Arch-conservative political pundit obtains “Media Malpractice” trademark

William J. Kelly, official media photo.

Both the liberal and conservative wings of American politics have colorful pundits who have a true knack for blending political ideologies with entertainment or attention-grabbing habits. On the right, one such celebrity politico is William J. Kelly, an arch-conservative reporter hailing from the city of Chicago. In 1993, Kelly gained some notoriety after he interrupted a town hall speech by then-President Bill Clinton to voice concerns related to taxes; press release information claims that he was arrested by federal agents hours after the incident. Kelly is also a producer and the host of Upscale TV, which won a regional Emmy Award in 2006 for excellence in direction for an edited television show.

On September 14th, a press release was issued indicating that Kelly and his television production company RevDigital secured the trademark rights to “media malpractice.” U.S. Trademark Registration No. 5027942 was issued as a standard character mark to Kelly and it is listed on the Principal Register. It protects the use of the term on entertainment services such as the production and distribution of ongoing television programs in the field of politics, entertainment, media, pop culture, news, commentary, criticism and subjects of general human interest. It also protects the use of “media malpractice” in continuing programs which are delivered by radio, podcast, television, cable, satellite, Internet, mobile or electronic distribution.

Kelly has made use of the term “media malpractice” in his political commentary in recent years. He used it in an October 2014 blog post which questioned the journalistic integrity of the NBC affiliate in Chicago regarding their coverage of the mayoral election in that city. Recently, Kelly’s official Twitter account has been posting Tweets about the national media’s coverage of the 2016 presidential election, calling out specific organizations and news journalists and indicating that they would be the subject of mock trials on Kelly’s Media Malpractice show. Advertisements on Kelly’s Twitter feed indicated that the Media Malpractice show would air on November 3rd, although the time and television station weren’t available.

The goods and services covered by Kelly’s ‘942 “media malpractice” mark are in trademark class 41 which includes services for education, providing of training, entertainment, sporting and cultural activities. “You can only have trademark protection for goods or services that you’re using in commerce or that you imminently intend to use in commerce,” said Brian Focarino, an associate at Cooley’s Palo Alto office who focuses on trademark and copyright law. He noted that part of the prosecution process for trademark applications involves furnishing the U.S Patent and Trademark Office with a specimen of use to substantiate the use of the mark. “It’s sort of a balancing game between not wanting to be necessarily restrictive but you cannot be too vague and nebulous such that the PTO gets the sense that you are claiming for goods and services that you do not intend to offer.” Kelly’s trademark application notes that the first use of the mark in commerce was May 30th, 2015.

There are 13 different goods and services identified in the ‘942 “media malpractice” mark and it’s reasonable to expect that each good and service would reach the market at some point, according to Focarino. “You would expect him to have a TV program, expect him to have an online journal and expect him to have a website up,” Focarino said. There didn’t seem to be an online journal or blog for Media Malpractice when querying online search portals but Kelly has likely signed a declaration to the PTO that he is going to use the mark in connection with the goods and services claimed but aren’t yet on the market. Although it’s not unheard of for a trademark applicant to include goods and services in an application which the applicant is unsure he or she can offer, Focarino doesn’t encourage his own clients to do that based on the increased application costs and the risk that the mark will be abandoned if it isn’t used. “The basic argument against it is to discourage people from warehousing trademarks and filing all these applications for things they don’t actually intend to offer the American consuming public,” Focarino said.

If another party should start a blog or produce a television show titled Media Malpractice, Kelly would have a strong legal argument that the marks are similar and a likelihood of consumer confusion exists. “Especially if the blog is about malpractice, which the media can’t do,” Focarino said, noting that malpractice is a form of professional negligence which can be charged against a doctor or lawyer but not a journalist. “It’s actually a relatively catchy name but it ignores the fact that when you look at the media, it’s not malpractice but libel, slander or defamation. It ignores the robust speech rights we put as Americans on free and open discourse.” The use of “media malpractice” in another blog’s title could trick consumers into thinking that Kelly had endorsed the use of the mark, and his registered trademark gives him the right to prevent that misconception.

The public proximity in the marketplace of a blog infringing on the “media malpractice” mark would be another important consideration in any legal action. “If you search online and have these two blogs that pop up which discuss essentially the same thing, that’s like saying that someone put an infringing product on the same shelf next to the product protected by trademark,” Focarino said.

Interestingly, although Kelly’s Media Malpractice website doesn’t appear to be in operation as of late September, an online search of the term shows that the name has been used as the title of a political documentary released in 2009. Focarino’s search of the federal register made it clear to him that the documentary’s producers didn’t pursue a federal trademark. Had the producers done so, it would have likely been in the same class as Kelly’s trademark and the documentary’s mark would likely have been cited against Kelly’s application during the prosecution process at the USPTO. Because both Kelly and the Media Malpractice documentary offer political commentary from conservative viewpoints, it’s likely that Kelly would have heard of the movie and a trademark on the documentary could have proven to be damaging to Kelly’s trademark application.

The USPTO has found that Kelly’s use of “media malpractice” has acquired a certain level of distinctiveness and the agency has placed the character mark on the Principal Register. “Being on the Principal Register should always be the goal,” Focarino said. “Marks on the Supplemental Register, by and large the PTO has deemed them to be conceptually weaker from a consumer perspective.”

The ‘942 “media malpractice” mark is not the only trademark held by Kelly through his RevDigital firm. This April, the USPTO moved U.S. Trademark Registration No. 4935033 to the Principal Register, protecting a standard character mark for “Citizen Kelly,” which is the name of Kelly’s weekday radio program on the Chicago-area station 1590 WCGO. Another standard character mark is protected by U.S. Trademark Registration No. 4984417, which covers the use of “The Sensationalist,” which is a late-night television show featuring commentary from Kelly and other co-hosts which debuted this July. Both of these trademarks are in the same class as the ‘942 trademark and cover similar goods and services, such as entertainment services and online journals.