United States District Court, D. South Carolina, Charleston Division
The Right Reverend Charles G. vonRosenberg, et al., Plaintiffs,
The Right Reverend Mark J. Lawrence, et al., Defendants. The Episcopal Church, Plaintiff in Intervention
ORDER AND OPINION
Richard Mark Gergel United States District Court Judge.
matter is before the Court on Plaintiffs The Right Reverend
Charles G. vonRosenberg, et al.'s Motion for
Summary Judgment (Dkt. No. 584), Plaintiff-in-Intervention
The Episcopal Church's Motion for Summary Judgment (Dkt.
No. 595), Defendants The Right Reverend Mark J. Lawrence,
et al. 's Motion for Summary Judgment (Dkt. No.
603), and Defendants The Right Reverend Mark J. Lawrence,
et al.'s Motion for Summary Judgment as to
Genericness. (Dkt. No. 610.).
case arises out of a schism in 2012 in the Historic Diocese,
originally known as the "Protestant Episcopal Church in
the State of South Carolina, " in which certain members
and parishes sought to dissociate from The Episcopal Church,
a nationwide hierarchical church. The parties have litigated
property issues related to the schism in the state courts of
South Carolina, culminating in a 2017 decision in the South
Carolina Supreme Court. In this action, the Parties have
raised issues surrounding the use of certain trademarks in
contest between The Episcopal Church and its affiliates and
the disassociating diocese and its affiliates.
important at the outset to identify the major parties in this
dispute, a process complicated by the fact that the Defendant
disassociating diocese has attempted to identify itself
through the use of marks which the national church and its
affiliates assert infringe on and dilute their trademarks and
constitute false advertising. The principal parties are as
1) Plaintiff The Episcopal Church (hereafter "TEC")
is the national church and an Intervenor Plaintiff in this
2) The Protestant Episcopal Church in the State of South
Carolina (hereafter the "Historic Diocese"), which
was formed as early as 1785 and was long affiliated with TEC;
3) Plaintiff The Episcopal Church in South Carolina
(hereafter "TECSC"), which was headed initially by
Plaintiff Bishop Charles G. vonRosenberg and subsequently by
Plaintiff Provisional Bishop Gladstone B. Adams, III and is
affiliated with TEC;
4) Defendant The Diocese of South Carolina (hereafter the
"Disassociated Diocese"), headed by Defendant
Right Reverend Mark Lawrence and was formed following the
schism in 2012 to disassociate from TEC.
5) The Defendant parishes associated with the Disassociated
Diocese (hereafter "Disassociated Parishes").
of background, in 1784 former members of the Church of
England in multiple states, including in South Carolina,
formed a convention as part of an effort to form a church
that would continue the rites and ceremonies of the Church of
England but conform to the principles of the nascent American
Revolution and the constitutions of the many states. (Dkt.
595-3 at 14, 17 - 19, 24 - 26; 603 at 17.) By October 4,
1785, this new organization was called "The Protestant
Episcopal Church in the United States of America." (Dkt.
No. 595-3 at 24.) The convention was successful, and in
October 1789, TEC adopted its first constitution under the
name "The Protestant Episcopal Church in the United
States of America." (Dkt. Nos. 595-3 at 102; 603 at 17.)
Around the same time, and perhaps as early as May 1785, the
"Protestant Episcopal Church in the State of South
Carolina, " began a similar process of planning the
transition from the Church of England to a new organization.
(Dkt. Nos. 603 at 23; 608-1 at 1; 609-7 at 15.)
current dispute arises out of a schism in the Historic
Diocese that occurred in 2012. Two competing entities, TECSC
and the Disassociated Diocese, now claim to be the successor
to the Historic Diocese. TECSC was initially led after the
schism by a bishop, Plaintiff vonRosenberg following his
appointment by the leadership of TEC. The Disassociated
Diocese is led by Plaintiff Lawrence, who had formerly been
appointed the bishop of the Historic Diocese by TEC but was
removed from that position when he moved to disassociate from
TEC. The disputes in this litigation center on the use of
various marks by the Disassociated Diocese and its affiliates
which Plaintiffs assert are owned by TEC or its affiliate and
successor to the Historic Diocese, TECSC. On the other hand,
the Disassociated Diocese claims to be the successor of the
Historic Diocese and thus entitled to use certain marks owned
by the Historic Diocese.
2007, TEC registered five marks with the United States Patent
and Trademark Office:
• "The Protestant Episcopal Church in the United
• "The Episcopal Church";
• "The Episcopal Church Welcomes You";
• "La Iglesia Episcopal", and;
• The Episcopal Shield.
(Dkt. No. 595-5 - 595-12; 595-64 - 595-69.) All five marks
have since had declarations of incontestability filed.
(Id) The trademark registration for "The
Episcopal Church" includes a first use date of January
1, 1967. (Dkt. Nos. 595-8; 595-9.)
November 2010, two years before the schism, the Historic
Diocese, then led by Defendant Lawrence as bishop, registered
the following marks with the South Carolina Secretary of
• "Diocese of South Carolina";
• "The Episcopal Diocese of South Carolina";
• "The Protestant Episcopal Church in the Diocese
of South Carolina";
• "The Diocesan Seal".
