February 27, 2017
Originally posted 2018-11-19 11:19:51
By Ozelle Martin | amdlawgroup.com
Tyler Perry is a highly acclaimed film creator, screen and play writer, actor and now, a new trademark owner. Recently, he was involved in a blistering trademark battle, in the case of Tyler Perry Studios, LLC v. Kimberly Kearney. The featured actor in this tale of the trademark registration of “What Would Jesus Do?” was “use in commerce.”
On January 16, 2008- Kimberly Kearney, famously known as “Poprah” from the reality tv show: “I Want to Work for Diddy,” filed an application for the mark “What Would Jesus Do?” to be used in connection with entertainment services in the nature of an ongoing reality based television program. Subsequently, Tyler Perry Studios, LLC filed a trademark application on May 16, 2008 for use of the same mark in connection with entertainment services, namely live concerts, producing television programs and motion picture films.
Under Section 1(a) of the Trademark Act, a mark may not be registered unless it is being “used in commerce,” and not a mere token use for obtaining registration. Moreover, prospective trademark owners must present conclusive proof to the United States Patent and Trademark Office (USPTO) that they are indeed using the mark at the time of filing. If they fail to prove this, they may be granted a timed extension but the trademark will not officially register until “use in commerce” is proven. Additionally, after the application has been filed, the mark is published for opposition. At this time, persons who claim use of the mark for similar goods or service may present their cases to the USPTO, stating reasons why the applicant should be denied exclusive use of the mark.
Guided by this process and the notion of “use in commerce,” Tyler Perry Studios, LLC filed an action to the Trademark Trial and Appeal Board against Kimberly Kearney claiming that Kearney was not using the mark “in commerce.” Furthermore, Kearney did not respond to requests to present proof to the contrary and therefore, the Board agreed with Tyler Perry Studios, LLC and cancelled Kearney’s right to exclusively use the mark. Consequently, Tyler Perry Studios, LLC became the new owners of the mark: “What Would Jesus Do?”
This case teaches prospective trademark owners the importance of using their mark in commerce before applying for trademark registration. This vital component of trademark law ensures that there are no squatters hindering the advancement of brand protection in the United States. Many brand owners assume that they are being proactive when they apply to register a trademark well before actually using it. However, in many instances, this route can be costly as the applicant may end up paying extension fees to the USPTO, or they may have to hire an attorney to fight those who may potentially oppose the registration of the mark for non-use. To avoid being in such a predicament, prospective trademark owners must be well equipped to prove “use in commerce” at the time of filing. If not, as time passes without showing proof, the USPTO may deem the mark abandoned and all rights will be lost.
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