Monday, March 29, 2010

Precedential No. 12: TTAB Sustains "HERE'S JOHNNY" Portable Toilets Opposition on Two Grounds: Res Judicata and No Bona Fide Intent

Granting Opposer's motion for summary judgment, the Board sustained an opposition to registration of the mark HERE'S JOHNNY for portable toilets, on two grounds: Number 1 - res judicata, and Number 2 - lack of bona fide intent. The Board ruled that Opposer, as assignee of the right of publicity of the late entertainer, Johnny Carson, has standing to oppose; that previous court and TTAB rulings applied because the Opposer and Applicant here are "legally equivalent" to the parties in those prior proceedings; and that, because a permanent injunction prevents Applicant from using the applied-for mark, Applicant cannot have the requisite bona fide intent since its use of the mark would be unlawful. The John W. Carson Foundation v., Inc., 94 USPQ2d 1942 (TTAB 2010) [precedential].

Res Judicata: The key issue was whether the earlier court rulings applied in favor of this particular Opposer and against this particular Applicant. The Board found that Mr. Carson's right of publicity survived his death and was properly assigned to the current Opposer. As to Applicant, its current president and sole owner, Mr. Braxton, was also the president and sole owner of the defendant corporation in the prior civil action and Board proceeding. Therefore, "privity exists ... for res judicata purposes." [And they both made privies! - ed.].

Lack of bona fide intent: Applicant contended that the permanent injunction previously issued did not apply to it, but the Board disagreed. As an officer and sole owner of the prior defendant, Braxton was "at a minimum, in active concert and participation with the party bound by the permanent injunction," and he is therefore bound by it under FRCP 65(d)(2).

Mr. Braxton cannot avoid the permanent injunction against him by merely forming another corporation of which he is the sole owner. Indeed, insofar as Mr. Braxton is bound by the permanent injunction individually, he cannot circumvent the injunction by acting through the applicant herein, which he also controls. In view thereof, we find that there is no genuine issue that the permanent injunction applies to applicant.

Because the injunction enjoins Applicant from using the applied-for mark, Applicant cannot make lawful use of the mark, and therefore it is legally impossible for Applicant to have a bona fide intent to use the mark in commerce.

TTABlog comment: Apparently with the death of Johnny Carson and the expiration of his federal registrations for HERE'S JOHNNY, this Applicant thought the door was open, so to speak, to grab this mark.

Text Copyright John L. Welch 2010.


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