Tyler Perry: Actor/Producer/Entertainment Mogul/Owner of “What Would Jesus Do”?

Retaining Trademark Rights

Atlanta-based entertainment mogul Tyler Perry has prevailed in cancelling television personality Kimberly Kearney’s registration of the “What Would Jesus Do” trademark—a rhetorical question whose initials have adorned the wrists of untold numbers since the 90’s. Kearney, also known as “Poprah” in the VH1 reality show I Want to Work for Diddy, apparently wanted to be more than bad boy for life Sean “Diddy” Combs’ personal assistant—she hoped to use the title “What Would Jesus Do” for a reality television series. In furtherance of her goal, she filed for registration of the mark in January 2008, claiming first use in November 2007. Registration issued in February 2010. Perry filed for registration of the “What Would Jesus Do” mark a few months after Kearney for “entertainment services, namely, television, motion picture film and interactive multimedia production services,” as well as other related services.

In February 2011, Perry’s aptly named production studio, Tyler Perry Studios, LLC, filed a petition to cancel Kearney’s registration. Perry alleged Kearney had never used the mark in commerce and therefore, under § 1(a) of the Trademark Act, the application was void. Perry argued Kearney had abandoned the mark in the alternative.

In October 2012, Perry served requests for admissions related to Kearney’s use of the mark in connection with the identified services; however, Kearney failed to respond, which caused the requests to be deemed admitted. Because of this lapse in following procedure, and lack of any evidence rebutting Perry’s position, the Trademark Trial and Appeal Board found non-use of the mark conclusively established. The Board, therefore, granted Perry’s petition for cancellation.

This case is an example of the fatal consequences that can occur when rules and procedures are not followed. Kearney’s failure to respond to requests for admissions and subsequent failure to offer testimony or other evidence to rebut Perry’s allegations left the Board with one option: cancel Kearney’s trademark registration for non-use.

So what lies ahead? As the Board noted, to retain rights in the “What Would Jesus Do” mark, the registrant must use it in commerce. Meaning, we can all expect Tyler Perry’s What Would Jesus Do (or some variant) to hit theaters in the future. Maybe a romantic comedy about a self-destructive bachelorette whose inability to maintain relationships is cured with the help of her sassy new friend coincidentally named Jesus? Possibly. Regardless, for the Madea-made mogul who now holds the rights to the catch phrase that spread like wildfire in the 90’s, the sky is the limit.

Source: http://e-foia.uspto.gov/Foia/ReterivePdf?system=TTABIS&flNm=92053298-06-20-2014

For more information on this topic, please visit our Trademark Oppositions and Cancellations service page.

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