(Dkt. No. 584-3.) In October 2012, the Disassociated Diocese
withdrew its association with TEC and its accession to the
Constitution of The Episcopal Church. (Dkt. Nos. 439 at
¶ 86; 603 at 17.) After the disassociation, Defendant
Lawrence began to lead an organization calling itself the
"Diocese of South Carolina." Fifty-five parishes
that are part of the Disassociated Diocese are named as
Defendants here. (Dkt. No. 621-2 at 17 - 20; 621-3 at 1
TECSC, under the leadership of Plaintiff Bishop Charles G.
vonRosenberg, continued as the local diocese associated with
TEC. (Dkt. Nos. 595-1 at 12; 603 at 25.) Because of a state
trial court injunction (later overturned by the South
Carolina Supreme Court), TECSC was prohibited from using the
marks of the Historic Diocese and adopted the name of
"The Episcopal Church in South Carolina." Later,
Plaintiff vonRosenberg was succeeded as bishop by Plaintiff
Gladstone Adams, who was appointed by the duly authorized
leadership of TEC.
January 4, 2013, the Disassociated Diocese and certain
associated churches and parishes sued TEC in the Dorchester
County Court of Common Pleas seeking a determination of real
and personal property rights. On March 5, 2013, Bishop
vonRosenberg filed this federal action, alleging trademark
infringement and false advertising by the Disassociated
Diocese. While this action was pending in federal court, a
state trial court issued an order on February 3, 2015 in
favor of the Disassociated Diocese on a broad range of
issues, including the service marks at issue. (Dkt. No. 86-3
- 83-6.) TEC appealed. On August 2, 2017, the South Carolina
Supreme Court held that TEC owned most of the property in
dispute and finding that twenty-eight of the Disassociated
Parishes held real and personal property in trust for TEC.
Protestant Episcopal Church in the Diocese o/S.C. v.
Episcopal Church, 421 S.C. 211, 265, 806 S.E.2d 82, 111
(2017), reh'g denied (Nov. 17, 2017), cert,
denied sub nom. Protestant Episcopal Church in the Diocese of
S.C. v. The Episcopal Church, 138 S.Ct. 2623 (2018).
the South Carolina Supreme Court's decision, this Court
allowed TEC and TECSC to intervene as plaintiffs in this
action. (Dkt. Nos. 87, 140.) On April 16, 2018, this Court
allowed the Plaintiffs to amend their pleadings to assert
false advertising and trademark infringement claims against
the Disassociated Diocese, fifty-five Disassociated Parishes,
and the Trustees of the Disassociated Diocese.
vonRosenberg v. Lawrence, No. CV 2:13-587-RMG, 2018
WL 1790827, at *3 (D.S.C. Apr. 16, 2018). The Court
prohibited Plaintiffs from amending their pleadings to
include trust claims, finding that those claims should remain
in state court. Id. at *4.
Parties have now made cross-motions for summary judgment as
to all claims. This Order rules on TECSC's Motion for
Summary Judgment (Dkt. No. 584), TEC's Motion for Summary
Judgment (Dkt. No. 595) and Defendants' Motion for
Summary Judgment (Dkt. No. 603) and Motion for Summary
Judgment as to Genericness. (Dkt. No. 610.) The issues have
been extensively briefed, and each Party filed responses and
replies. (Dkt. Nos. 618, 619, 621, 622, 625, 626, 641, 643,
647, 650, 649.)
prevail on a motion for summary judgment, the movant must
demonstrate that there is no genuine issue of any material
fact and that the movant is entitled to judgment as a matter
of law. Fed.R.Civ.P. 56(a). The party seeking summary
judgment has the burden of identifying the portions of the
"pleadings, depositions, answers to interrogatories, any
admissions on file, together with the affidavits, if any,
which show there is no genuine issue as to any material fact
and that the moving party is entitled to judgment as a matter
of law." Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986). The Court will construe all inferences and
ambiguities against the movant and in favor of the non-moving
party. U.S. v. Diebold, Inc., 369 U.S. 654, 655
(1962). The existence of a mere scintilla of evidence in
support of the non-moving party's position is
insufficient to withstand a motion for summary judgment.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252
(1986). However, an issue of material fact is genuine if the
evidence is such that a reasonable jury could return a
verdict in favor of the non-movant. Id. at 257.
the moving party has carried its burden under Rule 56(c), its
opponent must do more than simply show that there is some
metaphysical doubt as to the material facts."
Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 586 (1986). "In the language of the Rule,
the nonmoving party must come forward with 'specific
facts showing that there is a genuine issue for
trial.'" Id. at 587. "Where the record
taken as a whole could not lead a rational trier of fact to
find for the non-moving party, there is no 'genuine issue
for trial.'" Id. (quoting First
Nat'l Bank of Ariz. v. Cities Serv. Co., 391 U.S.
253, 289 (1968)).
Plaintiffs TEC and TECSC collectively bring five causes of
action: trademark infringement under the Lanham Act,
trademark dilution under the Lanham Act, false advertising
under the Lanham Act, trademark infringement under state law,
and cancellation of trademarks under state law. The Court
addresses each in turn. However, a significant amount of the
briefing has focused on the South Carolina Supreme
Court's ruling in Protestant Episcopal Church in the
Diocese of S.C. v. Episcopal Church, 421 S.C. 211, 806
S.E.2d 82 (2017), reh'g denied (Nov. 17, 2017),
cert, denied sub nom. Protestant Episcopal Church in the
Diocese of S.C. v. The Episcopal Church, 138 S.Ct. 2623
(2018) (hereinafter "Protestant Episcopal
Church"). The South Carolina Supreme Court decision
has produced vastly differing interpretations by the Parties,
with various implications for this Court's ruling. The
Court therefore begins by discussing the South Carolina
Supreme Court's decision.
