Wednesday, August 30, 2017

"universal" is generic for churches

Universal Church, Inc. v. Universal Life Church/ULC Monastery,  2017 WL 3669625, No. 14 Civ. 5213 (S.D.N.Y. Aug. 8, 2017)

The Universal Church, Inc., is a Pentecostal/Charismatic church with “around 30,000 members,” while its Brazilian affiliate has millions of members. Defendant ULC is a nonprofit that offers free ordinations to its members; it’s an offshoot of a church founded in California in the 1950s that was initially called the “Universal Church.”  The plaintiff registered “Universal Church,” “The Universal Church,” and “Universal Church of the Kingdom of God.” The first and third were registered for use in “evangelistic and ministerial services, namely, conducting religious worship services” and became incontestable in 2012. “The Universal Church” was registered in 2012 for use in “religious counseling and ministerial services,” “newsletters and informational brochures all about religious beliefs and practices,” and “t-shirts distributed in connection with religious groups.”

In 2009, defendants attempted to register “Universal Life Church” and several similar marks; they were rejected on 2(d) grounds and the cited marks included “Universal Church” and “Life Church.” They abandoned the applications.

Plaintiff challenged five types of uses: (1) 17 domain names, including (registered in 2010), containing the phrase “universal church”; (2) use of “Universal Church” on the website;

(3) use of “Universal Church” in the website’s metadata so that the website’s name shows up as “The Universal Church” in search results;

 (4) bidding on advertising keywords, including “the universal church,” so that defendants’ websites appear in Internet search engine ads; and (5) “hijacking” map-based searches so that defendants’ website is associated with the location of plaintiff’s churches. For example, the Google Maps search result for plaintiff’s church at 1077 Southern Boulevard in the Bronx was linked to defendants’ website,, as shown below:

The court found that “Universal Church” was generic for the services at issue—in a useful point that reminds me of the Seventh Circuit’s Car Freshner case on descriptive fair use, the court noted that the question of who bears the burden of proof on protectability “turns on whether plaintiff is attempting to enforce its trademark within the class of services for which it was registered.”  The court interpreted “evangelistic and ministerial services, namely conducting religious worship services,” broadly, since ordaining ministers as defendants do is a “ministerial service.”  Also, plaintiff had apparently objected to many other uses by other religious and even non-religious organizations, indicating the breadth of its interpretation of the class.  Thus, plaintiff was entitled to a presumption of validity.

Still, “universal” was generic for churches.  There was lots of evidence, dictionary and historical, that “universal” is understood as referring to the entire Christian Church or all Christians collectively. “Universal” for churches has a similar meaning to “catholic,” which is simply the transliteration of the Greek word for “universal,” “καθολικóς” or “katholikos.” (The court later says it isn’t opining on whether Catholic is itself generic.)  The parties agreed that this meaning was “well-established within the Roman Catholic Church and that at least some non-Catholics understand and use the term in this sense.”  The use had existed for hundreds of years, or thousands if you add in the original Latin and Greek versions.  Defendants also presented evidence that numerous churches use “universal” and “universal church” in their name.  It’s even part of the name of a denomination, Unitarian Universalism.

Plaintiff’s evidence of trademark meaning was minimal.  It claimed that it used the mark in connection with its 230 physical locations and weekly broadcasts that reach 800,000 people. But this was based on testimony from its own employees, which had little probative value; it couldn’t substantiate the viewership claims with documentary evidence.  Even if the court accepted the plaintiff’s claim to use the “Universal Church” mark in connection with its physical churches and broadcasts, that didn’t show how the mark is understood by the vast majority of the “relevant public” who don’t belong to the church. The only evidence about that public was two articles referring to plaintiff as the “Universal Church.”

Based on this record, “the primary significance of ‘universal church’ to the relevant public is a type of church rather than plaintiff, namely one that considers itself to be universal in the sense of representing the entire Christian church.”  The court declined to grant the plaintiff a monopoly over “universal” in church names, “a monopoly which plaintiff has already indicated that it would enforce aggressively. We are persuaded that the trademark law is simply not intended to allow the mark to be weaponized by plaintiff in this way.”

Even if the court found that “Universal Church” was descriptive, it would still reject the plaintiff’s claim, due to the weakness of the mark and other factors.  As to actual confusion, “plaintiff’s evidence suggests that someone searching the Internet for ‘universal church’ will sometimes land on defendants’ website.”  But the evidence didn’t show that this was because of defendants’ use of the mark, or that people conducting such a search were actually looking for the plaintiff.  And there was no evidence that  anyone purchasing ordination services was confused by defendants’ use of “Universal Church.”  Plaintiff’s survey allegedly showing likely confusion “attempts to measure the extent to which someone googling ‘the universal church’ would believe that he had landed on a website for an entity called “The Universal Church.”  (Googling!)  But that was of limited value because the survey takers were just told they were searching “for a generic entity named ‘The Universal Church,’ without any attempt to measure whether the survey takers associated such an entity with plaintiff.”

Plaintiff’s VP testified that “many” of its pastors and members “had a hard time trying to reach our correct Web site while they were searching for our domain.” This was too vague to show actual confusion, or that such confusion “resulted from defendants’ use of plaintiff’s trademarks, as opposed to, for example, defendants’ non-infringing search optimization strategies.”  Neither party discussed IIC separately, but the court doubted whether initial interest confusion is even relevant here, because IIC requires confusion, not mere diversion.  Similarly, instances where individuals “refer[red] to the defendants by the misnomer Universal Church” weren’t relevant to confusion claim because “universal church” wasn’t being used to refer to the plaintiff.

The court did note that a reasonable juror could come out either way on defendants’ intent; it just didn’t matter, even if intent favored the plaintiff.

The quality of defendants’ services, which the Second Circuit hasn’t gotten around to eliminating, was interesting if only because the court was called on to judge the quality of religious services.   “Plaintiff argues that defendants’ ordination services are inferior because they allow anyone to become ordained online without committing to a particular teaching or faith, without formal education, without training, and without committing to attend to the spiritual needs of others. On the other hand, the features that plaintiff views disparagingly are likely the very features that defendants’ customers value. Thus, we find that defendants’ services are not inherently inferior.”

Cybersquatting claims failed too, of course; even if the mark weren’t generic, the primary cybersquatting claim would still  have failed because the mark was not distinctive at the time was registered, in 2010, before the “Universal Church” registration became inconstestable and before it acquired any secondary meaning.

The court granted summary judgment sua sponte on the NYGBL claims because they couldn’t succeed; ordinary trademark or trade dress infringement claims are not cognizable under §§ 349 and 350 unless there is a “specific and substantial injury to the public interest over and above ordinary trademark infringement or dilution.”  The plaintiff argued that there would be harm from getting the wrong religious services, but “the injury is precisely the type of injury that results from ordinary trademark confusion and does not constitute a separate public injury.”

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