ORDER GRANTING IN PART AND DENYING IN PART THE PLAINTIFFS’ MOTION FOR SUMMARY JUDGMENT
The Plaintiffs, the General Conference Corporation of Seventh-Day Adventists and the General Conference of Seventh-day Adventists, brought the instant trademark infringement action against the Defendant, Walter McGill, a pastor of an unincorporated association known as the Creation Seventh Day Adventist Church. Before the Court is the motion of the Plaintiffs for summary judgment. (Docket Entry (“D.E.”) No. 37.) The Defendant has responded and this motion is now ripe for disposition. For the following reasons, the motion is granted in part and denied in part.
BACKGROUND
General Conference Corporation of Seventh-day Adventists (“Corporation”) is a corporation whose principal place of business is located in Maryland. (D.E. No. 37, Pis.’ Statement of Undisputed Facts ¶ 9.) The other Plaintiff, General Conference of Seventh-day Adventists (“General Conference”) is an unincorporated association that represents the interests of the Seventh-day Adventist Church.
(Id.
¶ 10.) The General Conference was formed in 1863, marking the official organization of the Seventh-day Adventist Church. (D.E. No. 21, George W. Reid ThD’s Expert Report ¶ 13.) The church grew out of several congregations that believed that Christ’s Second Advent was imminent and that the Sabbath should be observed on the seventh day of the week.
(Id.
¶ 1.) The Plaintiffs’ expert, George Reid ThD, asserts that none of these early churches called themselves “Seventh-day Adventist” and that it was not until the congregations came together to create a formal church structure that the name “Seventh-day Adventist” was chosen.
(Id.
¶¶ 8-10.) Since the official formation of the church, the names “Seventh-day Adventist” and “SDA” have been used by the Seventh-day Adventist Church as the church’s name, and as its trade name in advertising and
The Corporation holds title to all of the church’s assets. (D.E. No. 37, Pis.’ Statement of Undisputed Facts ¶ 11.) It has registered the marks “Seventh-day Adventist,” “Adventist,” and “General Conference of Seventh-day Adventists,” with the United States Patent and Trademark Office. (Id. ¶¶ 17-23.) Registration number 1,177,185 protects the use of the “Seventh-day Adventist” mark on religious books, magazines, pamphlets, newsletters, brochures, encyclopedias, dictionaries, commentaries, fliers, bulletins, yearbooks, booklets, and bibles. (Id. ¶ 25.) It also protects its use for the establishment and administration of employee health care and benefit programs and medical insurance programs, as well as educational instruction services at the grade school, high school, and college level, and for film production and distribution services, health care services, and religious observances and missionary services. (Id.) Registration numbers 1,176,153 and 1,218,657 protects the “Advent” mark for the same purposes. (Id. ¶¶ 26-27.) Registration number 1,171,760 protects the “General Conference of Seventh-day Adventists” mark for church services. (Id. ¶ 28.) 1 “SDA” is an acronym for “Seventh-day Adventist” that has not been registered. (Id. ¶ 36.) 2 The Plaintiffs assert that they are “legally equivalent terms,” however, and that “SDA” has been used by the General Conference from 1863 onwards “as part of the corporate name, the trade name, in advertising, in publishing and publications, and in the performance of services.” (Id. ¶¶ 40-41.)
The Defendant is the pastor of a church he currently calls “A Creation Seventh Day & Adventist Church,” (D.E. No. 37 Ex. 2 to Pis.’ Statement of Undisputed Facts, Dep. of Walter McGill, at 5), although in his Answer to the Complaint he referred to it as the “Creation Seventh Day Adventist Church,” (D.E. No. 4, Answer, at 1). His church has three members. (D.E. No. 37 Ex. 2 to Pis.’ Statement of Undisputed Facts, Dep. of Walter McGill, at 7.) There is a second three-member church associated with his, which has the same name and is located in British Columbia, Canada. (Id. at 8-9.) In addition, there are other congregations that the Defendant “raised up” in the United States, which have been apostatized, or diverted from the faith. (Id. at 9.)
McGill was originally baptized in a Seventh Day Adventist church affiliated with the Plaintiffs.
(Id.
at 16.) After several years, however, the Defendant decided to separate from the church because of a theological dispute.
(Id.
at 18.) In 1990, McGill formed his current church, taking
STANDARD OF REVIEW
Rule 56(c) provides that a
judgment ... shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.