The South Carolina Supreme Court's Decision in
Protestant Episcopal Church
South Carolina Supreme Court's majority opinion, the
result of three opinions by a majority consisting of former
Chief Justice, and then-Acting Justice, Pleicones, Chief
Justice Beatty, and Associate Justice Hearn, collectively
reversed the lower state court's decision on service
marks and deferred to this Court on all trademark-related
issues. The opinions by Pleicones and Hearn reversed the
trial court's holding that the state registered
trademarks prevailed over TEC's federally registered
trademarks and dissolved the injunction. Id. at 231,
248. Chief Justice Beatty, in the controlling opinion, held
that his decision "express[ed] no opinion concerning the
rights to the service marks, " and instead left the
decision of service marks to this Court. Id. at 251
n. 28 ("[T]his determination should remain with the
federal court."). The Beatty opinion drew no distinction
between the state and federal trademark claims, and instead
explicitly deferred all questions regarding rights to the
service marks to this Court, reversing the trial court's
attempt to rule on those issues. Id.
argue, rather inexplicably, that this Court should defer to
the findings of fact of the reversed state lower court
decision regarding service marks, a contention plainly
without merit. Under South Carolina law, the party asserting
issue preclusion (collateral estoppel) "must demonstrate
that the issue in the present lawsuit was (1) actually
litigated in the prior action; (2) directly determined in the
prior action; and (3) necessary to support the prior
judgment." Carolina Renewal Inc. v. S.C. Dept.
Tramp., 385 S.C. 550, 554 (S.C. Ct. App.
2009). The issue of the service marks, under
either federal or state law, was not "directly
determined in the prior action, " and the trial
court's holdings and findings on this issue were
reversed, pending determination by this Court, as held by
Justice Beatty. Protestant Episcopal Church, 421
S.C. at 251.
further argue that this Court should look past the South
Carolina Supreme Court's ruling on the issue of which
organization is the successor to the Historic Diocese. (Dkt.
No. 625 at 16.) Justices Pleicones and Hearn held that the
South Carolina Supreme Court must accept as "final and
binding" the rulings of TEC recognizing the
"Associated Diocese to be the true Lower Diocese of
South Carolina...." Protestant Episcopal
Church, 421 S.C. at 229, 231, 232, 234. Justice Beatty,
constituting the third member of the majority, stated that
"[i]n my view, the disassociated diocese can make no
claim to being the successor to the Protestant Episcopal
Church in the Diocese of South Carolina." Id.
at 251 n. 29. Justice Beatty's holding is clear: the
Disassociated Diocese is not the successor to the Historic
Diocese, instead the TECSC has succeeded and is the
"Protestant Episcopal Church in the Diocese of South
contend that the holding in the footnote where Chief Justice
Beatty plainly stated that the Disassociated Diocese was not
the successor of the Historic Diocese should be limited only
to ownership of a single disputed property, Camp St.
Christopher. (Dkt. No. 625 at 16-20.) A reading of the entire
footnote instead mandates the opposite conclusion. Justice
Beatty's decision focused, almost exclusively, on the
effect of accession to the Dennis Canon on each individual
parish, answering the fundamental question of the state case
regarding who owned the property occupied by the
Disassociated Parishes. The footnote in question, Footnote
29, by contrast, discussed the sole piece of non-parish
Diocesan property addressed in his opinion, Camp St.
Christopher. Further, as with the state registered trademarks
that he deferred to this Court, Justice Beatty ruled clearly:
"the disassociated diocese can make no claim to being
the successor to the Protestant Episcopal Church in the
Diocese of South Carolina." Protestant Episcopal
Church, 421 S.C. at 251 n.29. This holding was
vigorously litigated in the state courts, was determined by
the three-person majority of Pleicones, Hearn and Beatty and
was necessary to support the judgment regarding Camp St.
Christopher, and therefore is precluded from re- litigation.
Carolina Renewal, Inc. v. S.C. Dept. Tramp., 385
S.C. 550, 554 (S.C. Ct. App. 2009) (test for issue
preclusion). The Court will not disturb this
Defendants argue that the Court is collaterally estopped by
Protestant Episcopal Church regarding the proper
interpretation of First Amendment jurisprudence and is
mandated to apply a certain interpretation of the South
Carolina Supreme Court's prior decision in All Saints
Parish Waccamaw v. Protestant Episcopal Church in the Diocese
of South Carolina, 385 S.C. 428, 685 S.E.2d 163 (2009)
(hereinafter, "All Saints"). (Dkt. No. 625
at 15 - 16, 20 - 21.) The Court, however, will not assess
whether each Justice properly applied All Saints to
their own decision, and instead is bound by the actual ruling
articulated by the South Carolina Supreme Court majority
which, as explained above, conclusively reversed the trial
court on all holdings or findings related to trademarks,
leaving the issue to this Court, and held that the TECSC is
the successor to the Historic Diocese. This is the plain
reading of Chief Justice Beatty's opinion, the narrowest
ruling, which therefore controls. See Weil v. Weil,
299 S.C. 84, 90, 382 S.E.2d 471, 474 (Ct. App. 1989)
("[I]f the language employed is plain and unambiguous,
there is no room for construction or interpretation, and the
effect thereof must be declared in the light of the literal
meaning of the language used.") (citations omitted);
State v. Harrison, 402 S.C. 288, 298, 741 S.E.2d
727, 732 (2013) ("The controlling position is the one
'taken by those Members who concurred in the judgments on
the narrowest grounds."') citing Marks v. United
States, 430 U.S. 188 (1977).
it is clear that the South Carolina Supreme Court held that
the "neutral principles of law approach, "
articulated in All Saints, applies to the state law
issues: the justices merely disagreed on the correct outcome
based on the application of the All Saints
rule. The Court therefore is bound by the
Justices' actual holding on the ultimate issues, and will
not parse, as the Defendants suggest, whether each Justice
properly applied AH Saints.
ruled on the relevance of Protestant Episcopal
Church, the Court turns to the claims at issue here.
