• Key pointChurch Names A church name is a valuable property right that is protected by the legal principle of unfair competition. Protection also is available under federal trademark law.
A federal court in Florida ruled that a local church’s unauthorized use of the name “Seventh-Day Adventist” (and the acronym “SDA”) could be prohibited on the ground that they violated the national Seventh-Day Adventist Church’s trademark. In 1980 the Seventh-Day Adventist Church (the “national church”) obtained a trademark registration for the name “Seventh-Day Adventist” with the United States Patent and Trademark Office. The trademark application indicated that the mark would be used in connection with several goods and services including religious publications, employee health care and benefit programs, medical insurance programs, educational services, film production, health care services, and church services. Several members of a Seventh-Day Adventist church in Florida left the church to form their own congregation (the “new church”). The new church used the names “Seventh-Day Adventist” and “SDA.” The new church began a radio broadcast, and later sought to affiliate with a regional body of the national Seventh-Day Adventist Church. Denominational officials informed the church that it would not be allowed to affiliate until it discontinued radio broadcasts attacking the Catholic Church. The church refused to agree to this condition, and was unable to affiliate with the denomination. Nevertheless, the new church continued to use the name “Eternal Gospel Church of Seventh Day Adventists” on its church sign, in newspaper advertisements, fliers, billboards, bulletins, audio tape recordings, and on radio broadcasts. The new church is listed in the section of “Seventh-day Adventist Churches” in the local telephone directory. The national church sought a court order prohibiting the new church from using the name “Seventh-Day Adventist” or any confusingly similar name, or the acronym “SDA.” A federal court issued the order, concluding that the new church had infringed upon the national church’s trademark.
The court began its opinion by noting that the federal trademark law specifies that no person shall, without consent of the trademark holder, use in commerce any trademark if “such use is likely to cause confusion, or to cause mistake or to deceive.” Terms that may be registered as trademarks fall into four categories of strength (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary. Generic terms are those which name “the class of which an individual article or service is but a member.” Descriptive terms “identify a characteristic or quality of an article of service.” Suggestive terms suggest characteristics of the goods and services and “require an effort of the imagination by the consumer in order to be understood as descriptive.” Arbitrary or fanciful terms are words or phrases that bear no direct relationship to the product. The court noted that “generic terms represent the weaker end of the spectrum and arbitrary terms represent the stronger.
The court noted that generic terms may never be registered as trademarks, and that descriptive terms may not be registered as trademarks unless the holder shows that the mark has acquired “secondary meaning” (the mark has become distinctive of the trademark holder’s product or services).
A “Suggestive” Mark
As noted above, a suggestive trademark is one that “suggests” characteristics of the corresponding goods and services and “require an effort of the imagination by the consumer in order to be understood as descriptive.” Suggestive marks require no proof of “secondary meaning” to be entitled to protection. The court concluded that the trademark “Seventh-Day Adventist
is at least suggestive and at a minimum is descriptive (not generic). The words “seventh-day” alone define Saturday as the seventh day of the week, but alone do not suggest keeping the seventh day holy within the total doctrines and tenets of [the national church]. Similarly, the word “Adventist” alone defines the coming of Christ, but alone does not suggest the specificity of Christ’s coming within the total doctrines and tenets of the Seventh-day Adventist Church. Finally, in combination the words “seventh-day” and “Adventist” suggest the two concepts (Sabbatarism and Adventism) noted herein, but though suggesting these two concepts, none describe other requisite statements of belief which distinguish the Seventh-day Adventist Church, through the use of the suggestive name Seventh-Day Adventist, from other “Sabbatarians” and “Adventists.” The mark Seventh-Day Adventist and the acronym SDA are clearly suggestive (but at a minimum are eminently descriptive (not generic)). Persons who are members of the relevant public recognize the mark Seventh-Day Adventist and the legally equivalent acronym SDA as an indication of source or origin, namely, a name identifying the services and products of the Seventh-day Adventist Church, and the marks should be protected without proof of secondary meaning.
A “Descriptive” Mark
A descriptive trademark is one that “identifies a characteristic or quality of an article of service.” Such marks may not be registered as trademarks unless the holder shows that the mark has acquired “secondary meaning” (the mark has become distinctive of the trademark holder’s product or services). The court concluded that even if the mark “Seventh-Day Adventist) was descriptive, it was still entitled to protection since the mark had acquired a “secondary meaning” through “the continuous and uninterrupted use” of the mark “for over 139 years.” It further observed,
[The mark] is used in [the national church’s] denominational, corporate and trade name (Seventh-day Adventist Church) and in all of its Union Conference names, its local conferences, and virtually all of its Seventh-day Adventist Churches throughout the United States. [Its] mark has become distinctive as a result of the large number of people who have been ministered to and served through its churches and publications, its schools, colleges and universities, its hospitals and its national outreach under the mark [and] acronym SDA. Through members, workers, ministers and pastors and associated health and education programs, media centers, publishing houses and the publications thereof, the mark … and acronym SDA have become famous and synonymous with the good will and quality of the Seventh-day Adventist Church. Plaintiff has expended considerable effort and expense over the last 139 years in promoting its mark … and the products and services associated therewith, and consequently the mark is entitled to broad protection.
The court noted that consumer surveys are “recognized as the most direct and persuasive evidence of secondary meaning,” and that a survey conducted by the national church proved that its use of the mark “has resulted in the general public in the United States identifying the words ‘Seventh-Day Adventist’ with the [national church].”
The court noted that the federal trademark law specifies that registered marks may become “incontestable” after five years if the holder files an affidavit with the Patent and Trademark Office. Therefore, even if the national church’s mark was “generic” and therefore not entitled to legal protection, this defense was lost when the national church filed an affidavit after five years of using the mark.
Florida’s anti-dilution law
Florida, like many states, has an anti-dilution law that authorizes courts to ban use an organization’s use of a name “if it appears that there exists a likelihood of injury to business reputation or of dilution of the distinctive quality of the mark notwithstanding the absence of competition between the parties or of confusion as to the source of goods and services.” The court concluded that the new church’s use of the national church’s mark “has created both a likelihood of confusion and actual confusion and injury to [the national church’s] business reputation and dilution of the distinctive quality of [its] name.” As a result, the anti-dilution law provided a separate basis for prohibiting the new church from using the name Seventh-Day Adventist or the acronym SDA.
Freedom of Religion
The court rejected the new church’s claim that its use of the national church’s mark was permitted by the first amendment guaranty of religious freedom. It concluded, “It is well established that religious institutions are entitled to the protection of the trademark and unfair competition laws to the same extent as commercial enterprises and enforcement of the trademark statute does not abridge the religious freedom rights of a religious group that is infringing on a church’s trademark or service mark.”
Application. This case is important for the following two reasons:
1. It provides a useful summary of the application of federal trademark law to the names of national religious denominations. Such names may be protected under federal trademark law, but the nature of the protection depends on the type of mark (generic, descriptive, suggestive, or arbitrary). Generic marks cannot be protected; descriptive marks can be protected only if the user can establish secondary meaning; while suggestive and arbitrary marks can be protected without proof of secondary meaning. In this case, the court concluded that the national church’s mark could be either descriptive or suggestive. Either way it was protected, since there was ample proof of secondary meaning. Further, since the national church filed the appropriate affidavit with the Patent and Trademark Office after using the mark for five years, its mark became incontestable.
2. Many states have enacted anti-dilution laws, and these provide denominational agencies with an independent basis for protecting their names. General Conference Corporation of Seventh-Day Adventists v. Perez, 97 F.Supp.2d 1154 (S.D. Fla. 2000).
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