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Kingdom, Inc. v. Pro Music Group

August 22, 2008


The opinion of the court was delivered by: James F. McClure, Jr. United States District Judge

(Judge McClure)



On May 28, 2008, plaintiff, Kingdom, Inc., commenced this action with the filing of a five count complaint against defendant Pro Music Group, LLC. In its complaint, Kingdom alleges that Pro Music's use of the trademark "KingdomPro" infringed upon its trademark "Kingdom." Plaintiff has set forth causes of action based on the Lanham Act, including trademark infringement (15 U.S.C. § 1114) (Count I), false designation of origin and unfair competition (15 U.S.C. § 1125(a)) (Count II), and trademark dilution and tarnishment (15 U.S.C. § 1125(c)(1)) (Count III), as well as state causes of action for trademark dilution (54 Pa. C.S.A. § 1124) (Count IV) and common law unfair competition (Count V). On June 17, 2008, Kingdom filed a motion for a preliminary injunction seeking to enjoin Pro Music's use of the trademark "KingdomPro." (Rec. Doc. No. 2.)

On July 31, 2008, a hearing was held on Kingdom's motion for a preliminary injunction. Based on the findings of fact and conclusions of law set forth below, we conclude that Kingdom is entitled to injunctive relief and will preliminarily enjoin Pro Music from using the trademark "KingdomPro."

On August 11, 2008, Kingdom filed a post-hearing brief concerning Pro Music's hearsay objections (Rec. Doc. No. 41), and a supplement to exhibits of Kingdom in support of its motion for preliminary injunction (Rec. Doc. No. 42). Then, on August 14, 2008, Pro Music filed objections to Kingdom's post-hearing brief and supplement to exhibits (Rec. Doc. No. 43) and on August 20, 2008, Kingdom filed its response to the foregoing objections (Rec. Doc. No. 44).

In its objections, Pro Music contends that the filing of the post-hearing brief was improper, as the court had not requested any supplemental briefing on the hearsay objections made at the hearing on July 31, 2008. However, the court did expressly permit supplemental proposed conclusions of law, and under a liberal construction of "conclusions of law", this additional brief is accepted. On the other hand, Pro Music also objects to plaintiff's supplement to exhibits, which included a declaration of John Berguson, dated August 11, 2008, and also a declaration of Rachael Berguson, dated August 8, 2008, together with attachments. The court did not invite the filing of supplemental evidence, and the objections will be sustained in this regard, as these declarations are not subject to cross examination and are, therefore, not only untimely, but inadmissible hearsay. The court has not read the declarations and Rec. Doc. No. 42 has not been considered in the preparation of this memorandum.


Kingdom is a company of 145 employees located in Mansfield, Pennsylvania which sells a wide variety of audio and visual products to the religious community, such as microphones, speakers, and instruments. (Tr. of July 31, 2008, Rec. Doc. No. 38, at 8, 17.) It was founded in 1982 by John Berguson who began by selling audio tapes and books to Christian readers and churches under the name "Kingdom Tapes." (Id. at 7-13.) Today, Kingdom has gross sales that exceed twenty million dollars per year. (Id. at 45.) It mails two million product catalogs per year to 100,000 to 250,000 churches throughout the country. (Id. at 8-10.) It maintains a website which is located at (Id. at 10-11.) Finally, Kingdom attends four to six trade shows every year and conducts product workshops for its customers throughout the country. (Id. at 11-12.) The Kingdom mark is a strong mark with a great reputation in the church marketplace. (Id. at 70-78.)

On March 10, 2003, Kingdom filed an application with the United States Patent and Trademark Office (USPTO) for the mark Kingdom. (Id. 13-14.) On December 27, 2005, the USPTO issued United States Trademark Registration No. 3,034,139 for the mark "Kingdom." (Id.)

Kingdom uses various modifiers with its mark Kingdom. As mentioned, it first began selling products under the name Kingdom Tapes and many of its customers still refer to Kingdom as Kingdom Tapes. (Id. at 13-14.) It also uses the modifiers Kingdom Printing, KingdomPro, Kingdom View, Kingdom Images, Kingdom Supreme, Kingdom Gold, Kingdom Computers. (Id.) With respect to its use of KingdomPro, it would sell blank CD and DVD labels under this name. (Id. at 15.) It began using this modifier in August of 2004 and has used it continuously since that date. (Id.)

Defendant Pro Music Group has been in business for more than thirty years. (Dep. of Janet Hundertmark, Pl.'s Ex. 20, at 6-7.) It has historically sold sound, lighting, and stage equipment to various businesses. (Id.) In August 2007, Pro Music began using the name KingdomPro as a trade name in which it would focus sales efforts specifically in the church worship market. (Id. at 10-13.) It created a website of and began distributing product catalogs under this name. (Id. at 10.) Janet Hundertmark, the CFO of Pro Music who was involved in the decision to use the name KingdomPro, was aware of Kingdom Tapes when the name was adopted by Pro Music. (Id. at 18-19.)

On July 21, 2006, Pro Music filed an application with the USPTO for registration of the mark KingdomPro. (Def.'s Ex. A.) On December 18, 2006, the USPTO issued an Examiner's Amendment for Pro Music's application in which an examiner concluded that no similar registered or pending mark had been found that would bar registration. (Def.'s Ex. B.) On February 14, 2007, the USPTO issued a Notice of Publication in which Pro Music's application was to be published in the Official Gazette on March 6, 2007. (Def.'s Ex. C.) On May 29, 2007, the USPTO issued a Notice of Allowance which stated that no opposition was filed by any member of the public objecting to the registration of "KingdomPro." (Def.'s Ex. D.) On July 29, 2008, the USPTO issued United States Trademark Registration No. 3478265 for the mark "KingdomPro." (Def.'s Ex. II.)

In April 2008, Kingdom first became aware of the use of KingdomPro by Pro Music when it received a KingdomPro catalog in the mail. (Tr. of July 31, 2008, Rec. Doc. No. 38, at 18.) Since ProMusic began use of the mark KingdomPro, Kingdom's sales ...

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