TRADEMARK INFRINGEMENT BY CHURCHES

Church trademark cases are so rare that in our three years of posts we have reported but two cases and this report is a follow up on one of them. Our first report on this matter was in August 2017, Hierarchal Church Titles and Trademarks. In that post, we reported on Protestant Episcopal Church, et al, v The Episcopal Church, 806 SE2d 82, (SC 2017) in which the South Carolina Supreme Court held that the land, buildings and other property of local churches leaving the denomination remained the property of the denomination.

In vonRosenberg v Lawrence, Order and Opinion (D SC ED, 2019), the federal trial court had before it the federal trademark claim of the denomination against the departing local churches. The federal trial court deployed more than 24,000 words to hold that the denominational trademarks, which were federally registered and reached “incontestability,” were infringed by the departing local churches. The federal court issued an injunction against further infringement. In passing, the court noted the departing local churches had recently affiliated with another denominational group. It may have been by the time the decision was issued the dispute was moot or headed in that direction. Also, because there was little advertising done by either group, the main casualties would have been building signage, church bulletins, and websites. Most interesting in the opinion was the Court’s description of the members of the public that were potentially “misled” by the “confusion.” Both sides conceded “that parishioners are generally sophisticated” (at page 51) so those that might be confused would be “potential parishioners” (at page 52) and others that “may never attend” either church or “have to decide between doctrines and communities.” Oddly, the latter two groups are generally known as targets of evangelism. Finally, merely adding a geographical limitation to a name did not prevent infringement.

Local churches departing from a denomination should be prepared to leave behind not only buildings and land but registered names to avoid litigation. A new identity may have to be forged along with a new place to worship to enjoy certain doctrinal or structural freedoms. The only alternative is a contract by which certain rights are purchased, leased, or licensed.

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