The Universal Church, Inc. v. Universal Life Chruch/ULC Monastery
1:14-cv-05213
| S.D.N.Y. | Aug 8, 2017Background
- The Universal Church, Inc. (plaintiff), a Pentecostal/Charismatic nonprofit incorporated in 1987 with ~30,000 U.S. members, owns USPTO registrations for marks including “Universal Church” and “The Universal Church” for evangelistic and ministerial services; some registrations later attained incontestable status.
- Defendants are Universal Life Church Monastery Storehouse, Inc. and affiliated entities/individuals that provide free online ordinations and registered multiple domain names incorporating “universal church,” including universalchurch.org (registered 2010).
- Plaintiff sued for Lanham Act trademark infringement (15 U.S.C. §§ 1114, 1125), cybersquatting (15 U.S.C. § 1125(d)), New York common-law unfair competition, and violations of NY GBL §§ 349–350; defendants counterclaimed seeking cancellation/declaratory relief.
- Both parties moved for summary judgment. The court considered (1) whether the marks are entitled to protection (generic vs. descriptive with secondary meaning), and (2) whether defendants’ use is likely to cause confusion (Polaroid factors).
- The court found “Universal Church” generic as applied to churches (primary significance to the public is a type of church), and alternatively held that even if descriptive the evidence fails to show a likelihood of confusion. The court granted defendants’ summary judgment and dismissed plaintiff’s federal and state claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the marks ("Universal Church" / "The Universal Church") protectable trademarks or generic? | The marks are registered and (plaintiff argues) have acquired secondary meaning and incontestable status, so they are protectable. | The terms are generic for churches ("what are you?") and thus not protectable; even if descriptive, no secondary meaning to plaintiff across the relevant public. | "Universal Church" is generic as applied to churches and not entitled to protection; plaintiff’s incontestable status did not change generic-analysis outcome. |
| If marks are protectable, is there a likelihood of consumer confusion from defendants’ use (domain names, website, metadata, keyword bidding, maps)? | Defendants’ use of the same words and optimization caused confusion and diverted users seeking plaintiff. | Even accepting similarity, most Polaroid factors (weak mark, little actual confusion, different services/channels, sophisticated consumers, no bridging) favor defendants. | No likelihood of confusion as a matter of law; summary judgment for defendants. |
| Does defendants’ registration/use of universalchurch.org violate ACPA (cybersquatting)? | Registration of domain names identical/confusingly similar to plaintiff’s marks with bad faith intent to profit. | Marks were not distinctive at the time of registration (2010); no bad-faith ACPA liability. | ACPA claim fails: mark was not distinctive (generic or lacked secondary meaning at registration). |
| Do NY GBL §§ 349–350 or New York common-law claims survive? | Plaintiff contends consumers were misled and public interest harmed by defendants’ conduct and ads. | Claims are duplicative of trademark disputes and do not allege a separate public injury beyond ordinary trademark confusion. | NY common-law claims dismissed for same reasons as Lanham Act claims; NY GBL §§ 349–350 claims fail because no distinct public injury beyond trademark dispute. |
Key Cases Cited
- Virgin Enterps. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003) (two-prong test: mark protectability then likelihood of confusion)
- Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2d Cir. 1976) (spectrum of distinctiveness: generic → descriptive → suggestive → arbitrary → fanciful)
- Park ’N Fly, Inc. v. Dollar Park & Fly, 469 U.S. 189 (U.S. 1985) (descriptive marks require secondary meaning; generic marks not registrable and registrations may be canceled)
- Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997) (definition of generic term and primary significance test)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (multi-factor likelihood-of-confusion test)
- Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977) (refusal to allow monopolization of common descriptive terms)