TTAB Decides “What Would Jesus Do” Trademark Battle

Posted by on Jul 15, 2014

After a six-year legal battle, Tyler Perry has officially won the trademark rights to “What Would Jesus Do.” Kimberly Kearney, a reality TV star, originally registered the mark in 2007 intending to use it for a reality show of her own. Months later, Perry registered the same phrase, and later moved to have Kearney’s rights to it canceled. So what went wrong for Kearney?

Ultimately, the Trademark Trial and Appeal Board (TTAB) sided with Perry’s contentions that Kearney had abandoned the mark. See the decision.  In general terms, a mark will be deemed “abandoned” and void under the Trademark Act when “there has been no use of it in commerce in connection with any of the applied-for services prior to the filing of an application[.]”

In the time following her registration, Perry alleged Kearny did not produce a television show bearing the mark, she did not sell such a show, nor did she intend to do so or take any meetings for the show. Unfortunately, the validity of such allegations went untested before the Board, because Kearney never responded to Perry’s requests for admission regarding them. This procedural error rendered the allegations admitted in the view of the TTAB.

To make matters worse, Kearney also failed to submit testimony and other evidence during the trial, despite her allegations that Perry had taken ideas from her. Without the required evidence, the TTAB was unable to consider such claims.

The lessons from this case are two-fold; “use it or lose it” when it comes to keeping trademarks rights, and be sure to follow procedural guidelines with the TTAB and other administrative boards. Nothing hurts like losing, but especially a loss due to technicalities.

As for Kearney, she may choose to appeal the decision. If she decides to take such action, hopefully she will learn from these procedural mistakes.