Continuation of the Historic Diocese
issue related to ownership of the marks is whether TECSC or
the Disassociated Diocese is the lawful successor of the
Historic Diocese for purposes of trademark ownership, as
length of use and prior use of marks is relevant to the
determination of trademark rights.
outset, as held above, it is settled by a majority of the
South Carolina Supreme Court that TECSC is the lawful
successor to the Historic Diocese. Protestant Episcopal
Church, 421 S.C. at 229, 231, 232, 234, 251 n.29. This
issue has already been litigated, directly determined and
necessary to support a judgment, and therefore Defendants are
collaterally estopped from relitigating this issue.
Therefore, for legal purposes of intellectual property,
Plaintiff TECSC is the successor to the historic Diocese.
this Court independently holds that TECSC is the lawful
successor of the Historic Diocese since this Court is
mandated to accept as binding the decision of the highest
ecclesiastical body in a hierarchical religious organization.
TEC is a hierarchical church. Plaintiffs have submitted
unrebutted evidence that TEC is a three-tiered, hierarchical
church composed of the "Church's General Convention
at the topmost tier, regional dioceses in the middle
tier" and congregations on the bottom
tier. (Dkt. No. 595-2 at ¶ 3.) This
matter is not for dispute, and every other court to assess
the issue, including the Fourth Circuit, has determined that
TEC is hierarchal. See Dixon v. Edwards, 290
F.3d 699, 716 (4th Cir. 2002) ("the Canons of the
Episcopal Church clearly establish that it is a
hierarchy."); Dixon v. Edwards, 172 F.Supp.2d
702, 715 (D. Md. 2001), aff'd and remanded, 290
F.3d 699 (4th Cir. 2002) ("Courts have repeatedly and
invariably recognized that the Church is hierarchical.
Indeed, there appears to be no case to the contrary and
Defendants have noted none.") (collecting cases);
Hiles v. Episcopal Diocese of Massachusetts, 51
Mass.App.Ct. 220, 227, 744 N.E.2d 1116, 1121 (2001),
rev'd in part on other grounds, 437 Mass. 505,
773 N.E.2d 929 (2002) ("It is undisputed that the
Episcopal Church is hierarchical in structure; 'there are
no judicial holdings to the contrary.'"); Par.
of St. Paul's Episcopal Church v. Episcopal Diocese of
Connecticut Donations & Bequests for Church Purposes,
Inc., No. 3:05CV1505 (JBA), 2006 WL 8448063, at *7 (D.
Conn. Aug. 21, 2006) ("the Episcopal Church has been
held to be a hierarchical religious denomination.").
since TEC is hierarchical, "[i]t is axiomatic that the
civil courts lack any authority to resolve disputes arising
under religious law and polity, and they must defer to the
highest ecclesiastical tribunal within a hierarchical church
applying its religious law." Dixon, 290 F.3d at
714 citing Serbian E. Orthodox Diocese for the United
States & Canada v. Milivojevich, 426 U.S. 696, 709,
96 S.Ct. 2372 (1976). See also Hosanna-Tabor Evangelical
Lutheran Church & Sch. v. E.E.O.C, 565 U.S. 171,
185, 132 S.Ct. 694, 704 (2012) ("Our decisions in that
area confirm that it is impermissible for the government to
contradict a church's determination of who can act as its
ministers."). The issue of the leader of the Historic
Diocese is therefore left to the determination of TEC.
See Dixon, 290 F.3d at 718 ("In the final
analysis, it was for the Episcopal Church to determine
whether Bishop Dixon was acting within the bounds of her role
as Bishop Pro Tempore of the Diocese of Washington.").
The Court thus defers to TEC's removal of Bishop Lawrence
in 2012 and installation of Bishop vonRosenberg as head of
the Historic Diocese. (Dkt. No. 6-16 at ¶¶ 12 -
15.) Anything less would ask this Court to become involved
with the question of who is the proper religious leader of a
diocese, something that would necessitate impermissible
entangling with a religious controversy. See Serbian E.
Orthodox Diocese, 426 U.S. at 709 ("To permit civil
courts to probe deeply enough into the allocation of power
within ahierarchical church so as to decide . . .
religious law (governing church polity) . . . would violate
the First Amendment in much the same manner as civil
determination of religious doctrine.").
this dispute, regarding church polity and administration of
TEC's administrative structure is precisely the type of
case in which the Court must defer to a religious
institutions' highest ecclesiastical tribunal, which here
removed Defendant Lawrence as the head of the Historic
Diocese. Therefore, it was for TEC to determine which Bishop
was leading the Historic Diocese and the Court is mandated to
defer to TEC's designation of Bishop vonRosenberg, and
later Provisional Bishop Adams, as the head of the Historic
Diocese, and thus the TECSC as the successor to the Historic
Defendants argue that the Court is bound to apply South
Carolina substantive law as the rule of decision on
"state substantive law" here. (Dkt. No. 625 at 15.)
The South Carolina Supreme Court, in All Saints Par.
Waccamaw v. Protestant Episcopal Church in Diocese of S.
C, 385 S.C. 428, 442, 685 S.E.2d 163, 171 (2009), held
that "South Carolina courts are to apply the neutral
principles of law approach...." However, even though
South Carolina courts are required to apply the neutral
principles of law to state claims, with the exception of the
state trademark cause of action brought by the TECSC, this
Court is asked to rule on claims arising under federal law,
namely, the Lanham Act. Therefore, as the Court is asked to
rule on federal law, it is axiomatic that the Court must
apply federal law. See Gorby v. Weiner, No. CIV.A.
TDC-13-3276, 2014 WL 4825962, at *4 (D. Md. Sept. 23, 2014)
("In regard to the federal causes of action-the Lanham
Act claims-this Court applies federal law as interpreted by
the Fourth Circuit."); Simone v. VSL Pharm.,
Inc., No. CV TDC-15-1356, 2017 WL 66323, at *2 (D. Md.
