Yesterday, The Hollywood Reporter reported acclaimed filmmaker Tyler Perry’s United States Patent and Trademark Office victory for the rights to “What Would Jesus Do?” against Kimberly Kearney, also known as “Poprah” from VH-1 series, “I Want to Work for Diddy.“
According to the article, Perry registered for the “What Would Jesus Do?” mark in 2008, under the category of entertainment services, notably for live concerts, TV program and motion pictures. However, months prior to his filing, Kearney had also previously filed for the same rights to the mark for a reality based television program. Two years after Kearney’s initial filing, the mark was published for opposition, at which time Perry stepped forward in an attempt to cancel it arguing that Kearney was not using the mark in commerce, as the only time it was allegedly used was during a call out for auditions on a particular webpage.
During the opposition period, Perry’s attorneys sought certain Requests for Admission of facts from Kearney, which apparently went unanswered. Due to her failure to answer in a timely manner, the facts alleged by Perry and his attorneys were then admitted as “conclusively established” facts to the matter. In its opinion, an administrative judge wrote, “Despite Respondent’s [Kearney] denials in her answer to [Perry’s] petition, the deemed admissions supersede those denials and we are bound by them.”
According to the United States Patent and Trademark Office website, Perry is now the owner of the mark despite Kearney filing before he did.
WHAT DOES THIS MEAN?
As noted on the USPTO website, a trademark is a brand name which includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. Filing for a trademark for your brand’s name and/or logo puts the masses on notice that you are the rightful owner of the mark and the only person entitled to utilize it.
There are many rules and regulations surrounding the filing of a trademark, and one of the most important factors considered is whether or not the mark has been “used in commerce”. Have you sold any goods to which the brand is affixed? Have you advertised the service or provided a service? If so, you have to provide proof to the USPTO that you have done so in order for your mark to be effectively registered and not deemed abandoned. In this case, Perry and his attorneys were able to attack the notion that Kearney was using the mark, “What Would Jesus Do?”
Though Kearney apparently answered the initial opposition of Perry, she, for some reason, did not timely respond to his Request for Admission and therefore caused the statements and allegations of Perry and his attorneys to be admitted as fact when considering whether or not to cancel the mark she originally owned.
HOW DOES THIS AFFECT YOU?
Although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods/services listed in the registration.
Even if you are first to file for ownership of a mark, there are still numerous road blocks that may come about to either stop the issuance of a certificate and/or cancel the mark altogether. After a trademark is filed, the USPTO publishes it in a gazette/magazine and allows others who may have a claim to it to oppose it. Though the report states that the opposition window did not take place until two years after the initial filing by Kearney, it was still her responsibility to fight tooth and nail to protect it.
Despite the fact she may have lost this battle in re the use of the mark for the purpose of live concerts, TV programs and motion pictures, it appears that “Poprah” is still seeking to own the rights to use “What Would Jesus Do?” for apparel and clothing.
Rashida Maples, Esq. is Founder and Managing Partner of J. Maples & Associates (www.jmaplesandassociates.com). She has practiced Entertainment, Real Estate and Small Business Law for 9 years, handling both transactional and litigation matters. Her clients include R&B Artists Bilal and Olivia, NFL Superstar Ray Lewis, Fashion Powerhouse Harlem’s Fashion Row and Hirschfeld Properties, LLC.
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