After a six-year battle, Tyler Perry finally won the rights to the trademark of “What Would Jesus Do” after filing a petition to cancel Kimberly Kearney’s registration of the trademark.  In addition to giving Perry the rights he was seeking, the case has also served as a warning about the importance of answering Requests for Admission in a timely manner.  Even though Kearney registered the trademark first in 2008 and claims she introduced Perry to this title for a proposed reality show, Perry still won the lawsuit in the end.

Kearney first filed for the mark in early 2008, just months before Perry filed in May 2008 to register the mark in the category of entertainment services.  Two years later, Kearney published the mark for opposition and Tyler Perry Studios stepped forward to cancel it.  The Trademark Trial and Appeal Board finally resolved the struggle over the trademark by granting Perry’s petition to cancel Kearney’s registration on June 20, 2014.

Although it may have initially seemed as though Kearney had the stronger case with first registration, Perry’s attorneys used some “trademark jujitsu” to swing the case in Perry’s favor.  To establish non-use of the trademark by Kearney, Perry sent a Request for Admission to Kearney, requesting the admission of certain facts to establish that Kearney never used the trademark for which she registered.  When Requests for Admission are not timely answered, the requests are to be deemed admitted and are therefore conclusively established.  When Kearney did not timely answer Perry’s requests, the court deemed that it is “conclusively established that Respondent did not use the phrase WHAT WOULD JESUS DO for ‘entertainment services in the nature of an on-going reality based television program’ as of the filing date of her application.”

Kearney next tried to argue that Perry stole her idea, arguing he came to court with unclean hands as her defense.  However, the court found that the allegations were not supported and that no facts could be adduced from Kearney’s claims of a stolen idea.  Since the court could find no support for this defense and had to deem Perry’s Requests for Admission as admitted, Kearney’s registration for the trademark was canceled, giving Perry the rights to the trademark.

In the end, Kearney lost her registration because of her failure to timely respond to a request, which as a result, established her non-use of the trademark she had registered for.  Going forward, Perry will in turn need to also establish actual use of the trademark after winning this long battle.  Without actual use, the trademark will be deemed abandoned, allowing for the use of the trademark by another.

 

Andrea Scheder

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