Jan. 5, 2017) ("On VSL's federal Lanham Act claims,
this Court applies federal law as interpreted by the United
States Court of Appeals for the Fourth Circuit.").
the Supreme Court in Jones v. Wolf, 443 U.S. 595, 99
S.Ct. 3020 (1979), recognized that "a State is
constitutionally entitled to adopt neutral principles of law
as a means of adjudicating a church property dispute."
Id. at 604 (emphasis added). Here, this Court is not
determining a state law property dispute, but instead is
asked to determine the lawful leader and successor of the
Historic Diocese, which is an issue of church polity and
administration intertwined with the appointment of a new
bishop. Therefore, as stated above, this
Court must defer to TEC's acceptance of Bishops
vonRosenberg and Adams, and thus TECSC, as the lawful
successor of the Historic Diocese.
TEC's Claims for Trademark Infringement
Plaintiffs TEC and TECSC claim ownership of different marks,
the Court assesses each separately. As previously mentioned,
TEC claims ownership of five marks. TEC alleges that, while
Defendants do not use any of these marks precisely,
Defendants are engaging in trademark infringement by using
substantially similar marks, such as "The Protestant
Episcopal Church in the Diocese of South Carolina, "
"The Episcopal Diocese of South Carolina, " and
various institutional names that incorporate "The
Episcopal Church" or a variation of the mark. (Dkt. Nos.
150 at ¶¶ 27-33; 595-1 at 18 - 19.) Defendants
argue that TEC cannot make out a claim for trademark
infringement and additionally assert that the mark "The
Episcopal Church" is generic. (Dkt. Nos. 610, 622, 626,
603, 649, 650.)
Fourth Circuit has explained, to establish trademark
infringement a plaintiff must prove:
(1) that it owns a valid mark; (2) that the defendant used
the mark 'in commerce' and without plaintiffs
authorization; (3) that the defendant used the mark (or an
imitation of it) 'in connection with the sale, offering
for sale, distribution, or advertising' of goods or
services; and (4) that the defendant's use of the mark is
likely to confuse customers.
Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144,
152 (4th Cir. 2012); see also 15 U.S.C. §
1114(1)(a). As explained below, since there are no disputes
of material facts regarding all four elements and Defendants
have not demonstrated that "The Episcopal Church"
is generic, the Court grants summary judgment to TEC on its
claim for trademark infringement.
Ownership of the Marks
is no dispute that TEC owns five trademarks:
• "The Protestant Episcopal Church in the United
• "The Episcopal Church";
• "The Episcopal Church Welcomes You";
• "La Iglesia Episcopal, " and;
• The Episcopal Shield.
federally registered with the United States Patent and
Trademark Office. (Dkt. No. 595-5 - 595-12; 595-64 - 595-69.)
Further, all five marks have since reached incontestable
status and have declarations of incontestability filed.
an affidavit is filed after a mark has been "in
continuous use for five consecutive years, " without an
adverse decision or pending proceedings, a mark achieves
incontestable status. 15 U.S.C. § 1065. There is no
dispute, and Defendants have presented no evidence to the
contrary that TEC has used its marks for over five
consecutive years, having registered the marks in 2007, there
are no adverse final decisions, no pending proceedings
regarding ownership of the marks, and TEC filed declarations
of incontestability as to all five marks. (Dkt. No. 595-5 -
595-12; 595-64 - 595-69.) Where a registered trademark
becomes incontestable, "the rebuttable presumption that
a registered mark has acquired secondary meaning becomes
'conclusive evidence of the registrant's exclusive
right to use the registered mark' subject to a number of
affirmative defenses enumerated in the Lanham Act."
Retail Servs., Inc. v. Freebies Publ'g, 364 F.3d
535, 548 (4th Cir. 2004) (citations omitted) abrogation
on other grounds recognized by Verisign, Inc. v.
XYZ.COMLLC, 891 F.3d 481, 488 (4th Cir. 2018)
(recognizing abrogation Retail Servs. on issue of
availability of attorneys' fees). TEC's marks have
therefore reached incontestable status.
instead, raise a variety of defenses they contend defeat the
incontestable status of the marks. Defendants argue that
"The Episcopal Church" name is generic and
therefore not subject to trademark protections, TEC cannot
demonstrate prior use, and that, regardless, TEC's marks
have not acquired secondary meaning. (Dkt. Nos. 603 at 22 -
27, 610, 626 at 13 - 35, 650 at 7 - 10.) However, for the
reasons set forth below, Defendants have created no dispute
of material fact on any of these arguments, and the Court
holds that TEC owns five valid and legally enforceable marks
registered with the USPTO.
Genericness of "The Episcopal Church "
argue that the registered mark "The Episcopal
Church" is a generic name, and therefore is not entitled
to any trademark protection. (Dkt. Nos. 610, 626 at 15 - 31.)
"Under the Lanham Act, the issuance of a certificate of
registration arms the registrant with 'prima facie
evidence of the validity of the registered mark and of the
registration of the mark, of the registrant's ownership
of the mark, and of the registrant's exclusive right to
use the registered mark.'" Retail Servs.,
Inc., 364 F.3d at 542 citing 15 U.S.C. §
1057(b). "Because the PTO may not register a generic
mark, the fact that a mark is registered is strong evidence
that the mark satisfies the statutory requirements for the
distinctiveness necessary for trademark protection."