Fed. R. Civ. P. 56(c);
see Celotex Corp. v. Catrett,
ANALYSIS
The Plaintiffs charge McGill with 1) trademark infringement in violation of 15 U.S.C. § 1114; 2) engagement in unfair trade practices in violation of § 1125(a), 3) dilution of their trademarks in violation of § 1125(c), and 4) engagement in cyberpiracy by appropriating their trademarks in domain names in violation of § 1125(d)(1). (See D.E. No. 1 Compl. ¶¶ 42-56.) The Complaint also alleges that the Defendant committed unfair or deceptive trade practices in violation of Tennessee’s Consumer Protection Act, Tenn. Code Ann. § § 47-18-101 et seq., as well as common law infringement of the Plaintiffs’ mаrks, common law unfair competition, and injury to business reputation or dilution of the Plaintiffs’ marks in violation of section 47-25-513 of the Tennessee Code. (Id. ¶¶ 57-70.) The Plaintiffs seek injunctive relief, damages, and attorneys’ fees. (See D.E. No. 1, Compl., 17-20.)
I. Trademark Infringement and Unfair Competition Claims
The General Conference and the Corporation argue that they should be granted summary judgment because their trademarks are incontestible pursuant to 15 U.S.C. § 1065 and there is a likelihood of confusion between the “mother” church they represent and the Defendant’s church. {See, generally, D.E. No. 37, Mem. in Supp.) McGill contends in response that the marks have become generic, or, in the alternative, that they are descriptive but have not acquired secondary meaning, and that there is no chance of confusion between the Plaintiffs’ and his churches. {See, generally, D.E. No. 56, Def.’s Resp.) The Court will first determine the validity of the Plaintiffs’ marks and then apply the likelihood of confusion test.
A. Validity of the Marks
The Sixth Circuit has held that “ ‘[t]he existence and extent of trademark protection for a particular term depends on that term’s inherent distinctiveness. Courts have identified four general categories of terms: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.’ ”
Bath & Body Works, Inc. v. Luzier Personalized Cosmetics, Inc.,
A suggestive term suggests an ingredient or characteristic of a good and requires the public to use its imagination to determine the nature of that good.
Champions Golf Club,
15 U.S.C. § 1065 provides that, under certain circumstances, a mark becomes incontestible five years after it has been registered. 3 In this case, the Plaintiffs argue that because their registered marks have met all the requirements of § 1065, they are incontestible and subject only to certain enumerated defenses listed in 15 U.S.C. § 1115(b). (D.E. No. 37, Mem. in Supp., at 4-5.) The Court notes that this argument does not apply to the mark “SDA,” which has not been registered. McGill does not challenge the assertion that the “Seventh-day Adventist” and “Adventist” marks are incontestable, but maintains that the Plaintiffs’ marks have become generic because they refer to a religion or a set of religious beliefs, rather than to a specific church or denomination. (D.E. No. 56, Def.’s Resp., at 4-12.)
A mark’s incontestable status does not protect it from a challenge that it is or has become genеric.
Nartron Corp. v. STMicroelectronics, Inc.,
(i) “Seventh-day Adventist” Mark
In
Stocker v. General Conference Corp. of Seventh-Day Adventists,
A federal court in the Southern District of Florida similarly held that the term “Seventh-day Adventist” is not generic when it is used as a church name.
Gen. Conference Corp. of Seventh-Day Adventists v. Perez,
Another district court, this one in the Central District of California, reached a different conclusion, holding that “the term ‘Seventh-day Adventist’ has a dual meaning: it refers not only to the Church, but to аdherents of the religion of Seventh-day Adventism.”
Gen. Conference Corp. of Seventh-Day Adventist v. Seventh-Day Adventist Kinship, Int’l,
No. CV-87-8113 MRP,
The Defendant insists that the Plaintiffs’ marks have become generic because “Seventh-Day Adventism ... has evolved into a religion that has several denominаtions of followers who are all known as Seventh-Day Adventists.” (D.E. No. 56, Def.’s Resp., at 5.)
4
In support, he contends that there are at least two other break-away churches, in addition to his own, that are not affiliated with the General Conference and that use the term “Seventh-day Adventist” in their name: the Seventh Day Adventist Reform Movement, which was started in 1915, and the Davidian Seventh Day Adventists, founded in 1942. (D.E. No. 26, Defi’s Resp., at 5.) McGill also points out that there are denominations that use the terms “Seventh-Day” or “Adventist” separately in their names, for example, the Seventh-Day Baptists.
(Id.
at 9.) Thus, the Defendant concludes that the terms “Seventh-Day” and “Adventist” are generic and the mark “Seventh-day Adventist” is invalid.
(Id.
at 8-9 (citing
Blinded Veterans Ass’n,
The Court finds that the evidence presented by the Defendant is not sufficient to overcome the presumption that the Plaintiffs’ “Seventh-day Adventist” mark is not generic. The fact that
The Defendant has not introduced any survey evidence that shows whether the relevant public believes that the term “Seventh-day Adventist” refers to a religion or to a specific denomination, despite the fact that such evidence is increasingly common in trademark disputes.
