IP Law Daily, TRADEMARK—2d Cir.: Generic ‘Universal Church’ trademarks could not support claims, (Nov 5, 2018)

By Peter Reap, J.D., LL.M.

The federal district court in New York City correctly determined that the trademarks "Universal Church" and "The Universal Church" are generic and it did not err in cancelling the registrations, the U.S. Court of Appeals for the Second Circuit has ruled. Because the marks, asserted by plaintiff The Universal Church (TUC) against Universal Life Church Monastery Storehouse, its affiliate, and four current and/or former officers (together, ULC), were generic, the plaintiff’s cybersquatting claims under the Anticybersquatting Consumer Protection Act were also properly rejected. Finally, TUC’s unfair competition claims were correctly dismissed by the lower court (The Universal Church, Inc. v. Toellner, November 2, 2018, Walker, J.).

TUC filed suit against the defendants, alleging that they infringed the plaintiff’s trademarks by using them on its website, by registering domain names, including universalchurch.org, containing the phrase "universal church," and by bidding and using certain advertising keywords. The district court granted summary judgment in favor of ULC and cancelled TUC’s trademark registrations. TUC appealed.

Genericness. The district court concluded that the trademarks "Universal Church" and "The Universal Church" are generic. A term is generic if it "refers to the genus of which the particular product is a species." Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985). In determining whether a term is generic, the relevant purchasing public is not the population at large, but prospective purchasers of the product. The district court concluded that the relevant public is all those who seek and provide religious worship services, and TUC did not challenge this conclusion on appeal.

Here, ULC met its burden of showing that the term "Universal Church" is generic in the context of "evangelistic and ministerial services, namely, conducting religious worship services," and that the term "The Universal Church" is generic in the context of "religious counseling and ministerial services," the classes for which the trademarks are registered, the Second Circuit determined. Specifically, ULC introduced admissible evidence in the form of an expert report and testimony that "the longstanding common use of the phrase ‘Universal Church’ in various contexts demonstrates without question that the phrase has been in generic usage over two millennia to describe the Church as a whole throughout the world." It also introduced the following definition of "universal" from the Oxford English Dictionary: "Designating the whole Christian Church or all Christians collectively . . . Freq. in universal church" (emphasis in original).

TUC did not create a genuine factual dispute about the issue by presenting any contrary admissible evidence that the term "Universal Church" does not generically refer to religious counseling and evangelistic and ministerial services. The testimony of TUC’s religious expert alone failed to create a genuine dispute that the term "Universal Church" refers to Christian services in general among the relevant public. In addition, the testimony of TUC’s vice president that "Universal Church" is a "distinctive name" because the organization "promote[s] this brand" to its 30,000 members and in its weekly television program (which may reach up to 800,000 people), also failed to establish the significance of the term "Universal Church" among the relevant public. Although TUC pointed to its efforts to police its mark by preventing other organizations from using the words "universal" and "church" in their name, "when . . . the mark has entered the public domain beyond recall, policing is of no consequence to a resolution of whether a mark is generic," the Second Circuit noted. Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d Cir. 1989) Further, because a generic term may never be trademarked, the district court did not abuse its discretion in cancelling the registrations.

Cybersquatting. Because Universal Church’s marks are generic, the district court was correct in granting summary judgment to ULC on TUC’s cybersquatting claims under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125, which required Universal Church to show that its marks were distinctive.

Unfair competition. The district court was also correct to dismiss TUC’s unfair competition claims, the appellate court held. TUC argued that even a generic term may give rise to an unfair competition claim if the junior user adopts the term in order to conflate itself with the senior user. But the evidence did not suggest that ULC, an organization which provides free online ordination and does not conduct church services other than occasional mass weddings, attempted to portray itself as a Pentecostal church in order to confuse the public into mistakenly purchasing its product in the belief that the product is the product of TUC.

This case is No. 17-2960-cv.

Attorneys: Katherine Daniels (Katherine Daniels LLC) and David Donahue (Fross Zelnick Lehrman & Zissu, PC) for The Universal Church, Inc. Stephen Barrett (Wilson, Elser, Moskowitz, Edelman & Dicker LLP) for Calvin Toellner.

Companies: The Universal Church, Inc.

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