Everyone is familiar with professional wrestling. Some may recognize it as a significant worldwide business. Others may view it as carny entertainment, similar to Monster Trucks or the rodeo. Most people are aware of World Wrestling Entertainment, Inc. (“WWE”) and have heard of some of its most famous characters, “Hulk Hogan” and “Stone Cold Steve Austin,” or realize that Dwayne Johnson was “The Rock.” Perhaps you’ve even heard of “Dusty Rhodes.” That is another character with intellectual property value, which is the subject of this blog. Virgil Runnells is the wrestler who played the Dusty Rhodes character for approximately four decades until his death a few years ago. Runnells was a wrestler back in the “territory days” before Vince McMahon purchased or otherwise ended the central territory system.
In essence, Runnells pre-dates wrestling as a big business, and he survived, thrived, and held every type of role in this business. He also never registered his DUSTY RHODES moniker as a service mark, nor did any other entity that could arguably claim rights to the mark. Experienced trademark attorneys are valuable in considering whether or not a trademark should be registered. Runnells worked in multiple territories and with various promotions around the world. He or the promotion he worked for had unregistered, or “common law”, service mark rights in the DUSTY RHODES character, but none of these companies or promotional entities sought to register this valuable mark, and no agreement seemed to exist which memorialized these rights. Yes, it is the norm for wrestlers or event promotions entities to federally register these wrestling character names with the U.S. Patent and Trademark Office (“USPTO”). Sometimes wrestlers use numerous character names, gimmicks, and catchphrases over time, but not Virgil Runnells- one of the most famous and iconic wrestlers of all time. If you’re thinking about registering a trademark, consider speaking with a trusted trademark attorney to guide you through the process.
Virgil had more than one marriage and more than one child; two of his sons following him into the business. They are half-brothers, almost two decades apart. Their relationship has been the subject of rumors over the years. They have both worked together and apart; they have both gotten along and have not. One son, Dustin Runnells, is now 51 years old and has been a professional wrestler since he was around 20. He also currently works for his younger half-brother, Cody Runnells (the story about Cody getting this last name is a story for another day) Cody is 33 and is one of the Executive Vice Presidents of All Elite Wrestling (“AEW”), a promotional company formed two years ago and financed by the Khan family, which owns, among other things, the Jacksonville Jaguars professional American football team.
Both half-brothers worked most of their careers for WWE, which had a functional U.S. monopoly for much of 20 years. The half-brothers bickered quite a bit and tended to compete over intellectual property rights owners. There were also conflicts between WWE and Cody/AEW centered around Pay Per View event names and gimmick matches that the late Virgil Runnells created while working for World Championship Wrestling, Inc., along with since defunct company whose assets were acquired by the WWE.
Thinking that the DUSTY RHODES name has never been federally registered and legally and publicly claimed, the more successful younger half-brother decided that someone should claim ownership of this common law mark. He filed a trademark application for this service mark on March 11, 2019, under his real name, Cody Runnells. The USPTO issued a denial of registration due to alleged market confusion with the registered marks, “THE NATURAL” DUSTIN RHODES and DUSTIN RHODES, two federal registrations applied for by none other than Cody’s half-brother, Dustin Runnells, a year earlier and issued a month before Cody filed his application.
Cody worked with AEW’s IP attorneys and responded to the refusal on the day of the 180 deadlines, somehow trying to argue that the marks are sufficiently different that consumers will not be confused as to the source of each mark. The USPTO was not convinced, and a second and final denial was issued. This time, Cody responded with a trademark consent agreement in which Dustin consented to Cody’s ownership and use of this stage name of their father’s.
Remarkably, the USPTO accepted the consent despite the close similarity of the marks and services that obviously must refer to the same business. Three federal registrations exist that feature the DUSTY RHODES mark and cover entertainment services, yet two completely different owners are on record as owning these registrations. So, is there a “unity of source” for all of these registered marks? More remarkable is that Cody obtained this signed consent agreement from his half-brother, considering all the “legal wrestling matches” that occurred outside the ring and were not pre-determined like so many professional wrestling matches are. We may never know what other “agreements” were made between these family members, but 51-year-old Dustin, who is best known for playing a flamboyant costumed and face-painted thespian named Goldust, has been on national prime time TV pretty much every week since. Draw your conclusions, but here is an example of the trademark legal process played out in the entertaining entertainment business.
