Tyler Perry Studios, LLCv.Kimberly Kearney

Trademark Trial and Appeal Board

Jun 20, 2014

No. 92053298 (T.T.A.B. Jun. 20, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 20, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Tyler Perry Studios, LLC
v.
Kimberly Kearney
_____

Cancellation No. 92053298
to Registration No. 3748123
registered on February 16, 2010
_____

Victor K. Sapphire of Michelman Robinson LLP
for Tyler Perry Studios, LLC
Kelly J. Adams of Alpha Omega Law Firm, LLC
for Kimberly Kearney
_____

Before Kuhlke, Ritchie and Hightower,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Tyler Perry Studios, LLC (Petitioner) seeks to cancel Kimberly Kearney’s
(Respondent) registration for the mark WHAT WOULD JESUS DO in standard
Cancellation No. 92053298
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characters for “Entertainment services in the nature of an on-going reality based
television program,” in International Class 41.1
As grounds for cancellation, Petitioner alleges that Respondent “has never used
or has discontinued use of the mark WHAT WOULD JESUS DO with no intent to
resume said use, thus abandoning the mark… .” Pet. ¶ 2. Petitioner further alleges
that it will be damaged because Respondent’s “registration is blocking Petitioner’s
Application.” Pet. ¶ 8. Thus, Petitioner pleaded the claims of nonuse or in the
alternative abandonment.2
In her answer, Respondent admits that “the trademark attorney … refused their
mark because [her] application proceeded theirs and their similarity to [her] mark
in name and use, and the fact [hers] was already in process” (Answer ¶ 6) and
otherwise denies the salient allegations.

1 Registration No. 3748123, filed on January 14, 2008, under Section 1(a), 15 U.S.C. §
1051(a), claiming a date of first use and first use in commerce on November 21, 2007, issued
on February 16, 2010.
2 Petitioner also presents argument in its brief that Respondent committed fraud in her
procurement of the registration; however, this claim was not pleaded and has not been tried
by implied consent. Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana
Inc., 98 USPQ2d 1921, 1927 (TTAB 2011) (petitioner’s “family of marks” claim, raised for
the first time in its brief not considered because it was neither pleaded nor tried by the
parties). See also Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d
1917, 1929 (TTAB 2006). To the extent Respondent’s arguments in her brief could be
construed as implied consent to add this claim, the evidence of record is not sufficient to
establish the intent element of fraud which must be “proven to the hilt.” In re Bose Corp.,
580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), quoting, Smith Int’l, Inc. v. Olin
Corp., 209 USPQ 1033, 1044 (TTAB 1981). Respondent’s admissions that she “has not
produced a television program in connection with the WHAT WOULD JESUS DO Mark”
(Admission No. 27) and that she “did not intend to produce a television program in
connection with the WHAT WOULD JESUS DO Mark in January, 2008” (Admission No.
28) do not conclusively establish that she made false statements in the procurement of her
registration with the subjective intent to deceive. Bose, 91 USPQ2d at 1941 (evidence of
intent to deceive must be clear and convincing).
Cancellation No. 92053298
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RECORD
By operation of the Trademark Rules, the pleadings herein and the file of the
subject registration are of record. Trademark Rule 2.122, 37 C.F.R. § 2.122.
Petitioner submitted under Notice of Reliance a copy of its Requests for Admissions
and the mailing receipts showing timely service thereof on Respondent.3
Respondent did not submit any testimony or other evidence.
STANDING
As noted above, Respondent by her answer admits that Petitioner’s application
for a similar mark has been refused registration in view of Respondent’s
registration. In addition, as discussed infra, Respondent admits that Petitioner is a
competitor and that they offer services through “some of the same trade channels.”
Admission Nos. 11 and 44. In view thereof, Petitioner’s standing is established. See
Saddlesprings Inc. v. Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012);
ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012). See also
Jeweler’s Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987).
NONUSE
Under Section 1(a) of the Trademark Act, a mark may not be registered unless
it is “used in commerce.” 15 U.S.C. § 1051(a)(1). “The term ‘use in commerce’

3 Although Petitioner asserts in its brief that “Petitioner’s U.S. Appl. Serial No. 77/477,214”
is of record, Petitioner’s application is not of record by operation of Trademark Rule
2.122(b) because it is not the subject of the cancellation petition, and this is not an
interference or concurrent use proceeding. In addition, Petitioner did not submit its
application under Notice of Reliance during its trial period. Therefore, this application is
not of record.
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means the bona fide use of a mark in the ordinary course of trade … on services
when it is used or displayed in the sale or advertising of services and the services
are rendered in commerce, or the services are rendered in more than one State or in
the United States and a foreign country and the person rendering the services is
engaged in commerce in connection with the services.” 15 U.S.C. § 1127. “The word
‘commerce’ means all commerce which may lawfully be regulated by Congress.” 15
U.S.C. § 1125.
Where it is found that there has been no use of the mark in commerce in
connection with any of the applied-for services prior to the filing of an application
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), the application is void
ab initio. ShutEmDown Sports, 102 USPQ2d at 1045 (nonuse by respondent at the
time of filing the underlying application, cancellation granted). See also Clorox Co.
v. Salazar, 108 USPQ2d 1083, 1086 (TTAB 2013). In this case, the operative date is
January 14, 2008, the filing date of the application which issued into the subject
registration.
Petitioner argues that Respondent has not used the mark in connection with the
identified services, “as of the claimed dates of first use, the filing date of the subject
registration and currently.” Pet. Br. p. 8. Petitioner relies on its Requests for
Admission which are deemed admitted to satisfy its burden of proof.4 The most
pertinent are set forth below:

4 Petitioner served the Requests for Admissions on October 10, 2012. On January 30, 2013,
after the close of Petitioner’s trial period, Respondent moved to reopen her time to respond.
On June 27, 2013, the Board denied Respondent’s request to have her late-filed responses
accepted or the admissions withdrawn.
Cancellation No. 92053298
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Admit that Respondent and Petitioner offer competing
products and are competitors. (Admission No. 11);
Admit that Respondent has not produced a television
program in connection with the WHAT WOULD JESUS
DO Mark. (Admission No. 14);
Admit that Respondent has not sold a television program
in connection with the WHAT WOULD JESUS DO Mark.
(Admission No. 15);
Admit that Respondent has not distributed a television
program in connection with the WHAT WOULD JESUS
DO Mark. (Admission No. 16);
Admit that Respondent has not had exhibited by a
television broadcast or cable network a television program
in connection with the WHAT WOULD JESUS DO Mark.
(Admission No. 17);
Admit that Respondent has no rights in the WHAT
WOULD JESUS DO Mark based on use in commerce.
(Admission No. 19);
Admit that Respondent has not produced a television
program in connection with the WHAT WOULD JESUS
DO Mark. (Admission No. 27);
Admit that Respondent did not intend to produce a
television program in connection with the WHAT WOULD
JESUS DO Mark in January, 2008. (Admission No. 28);
Admit that Respondent’s contact email addresses on the
“whatwouldjesusdo.tv” web site are nonfunctional and
resolve to info@coolexample.com. (Admission No. 29);
Admit that Respondent’s contact email addresses on the
“whatwouldjesusdo.tv” web site have never been
functional. (Admission No. 30);
Admit that Respondent’s “whatwouldjesusdo.tv” web page
that was used as a specimen of use in the instant
application was created for the sole purpose of securing
the instant registration. (Admission No. 31);
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Admit that Respondent had not begun to produce a
television program in connection with the WHAT WOULD
JESUS DO Mark at the time of filing the instant
application. (Admission No. 33);
Admit that Respondent does not own, administer or have
access to an email account at the info@coolexample.com”
address. (Admission No. 38);
Admit that Respondent has taken no meetings in
connection with the production of a television program in
connection with the WHAT WOULD JESUS DO Mark.
(Admission No. 42); and
Admit that Petitioner sells Petitioner’s Services and
Respondent sells Respondent’s Services through at least
some of the same trade channels. (Admission No. 44).
Because Respondent did not timely answer Petitioner’s Requests for Admission
the facts included are deemed admitted and are “conclusively established.” Fed. R.
Civ. P. 36(b). See Fabriko Acquisition Corp. v. Prokos, 536 F.3d 605, 607 (7th Cir.
2008); Fram Trak Industries, Inc. v. Wiretracks LLC, 77 USPQ2d 2000 (TTAB
2006). Despite Respondent’s denials in her answer to the petition, the deemed
admissions supersede those denials and we are bound by them. In re Corporation of
Windham College, 34 B.R. 408, 411 (Bankr., Vt. 1983) (“An admission under the
rule is comparable to an admission in pleadings; but where a denial contained in
the pleadings is inconsistent with an admission under the rule, the admission under
the rule supersedes the denial contained in the pleadings.”). Thus, 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.
Respondent asserts in her brief that:
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[She] first used this mark in November 2007 at which
time she initiated the beginning stages of her reality
based television program. During the initial stage of
production, Respondent shared her television program
and title with Tyler Perry Studios (“Petitioner”).
Subsequently, Respondent filed for an application to
register the mark. Not many months after sharing this
program and soliciting the Petitioner for financial support
of this program, Petitioner filed to register this mark … .
Resp. Br. p. 4.
As noted above, Respondent did not submit any testimony or evidence during
trial. Therefore, even if such activities could constitute use sufficient to support a
use-based application or her pleading could be viewed as including a defense of
unclean hands, these allegations are unsupported and we may not adduce any facts
from them.
Respondent also appears to rely on the use statements and specimens in the file
history of her registration; however, “[t]he allegation in an application for
registration, or in a registration, of a date of use is not evidence on behalf of the
applicant or registrant; a date of use of a mark must be established by competent
evidence. Specimens in the file of an application for registration, or in the file of a
registration, are not evidence on behalf of the applicant or registrant unless
identified and introduced in evidence as exhibits during the period for the taking of
testimony.” Trademark Rule 2.122(b)(2). Although the file is of record under
Trademark Rule 2.122(b)(1), as dictated by Trademark Rule 2.122(b)(2), the
statements and documents appearing therein, may not be relied upon as evidence to
establish facts.
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Respondent’s registration is, of course, afforded protection under Section 7(b) of
the Trademark Act, 15 U.S.C. § 1057(b), by presumption of validity and ownership.
However, once a petitioner sufficiently rebuts that presumption, a respondent must
introduce such testimony and evidence sufficient to rebut petitioner’s prima facie
case. Here, Petitioner has established its prima facie case and it was incumbent on
Respondent to identify and introduce such evidence, including its specimens of use,
under testimony in order to support her various assertions.
In addition, Respondent’s assertions regarding what constitutes bona fide use in
the ordinary course of trade in the entertainment industry are similarly
unsupported by any evidence.5
In view of the above, Petitioner has satisfied its burden to establish the claim of
nonuse and it stands unrebutted.
Decision: The petition to cancel Registration No. 3748123 is granted on the
ground of nonuse. The registration will be cancelled in due course.

5 Respondent’s request in the alternative “to amend her application to an ‘Intent to Use’
application’” is denied. There is no provision for “reopening” a registration to amend to seek
registration on another basis.