Carson v. Here's Johnny Portable Toilets, Inc.

• Decision Date: 24 September 1980
• Docket Number: Civ. A. No. 77-70147.
• Citation: 498 F. Supp. 71
• Parties: John W. CARSON, d/b/a Johnny Carson and Johnny Carson Apparel, Inc., Plaintiffs, v. HERE'S JOHNNY PORTABLE TOILETS, INC., Defendant.
• Court: U.S. District Court — Western District of Michigan

498 F. Supp. 71

John W. CARSON, d/b/a Johnny Carson and Johnny Carson Apparel, Inc., Plaintiffs, v. HERE'S JOHNNY PORTABLE TOILETS, INC., Defendant.

Civ. A. No. 77-70147.

United States District Court, E. D. Michigan, S. D.

September 24, 1980.

James W. Goss, Miller, Canfield, Paddock & Stone, Birmingham, Mich., Robert M. Newbury, Chicago, Ill., for plaintiffs.

Allen M. Krass, Krass & Young, Troy, Mich., for defendant.

MEMORANDUM OPINION AND ORDER

JULIAN ABELE COOK, Jr., District Judge.

This is a three count action for unfair competition, invasion of commercial rights or right of privacy, deceptive advertising and common law trademark infringement. Plaintiffs, John W. Carson, and Johnny Carson Apparel, Inc., bring these proceedings to enjoin Defendant, Here's Johnny Portable Toilets, Inc., from using "Here's Johnny" as a corporate or trade name, or, in connection with, the advertising, offering for sale or lease, and sale or leasing of portable toilets. Additionally, Plaintiffs ask that Defendant be required to (1) account for, and pay, all profits which Defendant has made from the use of the product, or (2) pay an amount which is deemed to be equitable by the Court. Jurisdiction is based upon 15 U.S.C. § 1121, 28 U.S.C. § 1338(a) and 28 U.S.C. § 1332(a).

Plaintiff, John W. Carson, a citizen of the State of California, has been, and is, a comedian, entertainer and businessman, who is known professionally as Johnny Carson. Through substantial expenditures of time and effort over many years, he has become, and is, well known to the public throughout the United States. Since 1962, Plaintiff, John W. Carson, has been the host and star of "The Tonight Show," a television program which is broadcast by the National Broadcasting Company. He also appears as an entertainer in night clubs, theaters and other media. Since 1962, the opening format of "The Tonight Show" has included an introduction of Plaintiff, John W. Carson, with the phrase, "Here's Johnny." This mode of introduction was initially used by him in 1957 as host of a daily American Broadcasting Company television show, "Who Do You Trust." He has consistently used the phrase, "Here's Johnny," as a method of introduction over the years on his television program and other entertainment appearances. It is delivered by emphasizing and prolonging the word, "Here's" in a crescendo. The phrase, "Here's Johnny," which has been used to refer to Plaintiff, John W. Carson, in news articles and cartoons, is generally associated with him by a substantial segment of the television viewing public. This has been conceded by Defendant. In 1967, Plaintiff, John W. Carson, permitted his identity to be used for a chain of restaurants called "Here's Johnny."

Plaintiff, Johnny Carson Apparel, Inc., is a Delaware corporation, with its principal place of business in Buffalo, New York. Eighty percent of the stock of the Company is owned by a subsidiary of Hart Scaffner & Marx. The remaining twenty percent of the stock is owned by the Company President, Plaintiff, John W. Carson.

Plaintiff, Johnny Carson Apparel, Inc., was formed and first began business in 1970. It is engaged in the marketing of men's clothing and furnishings which is sold to the general public through approximately 3,000 retail outlets, with annual sales in excess of $50,000,000.00. The name of Plaintiff, John W. Carson (Johnny Carson) and/or his picture appear on virtually all Johnny Carson Apparel, Inc.'s products, advertising material and promotional matters. The phrase, "Here's Johnny," has also been used by Johnny Carson Apparel, Inc. to some extent on labels for clothing and in conjunction with its advertising and promotion campaign. The Company's current advertising and promotional expenses featuring "Here's Johnny" are in excess of One Million Dollars annually.

In 1977, Plaintiff Johnny Carson Apparel, Inc. granted a license to Marcy Laboratories and Ethique Laboratories to use the name and trademark, "Here's Johnny," on men's toiletries. Pursuant to that agreement, Johnny Carson Apparel, Inc.'s licensee is now selling and advertising "Here's Johnny" cologne, "Here's Johnny" skin shield and "Here's Johnny" soap.

Neither of the Plaintiffs has registered "Here's Johnny" as a trademark or service mark federally or within the State of Michigan.