See
2 J. Thomas McCarthy,
McCarthy on Trademarks & Unfair Competition
§ 12:14 (4th ed. 1996) (“Consumer surveys have become almost de rigueur in litigation over genericness.”). Instead, he challenges a 1999 survey that the Plaintiffs have introduced on the basis that it is outdated and does not show that the term is not generic. (D.E. No. 56, Def.’s Resp., at 6.)
6
This survey found that 44% of the general public, consisting of adults 18 years and older,
McGill first argues that the survey results are misleading because of the way the questions were formulated. According to the Defendant, the survey did not ask “whether people associate the term ‘Seventh-Day Adventist’ with the name of a religion or the name of a church,” but inquired instead what organization the respondents associated the term with. (D.E. No. 56, Mem. in Opp., at 6-7.) In response to that question, 23% of the general public replied a “religious organization or group,” 18% replied a “church,” and 5% replied a “church organization or group.” (D.E. No. 21, Harry O’Neill’s Expert Report, at 14.) After answering that question, the respondents were then asked what else, if anything, they associated the term with. (D.E. No. 21, Appendix to Harry O’Neill’s Expert Report, Part A-Questionnaire, at 2.) Thirteen percent replied a “religion.” (D.E. No. 21, Harry O’Neill’s Expert Report, at 14.) When only the ánswers of those who had heard of Seventh-day Adventists are considered, the percentage of respondents who associated the term with a religion increases to 17%. (Id.)
The Court agrees with the Defendant’s argument that the phrasing of the survey questions makes it difficult to determine whether the respondents associated the term “Seventh-day Adventist” only with the General Conference. The phrasing of the first question appears formulated to elicit a response that would support the Plaintiffs’ position, because the respondents were specifically asked to identify a type of organization. Even those who thought of it as a religion, rather than a single church, would probably reply that the type of organization they associated it with was a religious organization or church. The follow-up inquiry of what else the respondents thought of upon hearing the term does not remedy this deficiency because it is too general. Nonetheless, these faults in the survey do not provide any evidence that the term “Seventh-day Adventist” is generic. They only weaken the evidence that it is not. Thus, it does not help the Defendant overcome the presumption that “Seventh-day Adventist” is not a generic mark.
Next, the Defendant contends that even if there is no issue of material fact as whether this mark has become generic, the Court should hold that a genuine issue of material fact exists as to whether it is descriptive, but has not acquired secondary meaning. (D.E. No. 56, Def.’s Resp., at 14.12-14.) As stated above, a descriptive term “‘can, by acquiring a secondary meaning ... become a valid trademark.’ ”
Bath & Body Works,
an article of merchandise when shown to a prospective customer must prompt the affirmation, ‘That is the article I want because I know its source,’ and not the negative inquiry as to ‘Who makes that article?’ In other words, the article must proclaim its identification with its ' source, and not simply stimulate inquiry about it. '
Champions Golf Club,
McGill’s argument that the Plaintiffs’ registered mark is descriptive, but has not acquired secondary meaning, is without merit, because the mark is incontestable pursuant to 15 U.S.C. § 1065. The Supreme Court’s has held that “[t]he language of the Lanham Act ... refutes any
(ii) “Adventist” Mark
The Court finds that there is a material issue of fact as to whether the registered mark “Adventist” is generic. As with the mark “Seventh-day Adventist,” there is a presumption that the mark is not generic because all the requirements of 15 U.S.C. § 1065 have been met.
Nartron Corp.,
(iii) “SDA” Mark
Because “SDA” is not a registered trademark, the burden is on the Plaintiffs to prove that the term is valid.
Blinded Veteran’s Ass’n,
B. Likelihood of Confusion
To prove liability for trademark infringement, a plaintiff must establish that a defendant’s use of its mark is “likely to cause confusion among consumers.”
Interactive Products Corp. v. a2z Mobile Office Solutions, Inc.,
The Sixth Circuit has listed the following factors used by courts to determine whether a likelihood of confusion exists: “1) the strength of the senior mark; 2) relatedness of the goods and services; 3) the similarity of the marks; 4) evidence of actual cоnfusion; 5) the marketing channels used; 6) likely degree of purchaser care; 7) the intent of the defendant in selecting the mark; and 8) the likelihood of expansion of the product lines.”