Id. Five years of continuous use of a registered
mark renders a mark incontestable, and the registration
becomes "conclusive evidence of the validity of the
registered mark and of the registration of the mark, of the
registrant's ownership of the mark, and of the
registrant's exclusive right to use the registered mark
in commerce." 15 U.S.C. § 1065; 15 U.S.C. §
1115(b). However, even an incontestable mark is subject to
cancellation for certain enumerated reasons, such as if the
mark is functional, abandoned, was obtained fraudulently, or
if the registered mark "becomes the generic name for the
goods or services." 15 U.S.C. § 1064(3). This is
because, "a generic word can never function as a
trademark or receive a certificate of registration as one,
" and therefore, "[e]ven an incontestable
mark...comes within the reach of § 1064(3) and may be
canceled if it becomes generic." Retail Servs.,
Inc., 364 F.3d at 548.
as the party seeking to establish that "The Episcopal
Church" has become generic, must: "(1) identify the
class of product.. .to which use of the mark is relevant; (2)
identify the relevant purchasing public of the class of
product...; and (3) prove that the primary significance of
the mark to the relevant public is to identify the class of
product... to which the mark relates." Glover v.
Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996). The party
challenging that a registered mark is generic bears the
burden of producing "sufficient evidence to establish
that the mark is generic by a preponderance of
evidence." Retail Servs., Inc., 364 F.3d at
542. This burden-shifting is "one of production rather
than persuasion, " and therefore, if "sufficient
evidence of genericness is produced to rebut the presumption,
the presumption is 'neutralize[d]' and essentially
drops from the case, although the evidence giving rise to the
presumption remains." Id. at 543 (citations
omitted). Evidence of genericness may include:
"purchaser testimony, consumer surveys, listings and
dictionaries, trade journals, newspapers, and other
publications." Glover, 74 F.3d at 59.
make two overall arguments regarding the genericness of
"The Episcopal Church." First, that "The
Episcopal Church" was generic ab initio, or
from the beginning of the use of the term, and therefore
cannot be trademarked. Second, Defendants argue that, even if
"The Episcopal Church" was not generic from the
beginning, the mark "The Episcopal Church" is
generic today. However, under either theory, "The
Episcopal Church" is not generic.
without deciding, that an incontestable mark can be generic
ab initio, Defendants have failed to identify any
evidence creating a dispute of material fact that "The
Episcopal Church" is generic under the relevant standard
for assessing genericness, either at the time of TEC's
creation or now. It is well-settled that a religious
organization is entitled to the same protection of the
federal trademark laws under the same principles applied to
other businesses. See Purcell v. Summers, 145 F.2d
979, 985 (4th Cir. 1944). Here, the relevant class of the
product is religion,  and the question then is whether
"The Episcopal Church" identifies a specific
religion's service to the consuming public or whether it
"signifies the source of goods" or
"distinguishes the particular product from other
products on the market." George & Co. LLC v.
Imagination Entm't Ltd., 575 F.3d 383, 394 (4th Cir.
2009). While the Fourth Circuit has yet to opine on drawing
this line for religious services, multiple courts of appeal
addressing the same question have held that a mark for a
religious organization is generic where it names a religion
but is descriptive where it properly differentiates a
specific denominational organization offering religious
services. See TE-TA-MA Truth Found. __Family of URI, Inc.
v. World Church of Creator, 297 F.3d 662, 666 (7th Cir.
2002) ("A mark is 'generic' when it has become
the name of a product (e.g., 'sandwich' for meat
between slices of bread) or class of products (thus
'church' is generic)" but finding mark not
generic where "[i]t does not name the class of
monotheistic religions [, as] [i]n the contemporary United
States, variations on 'Church of [Deity]' are used to
differentiate individual denominations, not to denote the
class of all religions."); Jews For Jesus v.
Brodsky, 993 F.Supp. 282, 297 (D.NJ.),
aff'd, 159 F.3d 1351 (3d Cir. 1998)
("although the Plaintiff Organization sometimes refers
to its members as 'Jews' who are 'for Jesus,
' during the past twenty-four years the Plaintiff
Organization has consistently used the phrase 'Jews for
Jesus' to refer to the organization itself");
Gen. Conference Corp. of Seventh-Day Adventists v.
McGill, 617 F.3d 402, 413 (6th Cir. 2010) ("It
would be inappropriate to conclude as a matter of law... that
the public considers 'Seventh-day Adventist' to refer
generically to a religion."); Cmty. of Christ
Copyright Corp. v. Devon Park Restoration Branch of Jesus
Christ's Church, 634 F.3d 1005, 1011 (8th Cir. 2011)
(finding mark not generic where defendant could not
demonstrate that "registered marks have become generic
because they identify religion, not COC as an
cited cases are not to the contrary. The Supreme Court of New
Jersey, in Christian Sci. Bd. of Directors of First
Church of Christ, Scientist v. Evans, 105 N.J. 297, 520
A.2d 1347 (1987), found the name "Christian Science
Church" generic as it was "the common name of a
religion" founded by Mary Baker Eddy and held that a
plaintiff has "no right to a monopoly of the name of a
religion." Id. at 306, 313. Defendants also
point to Universal Church, Inc. v. Universal Life
Church/ULC Monastery, No. 14 CIV. 5213 (NRB), 2017 WL
3669625, at *10 (S.D.N.Y.Aug. 8, 2017;, aff'd sub
nom. Universal Church, Inc. v. Toellner, 752 F.App'x
67 (2d Cir. 2018), which found "Universal Church"
to be generic. Defendants focus on Universal
Church's statement that "universal church"
was generic as it referred a "type of church rather than
[the] plaintiff, " and the court further noted that
"[t]he fact that 'Universal' does not name a
religion is not dispositive." Id. at 9, 9 n.23.