Defendant, Here's Johnny Portable Toilets, Inc., is a Michigan corporation which was formed in 1976. Defendant's President, Earl Braxton, is the sole stockholder and officer of Defendant. Defendant is engaged in the business of renting and selling portable toilets. Defendant places the portable toilet cabanas on its customer's property and services the units by pumping the waste products into a tank truck for removal. Defendant applied to register "Here's Johnny" in the United States Patent and Trademark Office; however, action on that application was suspended pending disposition of the present action.

In considering Plaintiffs' use of "Here's Johnny," the Court has disregarded the use of the mark on men's toiletries since this use commenced after Defendant's use.

Defendant's use of the mark, Here's Johnny Portable Toilets, would constitute a false designation of origin and unfair competition, in violation of 15 U.S.C. § 1125, if its product is likely to be thought by the general public to have originated with, or to have been sponsored by, Plaintiffs, thereby creating a likelihood of confusion. Societe Comptoir De L'Industrie Etc. v. Alexander's Department Stores, Inc., 299 F.2d 33 (2d Cir. 1962). The same test of likelihood of confusion is applicable to Plaintiffs' claim for common law trademark infringement. Weisman v. Kuschewski, 243 Mich. 223, 219 N.W. 937 (1928). The test also applies to deceptive advertising claims. Plaintiffs' recovery turns upon the determination by this Court as to whether Defendant's use of Here's Johnny Portable Toilets is likely to cause confusion, mistake or deception in the market place.

A number of Courts have determined likelihood of confusion in trademark infringement cases by evaluating a variety of factors, including the type of trademark at issue, similarity of design, similarity of product, identity of selling outlets and purchasers, identity of advertising media utilized, and the alleged offender's intent and actual confusion. Amstar Corporation v. Domino's Pizza, Inc., 615 F.2d 252 (5th Cir. 1980); General Mills, Inc. v. Henry Regnery Co., 421 F.Supp. 359 (N.D.Ill.1976).

The Restatement of Torts, § 729 (1938), lists the following as important factors in determining confusing similarity:

(a) the degree of similarity between the designation and the trademark or trade name in

(i) appearance;

(ii) pronunciation of the words used;

(iii) verbal translation of the picture or designs involved;

(iv) suggestion;

(b) the intent of the actor in adopting the designation;

(c) the relation in use and manner of marketing between the goods or services marketed by the actor and those marketed by the other;

(d) the degree of care likely to be exercised by purchasers.

Trademark rights in names and symbols do not require formal registration. Ames Publishing Co. v. Walker-Davis Publications, Inc., 372 F.Supp. 1 (E.D.Pa.1974); Interstate Brands Corp. v. Way Baking Co., 79 Mich.App. 551, 261 N.W.2d 84 (1977). What is required, however, is a showing that some form of ownership rights has arisen from its prior use in connection with a particular product or service. Computer Food Stores, Inc. v. Corner Store Franchises, Inc., 176 USPQ 535 (TTAB 1973). It is clear that John W. Carson popularized the mark, "Here's Johnny." It is also clear that a substantial segment of the American public associates the mark with the entertainer, Johnny Carson. Therefore, the Court believes that it is conceivable that "Here's Johnny" has trademarkable characteristics. See Dallas Cowboy Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979). However, the Court does not believe that Plaintiffs' use of "Here's Johnny" is so strong and distinctive that its use by others should be foreclosed in the market place. Accordingly, the Court concludes that "Here's Johnny" is not a strong mark and, therefore, it is not entitled to a broad scope of protection which would preclude its use on completely unrelated non-competitive products such as portable toilets, in the absence of a showing of other mitigating factors.

The similarity of the marks is determined on the basis of the total effect of the designation, Restatement of Torts, § 729, Comment 7 (1938), and the commercial impression created by the mark as a whole. Seabrook Foods, Inc. v. Bar-well Foods, Ltd., 568 F.2d 1342, 1346 (Cust. & Pat.App. 1979); Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 1402 (Cust. & Pat.App.1970).

A mark must be viewed in its entirety and in context since it is the overall impression that counts. B. H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d 1254 (5th Cir. 1971). Part of this "overall impression" includes the manner in which a particular mark or designation is used. Despite the frequent elongation of the word, "Here's," in Plaintiffs' use of "Here's Johnny," the Court does not believe that a finding of overall similarity of the mark "Here's Johnny" itself is precluded. Considering the words in context, however, the Court believes that there are some differences that would not lead to a finding of overall similarity. Plaintiffs' use of "Here's Johnny" most frequently leads to a picture or appearance of Johnny Carson. The Defendant's use, by contrast, is not accompanied by any likeness of Johnny Carson.

There is no similarity between Plaintiffs' products—men's apparel and entertainment services—and Defendant's product—portable toilets. Dissimilarities between channels of trade and the predominant consumers of the parties' products and services lessen the likelihood of confusion, mistake and deception. Amstar Corp. v. Domino's Pizza, Inc., supr...