Community of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ's Church
634 F.3d 1005
| 8th Cir. | 2011Background
- COC owns RLDS marks including RLDS, REORGANIZED CHURCH, PEACE, and related designs; Devon Park used RLDS marks in Independence, Missouri for years without permission.
- Devon Park displayed RLDS marks on exterior signage and in church materials to indicate it was not a new church, causing brand use overlap with COC.
- COC filed suit alleging trademark infringement, false designation of origin, unfair competition, and dilution; Devon Park counterclaimed to cancel registrations as abandoned or generic.
- District court granted summary judgment for COC, enjoined Devon Park from using RLDS marks, and awarded attorneys’ fees as an exceptional-case award to COC.
- On appeal, issues include likelihood of confusion, abandonment/genericness defenses, propriety of the injunction, and the fee award.
- Court concludes COC’s RLDS marks are valid and enforceable, Devon Park’s use caused likelihood of confusion, and the injunction and fee award are proper.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion present | COC owns valid RLDS marks; Devon Park uses similar marks in same area. | Devon Park's services differ; care level may reduce confusion; marks not used for religious services. | Yes; likelihood of confusion shown; summary judgment upheld. |
| Abandonment or genericness of RLDS marks | COC continues genuine use; has not abandoned or made generic. | Use is token or marks have become generic due to Community of Christ rename. | Abandonment and genericness not proven; marks remain valid. |
| Permanent injunction appropriateness | Injunctive relief needed due to likelihood of confusion and irreparable harm. | Alternative language could avoid confusion; no irreparable harm to Devon Park. | Injunction proper; harm to COC irreparable; public interest favors enforcement. |
| Attorne ys' fees awarded under Lanham Act | Exceptional case; Devon Park acted willfully and deliberately. | Nonprofit burden; fees should be reduced; potential bad faith not required for exceptional finding. | Fees awarded; district court did not abuse discretion. |
Key Cases Cited
- SquirtCo. v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980) (Six-factor likelihood-of-confusion test; no single factor controls)
- Anheuser-Busch, Inc. v. Stroh Brewery Co., 750 F.2d 631 (8th Cir. 1984) (consumer understanding of term; primary significance to the public)
- Ty Inc. v. Softbelly's Inc., 353 F.3d 528 (7th Cir. 2003) (denotes descriptive vs. generic terms in denomination contexts)
- TE-TA-MA Truth Found. v. World Church of the Creator, 297 F.3d 662 (7th Cir. 2002) (denomination names can be descriptive, not generic)
- Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F. Supp. 990 (W.D. Mo. 1986) (descriptive vs. generic considerations in confusion analysis)