Id.; see also Daddy’s Junky Music Stores,
As to the first factor, the Sixth Circuit has held that a mark that has become incontestable pursuant to 15 U.S.C. § 1065 should be presumed to be
With regard to the second factor, relatedness of the goods and services, the Defendant concedes that its- goods and services are connected to those of the Plaintiffs, because both are churches that share similar beliefs and provide religious services in line with those beliefs. (D.E. No. 56, Def.’s Resp., at 17.)
When considering the third factor, similarity of the marks, courts must regard the marks in their entirety and examine how they are viewed in the marketplace.
Homeowners Group,
The Defendant claims that the addition of the word “Crеation” to the name of the church, the capitalization of the word Day, and use of an ampersand eliminates any confusion. (D.E. No. 56, Def.’s Resp., at 18.) While this might be true if the two church names are viewed side by side, it is foreseeable that members of the public who see the Defendant’s church sign in passing may confuse his church with one of the Plaintiffs’. It is doubtful that the capi
The Plaintiffs rely heavily on the fourth element, evidence of actual confusion, in their motion for summary judgment. (See D.E. No. 37, Mem. in Supp., at 6-8.) Proof of actual confusion is the best evidence of likelihood of confusion.
Homeowners Group,
McGill acknowledges that the fifth factor, marketing channels used, points in favor of the conclusion that the public would confuse his church with that of the Plaintiffs. (D.E. No. 56, Def.’s Resp., at 17.)
The sixth factor, the likely degree of purchaser care, does not weigh in favor of finding that there is a likelihood of confusion.
Generally, in assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution .... when services are expensive or unusual, the buyer can be expected to exercise greater care in her purchases. When services are sold to such buyers, other things being equal, there is less likelihood of confusion.
Homeowners Group,
The seventh factor considers the intent of the Defendant in selecting the mark. The Plaintiffs argue that it is without dispute that McGill’s use of the mark was intentional, given that he was once a member of the Seventh-day Adventist church. (D.E. No. 37, Mem. in Supp., at 8.) However, while the use of the mark was certainly knowing, there is no evidence that the Defendant intended to confuse the public into believing that his church was one of the Plaintiffs’.
See Homeowners Group,
Last, the Defendant concedes that the eighth factor, likelihood of expansion of the product lines, supports the finding that a likelihood of confusion exists. (D.E. No. 56, Def.’s Resp., at 17.)
Viewing the facts in the light most favorable to McGill, the Court finds that there is no issue of material fact as to whether there is a likelihood of confusion between the Plaintiffs’ and the Defendant’s churches. Almost every single factor weighs in the Plaintiffs’ favor; those that do not are less worthy of consideration when they favor an alleged infringer.
See Daddy’s Junky Music Stores,
Thе Defendant raised in his Answer several defenses, on which the Plaintiffs have moved for summary judgment, but to which the Defendant did not respond. They include: 1) enforcement of the trademarks would violate the First Amendment; 2) the claims are barred by the doctrine of laches; 3) the Plaintiffs are barred by the fair use doctrine; 4) McGill does not use the marks in interstate commerce; and 5) the Plaintiffs have deviated from their own religious doctrines. (D.E. No. 4, Answer ¶¶ 71-73, 75-76.) The Court will discuss these in turn.
As to the Defendant’s first defense, this Court has already held that the Free Exercise Clause of the First Amendment is not implicated in determining the trademark and intellectual property rights of religious organizations. (D.E. No. 61, Order Denying Def.’s Mot. to Dismiss, at 4.)
The laches defense is also inapplicable to this case. When deciding whether a suit is time-barred under the doctrine of laches, a court should consider “ ‘(1) whether the owner of the mark knew of the infringing use; (2) whether the owner’s delay in challеnging the infringement of the mark was inexcusable or unreasonable; and (3) whether the infringing user
The Defendant also cannot prove that the fair-use doctrine is applicable. The use of an incontestable mark is permissible, even when there is a likelihood of confusion, when the “term is used descriptively, not as a mark, fаirly, and in good faith.”
KP Permanent Make-Up,
The Court nonetheless finds that McGill cannot avail himself of the fair use doctrine, because his use of the mark was a trademark use. 15 U.S.C. § 1127 defines a trademark as “word, name, symbol, or device” used “to identify and distinguish” certain goods from others. The Plaintiffs’ “Seventh-day Adventist” mark was used by McGill to identify and distinguish his church, which he named either “Creation Seventh-day Adventist Church” or “Creation Seventh Day & Adventist Church.” Furthermore, the Defendant advertises his church both online and by the use of a prominent sign displayed in front of his church.
See, e.g.,
http://csda. us; http://creation-seventh-day-adventistchurch.org. Thus, because McGill utilizes the Plaintiffs’ mark to identify and advertise his church, he cannot rely on the fair use doctrine to defend this suit.