However, the undisputed facts in Universal Church
focused on the same question as every other similar case: the
court found evidence that "universal" referred to
"the entire Christian Church or all Christians
collectively." Id. at *7. The Second Circuit
reiterated this important evidence on appeal, finding that a
universal church was "[designating the whole Christian
Church or all Christians collectively." Universal
Church, Inc. v. Toellner, 752 F.App'x 67, 69 (2d
Cir. 2018). The court in Universal Church even
acknowledged that "The Episcopal Church" is a mark
"far more distinctive than 'Universal
Church.'" Id. at 10, 10 n.25. To say the
least, as the court found evidence that the name
"Universal Church" referred to the entirety of
Christianity, the generic name at issue in Universal
Church denoted an entire religion.
contrast, Defendants here have introduced no evidence
indicating that "The Episcopal Church" refers to a
whole religion rather than a specific recognized
denominational organization. To begin with, the undisputed
record evidence presented by Defendants' experts
indicates that the terms "episcopal" or
"episcopal church" were used as descriptive terms,
rather than the generic name of a religion, to
“describe churches who either were current or
former parishes in the Church of England" (Dkt No. 609-6
at 4) (emphasis added), and was used by "North American
Anglicans" who were "dissevered from their mother
church in the aftermath of the American Revolution...."
(Dkt. No. 609-7 at 2.) While the use of "episcopal"
in the name of certain parishes and churches predated the
creation of the TEC, the undisputed evidence nonetheless
demonstrates that the "adjectives 'Episcopal'
and 'Episcopalian' were in use in South Carolina as
descriptive terms" after churches "lost
their relationship as local parishes to the Church of
England...." (Dkt. No. 609-6 at 5 - 6) (emphasis
also focus on the individual words making up the term
"The Episcopal Church" rather than the mark as an
entirety. Defendants reiterate that the word episcopal,
coming from the Greek episkopos, denotes an
organization with a "spiritual governance, " almost
always by a council of bishops. (Dkt. No. 609-8 at 3.)
Defendants sole focus on "episcopal, " however, is
misguided, and instead "courts should not parse terms to
determine that they are made up of generic components."
Hunt Masters, Inc. v. Landry's Seafood Rest.,
Inc., 240 F.3d 251, 254 (4th Cir. 2001). The Court is
permitted to review the meaning of individual words, yet it
is still mandated to look at the "mark as a whole"
to determine whether it is generic. Id. The meaning
of "The Episcopal Church, " as a whole does not
refer to churches run by bishops in general, and instead, as
demonstrated by Defendants' experts and Defendants'
briefing, is a descriptive term for a United States-based
organization of churches that are aligned with the Anglican
communion. (Dkt. No. 626 at 22, 24.) The term
is therefore descriptive, and not generic.
further point to the survey conducted by their expert Hal
Poret. However, in addition to the Court ruling the survey
inadmissible (Dkt. No. 665), even if it was admitted the
survey is unhelpful in demonstrating genericness. The survey
juxtaposes a "trademark name, " defined as used by
"one organization, or by branches of that organization,
" and a "category name" which "is a name
that identifies a category that can include various
organizations that are not affiliated with each other"
and "can be used by more than one organization
to identify what type of organization they
are." (Dkt. No. 609-1) (emphasis added). In addition to
these questions leading to incredibly close results, with
43.7% stating that "The Episcopal Church" is a
trademark and 55.3% stating it to be a "category, "
the survey fails to ask the relevant question for
genericness. (Id. at 18.) The survey does not
identify whether the "The Episcopal Church" is
perceived as a religion, as would be relevant to determining
whether TEC's mark, as a denominational organization, is
as an independent reason for finding the survey flawed and
irrelevant, Poret's survey permits a respondent to
identify the mark as a "category" if the mark
refers to a "type of organization, " which
the survey states "can" be, but is not necessarily,
used by organizations that are not affiliated with each
other. (Dkt. No. 609-1 at 8.) Disturbingly, the
"can" in that sentence would permit the opposite to
be true as well: a respondent could choose
"category" if the mark refers to a "type of
organization" that is affiliated with another
organization. This question thus permits a respondent to
respond "category" even if they perceived "The
Episcopal Church" to be a descriptive term for the type
of church that is part of the Anglican communion and
affiliated with TEC. Poret's survey therefore is
trademark protection for a generic term would make it
"difficult for competitors to market their own brands of
the same product. Imagine being forbidden to describe a
Chevrolet as a 'car' or an 'automobile'
because Ford or Chrysler or Volvo had trademarked these
generic words.'" Retail Servs., Inc., 364
F.3d at 538. For this reason, courts have also looked at
whether an organizational religious name identifies a
religion so to "leave so few alternatives so as to
monopolize the concept and debilitate potential
competitors." Jews For Jesus v. Brodsky, 993
F.Supp. 282, 297 (D.N.J.), aff'd, 159 F.3d 1351
(3d Cir. 1998). See also TE-TA-MA Truth Found.-Family of
URI, Inc., 297 F.3d at 666 ('"Church of the
Creator' as a denominational name leaves ample options
for other sects to distinguish themselves and achieve
separate identities. It is not remotely like one firm
appropriating the word 'sandwich' and thus disabling
its rivals from explaining to consumers what's to
eat."). In this regard, while Defendants point to
multiple other denominational organizations which use the
word "episcopal" in their name, e.g. the Reformed
Episcopal Church; African Methodist Episcopal Church,
Christian Methodist Episcopal Church, these names highlight
the fact that trademark protection for "The Episcopal
Church" does not prevent other denominations from
defining themselves and achieving separate identities. (Dkt.
