Key point 6-05. 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 appeals court ruled that the registered trademark "Church of the Creator" was a descriptive rather than a "generic" mark that was entitled to legal protection against infringing uses by other organizations using the same or a similar name.
A church obtained a trademark registration for its name ("Church of the Creator") in 1989. The trademark is for use on "religious instructional and teaching materials namely, newsletters, books, journals, pamphlets, and brochures; photographs, calendars, posters, writing paper and envelopes, note cards; printed adhesive decals." The church has made extensive use of its trademark in connection with seminars, ministerial services; religious consulting services; ministerial ordination, educational information, and various publications. The church operates a website (churchofthecreator.org).
In 1999 a white supremacist organization (the "defendant") began using the name World Church of the Creator. This organization's members adhere to the religion of "Creativity," a religion that espouses that the "White Race" is "the Creator" of all worthwhile culture and civilization. Defendant uses the name "World Church of the Creator" to communicate its messages through flyers, pamphlets, brochures, newsletters, television talk-show appearances and news interviews, and the Internet. Its messages are frequently white-supremacist, racist, and anti-Semitic.
The church filed a lawsuit alleging that the defendant's use of the name World Church of the Creator was causing public confusion, infringed upon its registered trademark, and was causing "dilution" of its registered trademark. Further, the church asserted that the defendant's message was incompatible with and antithetical to its own teachings. The defendant claimed that the term "Church of the Creator" is generic and not a protectable trademark, and that its use of the name World Church of the Creator was protected by the first amendment guaranty of religious freedom.
The court began its opinion by defining a trademark as "any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others."
The purpose of trademark law is to "aid consumers in identifying the source of goods by allowing producers the exclusive right to particular identifying words or symbols which they may attach to their products as a designator of source."
Trademarks are generally classified in increasing levels of distinctiveness: generic; descriptive; suggestive; arbitrary; and fanciful. The last three categories of marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection.
In contrast, generic marks are not registrable as trademarks, and a term that is "merely descriptive" may be protectable as a trademark if it has acquired secondary meaning. A merely descriptive term is one that specifically describes a characteristic or an ingredient of a product.
The defendant insisted that the term "Church of the Creator" is generic and therefore is not protectable as a trademark. The church responded by noting that the mark became "incontestable" after five years of continuous use. A federal district court concluded that the mark was generic, and that it did not become incontestable after five years of use. The church appealed to a federal appeals court which reversed the district court's ruling and found that the church's trademark was descriptive rather than generic and was entitled to protection.
The appeals court conceded that "generic" marks are incapable of trademark protection even if the Patent and Trademark Office registers such a mark. It defined a generic mark as one that "has become the name of a product" such as "sandwich for meat between slices of bread." While the word "church" is generic, the court concluded that the term "Church of the Creator" was descriptive rather than generic:
Church of the Creator is descriptive, like "lite beer." It does not name the class of monotheistic religions. In the contemporary United States, variations on "Church of [Deity]" are used to differentiate individual denominations, not to denote the class of all religions. The list is considerable: Church of God; Church of God (Anderson, Indiana); First Church of God; Worldwide Church of God; Church of God in Christ; Assembly of God; Korean Assembly of God; Church of the Nazarene; Church of Christ; United Church of Christ; Disciples of Christ; Church of Christ, Scientist; Church of Jesus Christ of Latter Day Saints. There is room for extension with Church of Our Savior, Church of the Holy Spirit, Church of the Holy Trinity, Church of Jehovah, and so on. Yet all of these are recognizable as denominational names, not as the designation of the religion to which the denominations belong. No Jewish, Islamic, Baha'i, or Unitarian group would say that it belongs to a "Church of the Creator"; and a Christian congregation would classify itself first into its denomination (e.g., Baptist, Lutheran, Russian Orthodox, Society of Friends), then into one of the major groupings (Roman Catholic, Orthodox, and Protestant), and finally into Christianity, but never into a "Church of the Creator." No one called or emailed a Baptist church to complain about its complicity in the hate-mongering of the World Church of the Creator; people recognized the name as denominational, and that's why protests ended up in the Church of the Creator's in box. What is more, as these lists show, using "Church of the Creator" as a denominational name leaves ample options for other sects to distinguish themselves and achieve separate identities …. Because there are so many ways to describe religious denominations, there is no risk that exclusive use of "Church of the Creator" will appropriate a theology or exclude essential means of differentiating one set of beliefs from another.
The court rejected the defendant's argument that recognizing the trademark status of Church of the Creator violates the first amendment because it restricts the free exercise of religion. It noted that the Constitution itself authorizes Congress to create rights of this kind.
What this means for churches
This case is important because it recognizes that the names of local churches and religious denominations are entitled to trademark protection even if they include generic terms (such as "church" or "God"). Such names can be descriptive rather than generic, and descriptive names are entitled to protection so long as they have acquired a "secondary meaning." This means that through long and uninterrupted use a descriptive name has come to be associated by the public with a particular organization, as is common with the names of religious denominations. Te-Ta-Ma Truth Foundation v. The World Church of the Creator, 297 F.3d 662 (7th Cir. 2002).