• Can a denomination prevent a nonaffiliated local church from using a name similar to that of the denomination itself? That was the issue before a federal appeals court in a recent case. The General Conference of the Seventh-Day Adventists sued the “Seventh-Day Adventist Congregational Church” (located in Kealakekua, Hawaii) and its pastor for trademark infringement and unfair competition. A trial court entered a judgment “on the pleadings” in favor of the denomination (i.e., he refused to let the case proceed to trial). The court also issued an order prohibiting the local church from using a name including the term “Seventh-Day Adventist” or “SDA,” or representing to others that it was connected in any way with the Seventh-Day Adventist denomination. The local church refused to comply with this order on the ground that the denomination’s trademark was invalid since it was “generic.” The trial court found the church to be in contempt of court for ignoring its order, and set a fine of $500 per day until the church and its pastor agreed to comply. The church and pastor appealed this decision, and a federal appeals court agreed that the trial court’s summary ruling in favor of the denomination was improper. The court reasoned that the church and its pastor had raised a significant issue (the validity of the denomination’s trademark) that should have been heard by a jury. The appeals court noted that “a trademark’s function is to identify and distinguish the goods and services of one seller from another.” A trademark, however, is always “subject to the defense that it is generic.” A “generic” trademark is “one that tells the buyer what the product is, rather than from where, or whom, it came.” Generic marks are not eligible for trademark protection since they do “not indicate the product of service’s origin, but is the term for the product or service itself.” The church and pastor claimed that the name “Seventh-Day Adventist” is generic since it refers to a religion rather than to a particular church organization. They asserted: “The phrase Seventh-Day Adventist is not theirs alone, as they would like to claim, for it describes a system or set of Bible based Christian beliefs, doctrines, and standards. One therefore is not necessarily Seventh-Day Adventist because of what organization he may be affiliated with, but rather he is a Seventh-Day Adventist because of what he believes.” The appeals court concluded that the denomination’s claim of trademark infringement would fail if the local church and its pastor could prove that the name “Seventh-Day Adventist” is generic. On the other hand, if the denomination could establish that its name was not generic, then it would win its trademark infringement suit if it could prove a “likelihood of confusion” caused by the church’s continued use of a name similar to that of the denomination. In deciding whether or not there is a likelihood of confusion, a court should consider the following factors: (1) the strength of the denomination’s name; (2) the similarity of the parties’ goods or services; (3) similarity of the two names; (4) evidence that persons actually have been confused by the similarity of names; (5) marketing methods used; (6) the likely degree of care the public would take in differentiating between the names; (7) the intent of the local church in using the similar name; and (8) likelihood of “expansion of product lines” (i.e., will the local church benefit at the expense of the denomination). The local church claimed that it had “never in any way sought to deceive or confuse anyone in regard to our name,” and that its use of the word “Congregational” in its name effectively distinguished it from the Seventh-Day Adventists. The case was sent back to the trial court to determine whether or not the denomination’s name is generic, and if not, whether the local church’s use of its present name created a “likelihood of confusion.” One important consideration that the court failed to mention is the doctrine of “secondary meaning.” A generic name is eligible for trademark protection so long as it has acquired a “secondary meaning” in the mind of the public. There can be little doubt that the name “Seventh-Day Adventist” has in fact acquired a secondary meaning since most persons would identify it with a specific religious organization. This important rule should be controlling in the ultimate disposition of this important case. It is also of great significance to many other denominations whose names are in a sense “generic.” General Conference Corporation of Seventh-Day Adventists v. Seventh-Day Adventist Congregational Church, 887 F.2d 228 (9th Cir. 1989).
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