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Creation Seventh Day & Adventist Church Infringes the “Seventh-day Adventist” Trademark, TN District Court Finds
General Conference Corp. of Seventh Day Adventists v. McGill
No: 06-1207, U.S. District Court for the Western District of Tennessee, 06/23/2008
Companies Mentioned: Creation Seventh Day & Adventist Church, General Conference Corporation of Seventh-day Adventists, General Conference of Seventh-day Adventists
Holding
The U.S. District Court for the Western District of Tennessee held that defendant’s “Creation Seventh Day & Adventist Church” infringed the “Seventh-day Adventist” trademark owned by plaintiff General Conference Corp. of Seventh Day Adventists. Although a trademark like that of plaintiffs’ becomes incontestable five years after its registration, it could still be challenged as generic, in which case the burden of proof lies on the challenger. Here, defendant failed to present sufficient evidence to overcome the presumption that such mark was not generic. The fact that two other small churches utilize the name does not establish that the relevant public does not associate it with the “mother” church. In the absence of proof, the district court could not just assume that the relevant public would view the disputed term merely as a way to refer to a person who believes that the Sabbath should be celebrated on the seventh day and that the return of Jesus Christ is imminent, and not primarily as a means of reference to a member of the plaintiffs’ church. Motion for summary judgment in favor of plaintiffs in their trademark claim was therefore warranted.
Detailed Summary
Plaintiff General Conference Corporation of Seventh-day Adventists (“Corporation”) is a corporation whose principal place of business is located in Maryland. The Corporation was formed in 1863, marking the official organization of the Seventh-day Adventist Church. Order, pp. 1-2, citing D.E. No. 21, George W. Reid ThD’s Expert Report, paragraph 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., paragraph 1. 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., citing D.E. No. 37, Pls.’ Statement of Undisputed Facts, paragraphs 9-10.
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 publishing. Id., citing D.E. No. 37, Pls.’ Statement of Undisputed Facts, paragraph 40. The Corporation has registered the marks “Seventh-day Adventist,” “Adventist,” and “General Conference of Seventh-day Adventists,” with the United States Patent and Trademark Office. Id., paragraphs 17-23.
On the other hand, defendant Walter McGill is the pastor of a church he calls “A Creation Seventh Day & Adventist Church,” Order, p.3, citing D.E. No. 37 Ex. 2 to Pls.’ Statement of Undisputed Facts, Dep. of Walter McGill, at 5. He also referred to it as the “Creation Seventh Day Adventist Church.” His church has three members. McGill was originally baptized in a Seventh Day Adventist church affiliated with the plaintiffs. After several years, however, defendant decided to separate from the church because of a theological dispute. Id. , citing id. at 18. In 1990, McGill formed his current church, taking its name from a divine revelation. While defendant was aware that the plaintiffs had trademarked the name “Seventh Day Adventist,” he used it anyway, because he believed that he was divinely mandated to do so.
Plaintiffs thus filed trademark infringement claims, among others, against defendant. In their motion for summary judgment, they argued that their trademarks were incontestable 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. In response, defendant McGill asserted that the marks were generic, or, in the alternative, were descriptive but have not acquired secondary meaning, and that there was no chance of confusion between the plaintiffs’ and his churches.
In rejecting defendant’s argument that plaintiffs’ “Seventh-day Adventist” was generic, the district court held that defendant failed to present sufficient evidence to overcome the presumption that such mark was not generic. The fact that two other small churches utilize the name does not establish that the relevant public does not associate it with the “mother” church. If anything, the fact that the defendant can point to only two other splinter groups founded in the last century that bear the name supports the conclusion that members of the relevant public would generally associate the term with the churches affiliated with the General Conference. Order, p. 11. The district court could not just assume that the relevant public would view the disputed term merely as a way to refer to a person who believes that the Sabbath should be celebrated on the seventh day and that the return of Jesus Christ is imminent-and not primarily as a means of reference to a member of the plaintiffs’ church. Id., p. 12.
In addition, defendant did not present any survey evidence that showed 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. Id., p.12, citing 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 12:14 (4th ed. 1996).
The Court also rejected defendant’s contention that the registered mark is descriptive and has not acquired secondary meaning because the mark was incontestable pursuant to 15 U.S.C. § 1065. The Supreme Court’s has held that “(t)he language of the Lanham Act . . . refutes any conclusion that an incontestable mark may be challenged as merely descriptive.” Id., p. 14, citing Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 196 (1985).
