Tyler Perry is one successful businessman – and now new trademark owner.
Mr. Perry, the acclaimed actor, writer, and producer, has prevailed in cancelling the trademark registration of “What Would Jesus Do” (“WWJD”) of the television personality, Kimberly Kearney. The case is Tyler Perry Studios, LLC v. Kimberly Kearney.
Kearney, one of the contestants on the VH1 reality show, “I Want to Work for Diddy,” is the owner of U.S. Registration No. 3,748,123 for the WWJD trademark for “entertainment services in the nature of an ongoing television reality program.” Kearney claimed to have first used the trademark on November 21, 2007; the registration issued on February 16, 2010.
Perry subsequently applied for the WWJD trademark for “entertainment services, including television, multimedia, and motion picture services,” as well as other related entertainment services. In the petition for cancellation, Perry sought to have Kearney’s trademark registration cancelled based on the fact that Kearney never commenced use of the trademark, as required under the Trademark Act, and therefore was not entitled to registration. As additional grounds, Perry also stated that Kearney had abandoned her trademark with no intent to resume use.
In its ruling in favor of Tyler Perry, the Trademark Trial and Appeal Board reviewed the applicable law regarding non-use of a trademark and other factors that are relevant to the case. Under Section 1(a) of the Trademark Act, use of a trademark in commerce is a prerequisite to a party being granted a trademark registration. The term “use in commerce” means the use of the mark in the ordinary course of trade, and not a mere token use for purposes of obtaining a registration. Furthermore, where it is found that there was no use of the trademark prior to registration being issued, the trademark registration may be deemed void for failing to comply with trademark laws. The Board found that here, the registration owner failed to rebut any of Perry’s allegations, either during the discovery period or at trial. Rather, Kearney simply relied on the original filings and the statements and evidence of alleged use of the mark contained therein. Even there, her evidence was not properly submitted and therefore not considered by the Board, which reasoned:
As noted above, Respondent did not submit any testimony or evidence during trial.
This case illustrates the dangers of not following the rules and procedures for trademark cancellation proceedings that are set forth in the Trademark Board Manual of Procedure. The registrant’s failure to offer testimony or supporting evidence to rebut the petitioner’s allegations left the Trademark Board with no other alternative but to cancel the trademark registration.