`services by a musical and vocal group in the face of the Library of Congress subject
`
`headings, the attached definitions of Vocal groups and musical groups and the
`
`declarations of Victor Willis and Karen Willis.
`
`Finally, the declaration of Henri Belolo does not remove the question of fact
`
`related to the date of first use, as Belolo does not deny the fact that a musical group and
`
`vocal group did not exist at the time of the application. Exhibit E, the Belolo interview,
`
`however further poses a question fact related to this issue that requires the motion for
`
`summery judgment be denied. “All doubts as to whether or not particular factual issues
`
`are genuinely in dispute must be resolved against the moving party.” Flately v. Trump, 11
`
`USPQ2d 1284, 1287 (TTAB 1989).
`
`IV.
`
`IT IS AN UNRESOLVED QUESTION OF FACT AS TO
`WHETHER REGISTRANT HAS ABANDONED THE
`
`MARK FOR USE AS A MUSICAL AND,VOCAL GROUP
`
`There remains an unresolved question of fact as to whether Registrant has
`
`abandoned the mark for use as cited in the application. Since Registrant has not and is
`
`not using mark for entertainment services by a musical and Vocal group, registrant has
`
`abandoned the mark.
`
`Section 45 of the Trademark Act, 15 U.S.C. Section 1127, provides that a mark is
`
`abandoned when "its use has been discontinued with intent not to resume use.... Nonuse for three
`
`consecutive years shall be prima facie evidence of abandonment." Here, the declarations of
`
`Victor Willis and Karen Willis state that at no time has the mark been used for three
`
`consecutive years by a musical and vocal group. Dec. V. Willis; Dec. K. Willis.
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`1 1
`
`.
`
`

`
`None of supporting evidence in the declaration of Mitchell Weiss establishes that
`
`the group is a band or plays instruments. To the contrary, Weiss admits the group simply
`
`performs to prerecorded music. And nowhere is there a demonstration of sound, video or
`
`DVD, performance of the so-called Sixuvus Village People that would tend to
`
`competently challenge the petition for cancellation, inter alia, a demonstration of their
`
`live singing as a group or playing musical instruments as a group. In fact, the
`
`declarations of Karen Willis and Victor Willis state the groups simply sip syncs to
`
`prerecorded music. Dec. V. Willis, Dec. K. Willis.
`
`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 12.
`
`Columbia Broadcasting Sys., Inc., 368 U.S. 464,467 (1962) (quoting Sartor v. Arkansas
`
`Natural Gas Corp., 32] U.S. 620, 627 (1944
`
`Therefore, a question of fact remains as to whether Registrant mark has been
`
`abandoned for entertainment services by a musical and vocal group.
`
`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
`
`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
`
`mark is in fact generic. As such, an unresolved question fact remains.
`
`Exhibit E 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’
`
`other than Registrant’s product. In fact, Registrant is on record confirming that the mark
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`12
`
`

`
`is simply descriptive of people in the New York’s Greenwich Village. Belolo: “We
`
`named it the Village People, because we discovered these characters in the Village. So
`
`we said, OK, they are the guys of the Village.” Ex. A, Henri Belolo & Jacgues Morali,
`
`13.3. (See also Village People Biography, p.21. 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
`
`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
`
`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
`
`services.
`
`Registrant’ s Opposition to Registrant’s Motion for Summary Judgment
`
`1 3
`
`

`
`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: October 13, 2010
`
`X
`
`
`KarenWillis, J.D.
`
`Petitioner
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`14
`
`

`
`CERTIFICATE OF SERVICE
`
`Pursuant to C.R.F. § 2.11, I hereby certify that on October 13, 2010, a true and correct
`
`copy of the foregoing Brief in Opposition to Summary Judgment, declarations and
`
`attachments was served, by depositing the same in a U.S. postal drop box with sufficient
`
`first class postage for delivery to 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
`
`_/_........._....
`\:
`/is
`'--—-:—-————.-on"-"““—---—-—.-.,.
`,
`m__..
`
`2 Karen Willis,‘J.D.
`
`Registrant’s Opposition to Registrant’s Motion for Summary Judgment
`
`l 5
`
`

`
`EXHIBITA
`
`

`
`--....“. .4-.«u_uu \.~ uu.\I\.1vLvu LVLUADLLL}
`
`;1.1uuu.» ku// 1JlDU\l'.l.JLDLaU.L«U11l
`
`[ago 1 U1 1 1
`
`:: Home :::: DISCO :::: ARTISTS :::: CLUBS :::: Q35 8: REMIXERS :::: LABELS :::: TRIBUTES :::: OTHER 2:
`2: the Dlscotheque :::: On the Turntable :::: CD5, Socks 8:. DVDS :21: Links 21:: Wanted :22: Forum 2:
`
`This is a Tribute to....
`
`Henfi
`
`
`elolo & Jacque i orali
`
`
`
`
`mie of the greatest and most seecessfiii
`Writer/Producer teams of the whoie Disco erei
`
`Jacques Moraii and Henri Belolo wrote and produced records for acts like
`the Ritchie Family, the Village People and

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