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.
Rare are church trademark disputes. The reason is that most marks selected by churches as marketing logos are generic to the religious tradition represented. However, church trademarks are not impossible and may in the future be more prevalent, as well as litigated, as the struggle for separate identity in electronic media deepens. After all, churches are moving away from brick and mortar locations solely and trying to become “virtual,” too. To be successful economic church models require marketing, and marketing invariably involves logos for identification.
In Holy Spirit Association v World Peace and Unification Sanctuary, Memorandum Opinion, United States District Court, Middle District of Pennsylvania, July 22, 2019, the federal trial court before it had motions to dismiss the cases on the pleadings. The motions were overruled so the case will continue through discovery and trial if it is not otherwise settled. Trademark cases are often settled by licensing agreements. Trademark disputes are brought under the federal Lanham Act, 15 USC §1114, et. seq. In this case, the Plaintiff registered what it called the Twelve Gates Mark. The Defendant called it the Tongil Symbol. The Plaintiff registered it as the trademark of its church and the Defendant claimed it was a mark created by the founder of the tradition or denomination. Of course, that meant both churches were in the same tradition or denomination, or at least originally so, for their dispute was over a symbol both claimed to have been created by the founder of the tradition or denomination, Reverend Sun Myung Moon. The federal court held that the dispute could be resolved using the Neutral Principles of Law arising around trademarks. From the opinion’s recitation of the positions of the parties in their preliminary pleadings, the central issue will be whether the symbol was “generic,” a Lanham Act statutory classification similar to the meaning of the word in the common tongue, or was, indeed, actually created only for the Plaintiff local church.
Symbols used by churches are generally “generic” arising from their history, tradition or denomination. If the symbol appears on grave markers, church buildings or historically verifiable documents the likelihood it will be “generic” seems insurmountable. Indeed, most come from computer clip art sold commercially. Only a trademark made by a local or contract artist are likely to survive, and then only if the trademark is truly original and not merely a reinterpretation of a historical image used by the tradition or denomination.