See Gen. Conference Corp. of Seventh-Day Adventist,
Next, because the Defendant used the Plaintiffs mark on the internet, his defense that he did not “employ the name CREATION SEVENTH DAY ADVENTIST in commerce” is without merit. (D.E. No. 4, Answer ¶ 75.) At least one
Last, the Court declines McGill’s invitation to hold that the Plaintiffs’ mark is invalid because their church has deviated from its own doctrine. Such an inquiry would certainly violate the First Amendment. Furthermore, the Court has found no authority where this theory was deemed an appropriate defense against trademark infringement and unfair competition claims. Thus, the Defendant has not raised a viable defense.
II. Remaining Claims
Remaining are the Plaintiffs’ cyberpiracy claim, brought pursuant to 15 U.S.C. § 1125(d) and their dilution claims, brought under federal law, 15 U.S.C. § 1125(c), and state law, Tenn. Code Ann. § 47-25-513. The Court denies summary judgement on these contentions because the Plaintiffs did not address them in their motion. The bulk of the motion consists of a discussion of the likelihood of a confusion test and the argument that the marks in question are not generic, but are at least descriptive, with secondary meaning. However, the likelihood of confusion test is not relevant to a determination of whether a defendant has violated either the federal or Tennessee anti-dilution law.
AutoZone,
CONCLUSION
For the foregoing reasons, the Court hereby GRANTS in part and DENIES in part the Plaintiffs’ motion for summary judgment. Specifically, the Court grants the Plaintiffs’ motion on their trademark infringement and unfair competition claims based on their “Seventh-day Adventist” mark. However, it denies summary judgment as to the Plaintiffs’ trademark infringement and unfair competition claims premised on their “Adventist” and “SDA” marks and denies summary judgment as to the Plaintiffs’ remaining claims.
Notes
. The Court notes that while the Defendant is charged in the Complaint with using the mark "General Conference of Seventh-day Adventists,” none of the undisputed facts listed by the Plaintiffs in support of their motion for summary judgement assert that he has used that specific mark. Thus, this Order will not discuss any violation of this trademark by McGill.
. Trademark or service mark ownership "is not acquired by federal or state registration. Rather, ownership rights flow only from prior appropriation and actual use in the market.”
Homeowners Group, Inc. v. Home Mktg. Specialists, Inc.,
. To become incontestable, the registrant must file an affidavit with the United States Patent and Trademark Office five years after registering the mark, which asserts that no final decision аdverse to the registrant’s claim of ownership over, or the right to register, the mark has been rendered and that there is no proceeding involving those matters pending. 15 U.S.C. § 1065.
. According to the Defendant, a theology graduate student named Russell Kelly also argues that "Seventh-day Adventist" is a generic term to describe a religion. (Id. at 11.)
. The Trademark Trial and Appeal Board in
Stocker
considered the relevant public to consist of "Christians and, more specifically, Adventist Christians (that is, those who believe in the nearness of the second coming of Christ). It is these persons who are most likely to avail themselves of [General Conferencej’s publications and services."
. McGill also references two earlier surveys mentioned by the Plaintiffs, which have not been submitted to the Court and therefore will not be considered.
. Wikipedia is a volunteer-edited online encyclopedia. See http://en.wikipedia.org/wiki/ Wikipedia:About
. While the General Conference and the Corporation assert that the acronym is "legally equivalent” to the mark "Seventh-day Adventist,” the Defendant disputes the assertiоn to the extent it implies that the mark is not generic. (Compare D.E. No. 37, Pis.’ Statement of Undisputed Facts ¶ 41 (emphasis added) -with D.E. No. 56, Def.’s Resp. to Pis.' Statement of Undisputed Facts ¶ 41.)
. This position has also been adopted by the Eleventh Circuit, but has been criticized by the Second, Fourth, Fifth, Seventh, and Ninth Circuits.
Sports Auth., Inc. v. Abercrombie & Fitch, Inc.,
. Because the Court has held that the Defendant has raised an issue of material fact as to whether "Adventist” and “SDA” are valid marks, the Court will only apply the likelihood of confusion test to "Seventh-day Adventist.”
. The five elements of a successful anti-dilution claim are: " '[T]he senior mark must be (1)famous; and (2) distinctive. Use of the junior mark must (3) be in commerce; (4) have begun subsequent to the senior mark becoming famous; and (5) cause dilution of the distinctive quality of the senior mark.' ”
AutoZone,
. These factors include:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a namе that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as tothe source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or thе person's prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII)the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(XI) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c) of this section.
15U.S.C. § 1125(d)(l)(B)(i).