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