With respect to plaintiffs’ “Adventist” mark, the district court found that there was a material issue of fact as to whether such mark was generic. As with the mark “Seventh-day Adventist,” there is a presumption that the mark was not generic because all the requirements of 15 U.S.C.§ 1065 have been met. Id., p. 15, citing Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 405 (6th Cir. 2002). To rebut the presumption, defendant used a dictionary definition of “Adventism” from Webster’s Ninth New Collegiate Dictionary 59 (1985) and the Wikipedia at http://en.wikipedia.org/wiki/Adventism. Both the dictionary definition and the Wikipedia entry supported the conclusion that the term “Adventist” refers to a set of beliefs, rather than to the churches led by the General Conference. Id., citing Stocker v. General Conference Corp. of Seventh-Day Adventists, 39 U.S.P.Q.2d 1385, 1996 WL 427638, at *15 (Feb. 15, 1996). Hence, on the “Adventist” mark, the district court denied plaintiffs’ motion for summary judgment.
With respect to the “SDA” mark, the district court held that because it was not a registered trademark, the burden was on the plaintiffs to prove that the term was valid. Id., p. 16, citing Blinded Veterans Ass’n v. Blinded Am. Veterans Found., 872 F.2d 1041 (D.C. Cir. 1989). Plaintiffs however failed to meet its burden, and hence the district court denied their motion for summary judgment regarding their “SDA” mark.
After having ruled on the validity of the “Seventh-day Adventist” mark, the district court then determined whether there was a likelihood of confusion. The district court applied the eight factors laid down in the case of Interactive Products Corp. v. A2Z Mobile Office Solutions, Inc., 326 F.3d 687, 694 (6th Cir. 2003), and found that such factors weighed in favor of plaintiffs. Specifically, the first factor, i.e., strength of the senior mark, weighed in favor of plaintiffs since defendant McGill failed to overcome the presumption that the incontestable mark “Seventh-day Adventist” is strong. With regard to the second factor, relatedness of the goods and services, defendant conceded that its goods and services are connected to those of the Plaintiffs, because both were churches that shared similar beliefs and provide religious services in line with those beliefs. Id., p. 19, citing D.E. No. 56, Def.’s Resp., at 17.
With respect to the third factor, similarity of the marks, the fact that McGill added the word “Creation” to the plaintiffs’ mark did not sufficiently distinguish it, because plaintiffs’ strong three-word mark appeared in full thereafter, with the words in the original order. Further, the district court found it doubtful that the capitalized “D” and the ampersand would be immediately noticeable to passers-by.
The district court likewise found the fourth factor, evidence of actual confusion, to be in favor of plaintiffs, by reason of absence of persuasive evidence of actual confusion. Because such evidence is hard to find, however, a lack of evidence of actual confusion is rarely significant. Id., p. 21, citing Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 284 (6th Cir. 1997). McGill acknowledged that the fifth factor, marketing channels used, pointed in favor of the conclusion that the public would confuse his church with that of the plaintiffs. Id., citing D.E. No. 56, Def.’s Resp., at 17.
The sixth factor, the likely degree of purchaser care, did not weigh in favor of plaintiffs. Id. Pp. 21-22, citing Homeowners Group, Inc. v. Home Mktg Specialists, Inc., 931 F.2d 1111 (6th Cir. 1991). The district court sustained defendant’s view that it was difficult to imagine someone accidentally becoming a member of his church, while believing that it is affiliated with the General Conference, given that the amount of care most people take in selecting a church is significantly greater than the amount of care they might take in making a consumer purchase. The seventh factor, the intent of the defendant in selecting the mark, weighed in favor of defendant, in the absence of evidence that defendant intended to confuse the public into believing that his church was one of the plaintiffs’. Id., p. 22, citing Homeowners Group, 931 F. 2d at 1111. Last, the defendant conceded that the eighth factor, likelihood of expansion of the product lines, supported the finding that a likelihood of confusion existed. Id., citing D.E. No. 56, Def.’s Resp., at 17.
Viewing the facts in the light most favorable to McGill, the district court found that there was no issue of material fact as to whether a likelihood of confusion exists by defendant’s use of the “Creation Seventh Day & Adventist Church” mark. Almost every single factor weighs in the Plaintiffs’ favor; those that do not were less worthy of consideration when they favor an alleged infringer. Id., pp. 22-23, citing Daddy’s Junky Music Stores, 109 F.3d at 284-87. Thus, the district court concluded that the plaintiffs had established that McGill violated trademark infringement laws by using the mark “Seventh-day Adventist” without permission.
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