8:35am PT by Eriq Gardner
Robert Kirkman Seeks to Stop a "Hijack" of 'The Walking Dead'
What type of food gets served at a Walking Dead restaurant?
As you chew on that question, Robert Kirkman is now asking a New Jersey federal court to put an end to alleged usurpers who, according to a lawsuit, "have filed eleven separate trademark applications with the United States Patent and Trademark Office to register THE WALKING DEAD and have taken concrete steps to use the mark in commerce by raising money and preparing to open a restaurant in New Jersey under the mark."
In summary judgment papers lodged on Friday in an ongoing trademark infringement lawsuit, Kirkman wants the judge to side with him — the guy who created the Walking Dead comic book that led to the hit AMC zombie series — rather than Philip Theodorou, Steven Theodorou and Anna Theodorou, who are said to be hijacking his mark after a history of questionable trademark tactics.
According to Kirkman's brief, "Specifically, combinations of the Theodorou defendants have filed several applications with the USPTO to register trademarks owned by or associated with well-known individuals and companies, including the hip hop artists the Beastie Boys (NO SLEEP TILL BROOKLYN, the name of their popular song), Donald Trump (MAKE AMERICA GREAT AGAIN), United Trademark Holdings (ZOMBIE CINDERELLA), and the National Hockey League (BROOKLYN ISLANDERS)."
Kirkman has gone to court to protect merchandising rights.
In a declaration, he says the Walking Dead comic series has grossed more than $12 million since its creation in 2003 and that licensing revenue (think Halloween costumes and lunch boxes) has added up to over $5.8 million. In 2009, he licensed Walking Dead to AMC. Afterward, both he and AMC filed for various trademark applications. In 2014, he says, both sides came to the realization that "despite this delineation, there were opportunities to sell and license certain types of merchandise for both the comics and the TV Series, the parties clarified their respective rights as trademark licensor (Robert Kirkman, LLC) and licensee (AMC) in an agreement confirming Robert Kirkman, LLC’s sole ownership of any trademark applications and registrations for THE WALKING DEAD Mark."
In many countries, trademarks operate under a first-to-file system, but in the United States, it's first-to-use, which perhaps is surprising to those who rush to make applications only to witness oppositions (and sometimes lawsuits) from those like Kirkman asserting that use of a mark is likely to cause confusion as to source, affiliation or connection with a pre-existing mark.
Kirkman not only owns trademarks for entertainment services, fan club services and comic books but also has pending use-based trademarks for goods including busts made of resin, plastic key chains, sleepwear, parlor games and accessories, namely prop weapons and fake scars.
AMC has its own program licensing TV-series-related goods. According to a declaration by Charlie Collier, president and general manager at the network, it has deals with Fathead, Zippo and Hallmark, among others.
In January 2014, however, the Theodorou defendants applied for a "Walking Dead" mark in connection with restaurant services, then one for food and beverage items, then one for cups, mugs and drinking glasses, then one for lipstick, and finally one for shirts.
Kirkman is out for blood, not only opposing at the Trademark Office, but launching a lawsuit asserting unfair competition, trademark dilution and deceptive and unfair trademark practices. His attorney argues that Kirkman has perfectly valid rights and that there is a likelihood of confusion. Here's the full brief arguing for the strength and fame of The Walking Dead. According to Collier, a survey of 1,300 individuals amounted to 82 percent being aware of the television series, compared to an average score of 22 percent for a cable television drama.
But about those restaurants: Unfortunately for cannibals, the legal papers signal no plans by AMC or Kirkman to open up a Walking Dead eatery, and the defendants' attempt to open up shop is deemed out of bounds as well.
"Even if any of the remaining goods and services Defendants have applied for are not considered 'competitive' to those goods or services for which Kirkman or its licensees have used THE WALKING DEAD Mark to date — e.g., bottled water, cigars and ashtrays, candles, restaurants, and carpets — use of the Infringing Mark for such goods and services can and does create a likelihood of confusion because consumers expect entertainment property marks like THE WALKING DEAD Mark to be licensed for a broad range of so-called collateral items."
The defendants haven't provided a response yet, but in an answer filed to the original complaint, they did assert an affirmative defense of unclean hands. Certainly, eating human flesh is a dirty business.