In a story that carries no trace of irony whatsoever, the US Patent & Trademark Office Trademark Trial and Appeal Board has ruled in a dispute between two television producers over the title WHAT WOULD JESUS DO.
In January 2008, Kimberly Kearney, a former reality show participant, filed an application to register the mark WHAT WOULD JESUS DO for “Entertainment services in the nature of an on-going reality based television program.” The mark was registered in 2010 after Kearney provided a specimen showing that she was using the mark in commerce (a crucial requirement for trademark registration). The specimen consisted of a screen shot of an online casting notice for the show.
(These filings are often done in all caps, so don’t worry, Tyler Perry isn’t yelling at the USPTO.)
This should be an easy one, right? Perry came second, the marks are identical, the services are essentially the same, and the first applicant/registrant has priority. Of course, it’s not quite that simple.
Perry petitioned the TTAB to cancel Kearney’s registration on the grounds that Kearney either never used the mark or had abandoned it “with no intent to resume.” One important point here is that Perry’s application was on an Intent-to-Use basis (which we trademark attorneys refer to as a 1(b) application), while Kearney’s was on an In-Use basis (aka 1(a)). This means that Kearney claimed, on paper, that she was using the mark as of the date of her application in 2008, while Perry has never had to claim actual use in commerce.
The cancellation proceeding moved along for 4 years, with 51 separate filings and rulings on the record. Finally, in June of this year, the TTAB ruled in Perry’s favor, ordering the cancellation of Kearney’s mark.
This case ended with a bit of a whimper. Perry’s counsel had requested that Kearney make certain affirmative statements, which, if contradicted, would require supporting evidence on the part of Kearney. These statements included “Admit that [Kearney] has not produced a television program in connection with the WHAT WOULD JESUS DO Mark” and “Admit that [Kearney] did not intend to produce a television program in connection with the WHAT WOULD JESUS DO Mark in January, 2008.”
Kearney failed to respond to these requests. The TTAB ruled that ” Because Respondent did not timely answer Petitioner’s Requests for Admission the facts included are deemed admitted and are ‘conclusively established.'”
In other words, by failing to respond, Kearney was procedurally understood to be admitting those facts to be true, therefore invalidating her trademark registration.
Maybe Kearney really did intend to admit those facts were true, or maybe she just ran out of money after fighting this legal battle for 4 years. Nonetheless, her registration will be cancelled and Perry’s will be allowed to proceed. Note that Perry won’t actually obtain a registration until he shows use of the mark in commerce (meaning he actually starts producing his show).
Tips:
- If you’re going to apply for a trademark registration on an In-Use basis, be certain that you’re actually using the mark in commerce.
- Don’t get into a legal fight with Tyler Perry unless you can afford to go the distance.
Thanks to my friend and esteemed film producer Reuben Liber of Ranger 7 Films for tipping me off to this story.