No. 610-1 at 20.) These names therefore demonstrate the
propriety of finding that "The Episcopal Church" is
not generic. See Jews For Jesus, 993 F.Supp. at 297
(finding "Jews for Jesus" not generic where
"there are several other names that could be used to
refer to individuals of Jewish heritage who believe in Jesus,
for example, 'Messianic Jews, ' 'Hebrew
Christians, ' 'Jews for Christ, ' or 'Jews
importance of the distinction set out in this order, between
a religion and an organizational name for a denomination,
cannot be overstated. The United States is a remarkable
country home to many denominational organizations with which
a person can affiliate and exercise their religion. Yet, as
the Fourth Circuit held decades ago:
[W]hile such organizations exist for.. .worship.. .and for
the purpose of benefiting mankind and not for purposes of
profit, they are nevertheless dependent upon the
contributions of their members for means to carry on their
work, and anything which tends to divert membership or gifts
of members from them injures them with respect to their
financial condition in the same way that a business
corporation is injured by diversion of trade or custom.
Purcell, 145 F.2d at 985. Defendants' argument,
seeking to declare generic "The Episcopal Church"
as a "type" of church, would jeopardize the
trademark rights, and thus the commercial existence, not only
of the Plaintiffs here, but of many denominational religious
organizations, even where they have operated for decades or
centuries as a specific organization offering specific
services among the class of religions. Indeed, it is
unclear whether any organization name chosen by the
Defendants could maintain a trademark under their own
proposed genericness test which seeks to parse individual
words in a denomination's name and ask whether the
denominational organization is a "type" of church.
There is therefore no dispute of material fact that "The
Episcopal Church" is not generic.
Priority of Rights
next argue that TEC cannot demonstrate prior use as to the
claimed marks, and therefore may not enforce its trademark
rights against the Defendants. (Dkt. 626 at 32; 603 at 22.)
In general, "the party claiming ownership of a mark must
be the first to use the mark in the sale of goods."
George & Co. LLC, 575 F.3d at 400. While prior
use is not a ground to cancel a registered trademark that has
reached incontestable status under the Lanham Act,
 Defendants are correct that the
Lanham Act permits a defense from a claim for trademark
infringement on even an incontestable mark where the
defendant was the prior user.
15 U.S.C. § 1065, an incontestable mark does not act as
a bar to "a valid right acquired under the law of any
State or Territory by use of a mark or trade name
continuing from a date prior to the date of
registration under this chapter of such registered
mark...." Id. (emphasis added). Relatedly, 15
U.S.C. § 1115 provides a defense to an alleged infringer
where the mark "was adopted without knowledge of the
registrant's prior use and has been continuously
used by such party or those in privity with him from a date
prior to" either the date of constructive use, the
registration (depending on the date of filing), or
publication of the registered mark. 15 U.S.C. § 1115(5).
The Fourth Circuit has recognized such as defense to
trademark infringement, even where a mark is incontestable.
See Armand's Subway, Inc. v. Doctor's Assocs.,
Inc., 604 F.2d 849, 850 (4th Cir. 1979)
("Registration does not become incontestable with
respect to a party whose prior use within a particular area
dates from a time prior to publication of registrant's
mark pursuant to the Lanham Act.").
while Defendants are correct on the law, they have not
presented any record evidence indicating prior use, either
nationwide or in South Carolina. As explained above, TECSC is
the continuation of the Historic Diocese in determining
trademark ownership. Therefore, while the Disassociated
Diocese argues that its use dates back to 1785, (See
Dkt. Nos. 603 at 23, 609-7 at 15; 626 at 33), this prior use
is not the Defendants' to claim. Therefore, while
Defendants claim that the undisputed evidence indicates that
TEC did not exist until, at the earliest, October 1789, after
the first use of the phrase "Protestant Episcopal
Church" in South Carolina in 1785, the Disassociated
Diocese cannot demonstrate prior use as it was not the
organization using those marks in 1785. The marks belong to
the successor of the Historic Diocese, TECSC, and therefore
the Disassociated Diocese cannot rely on that alleged prior
use as a defense under 15 U.S.C. § 1115 as it was
neither the prior user nor in privity with the prior user.
even if the Disassociated Diocese could demonstrate prior use
as the successor of the Historic Diocese (which it cannot),
its arguments would still be foreclosed under the merger
doctrine. As held by the Fourth Circuit, "[w]here a
name, not merely generic or descriptive is adopted by an
order, there is no reason why seceding members should be
allowed to use it. Such use by seceding members, over whom
the order has no further control, has obviously every element
of unfairness that would arise from use by strangers."
Grand Lodge Improved, B.P.O.E. of the World, v. Eureka
Lodge No. 5, Indep. Elks, 114 F.2d 46, 48 (4th Cir.
1940). See also Nat 7 Bd. of Young Women's
Christian Ass 'n of U.S. A. v. Young Women's
Christian Ass 'n of Charleston, S. C, 335 F.Supp.
615, 621 (D.S.C. 1971) ("In this connection, areligious,
benevolent or fraternal organization is entitled to protect
the use of its name against those who secede.")- As
explained by the Fourth Circuit, this rule applies even where
the schismatic group used the mark prior to joining a
plaintiffs organization. See Grand Lodge Improved,
114 F.2d at 48 ("plaintiff order was organized a number
of years before it was incorporated, and unquestionably
granted a charter to [Defendant] Eureka Lodge in the year
1899 under which that lodge operated until the relationship
was severed in 1939. Any separate existence which Eureka
Lodge may have had prior to 1899 was merged with that of
plaintiff on acceptance of the charter") (emphasis
undisputed that the Historic Diocese joined TEC upon its
founding in 1789. (595-3 at 14, 17 - 19, 24 - 26; 603 at 17.)
Furthermore, Defendant's record historical evidence, from
their expert Dr. Jeremy Bonner, confirms that the Historic
Diocese continuously acceded to the Constitution and Canons
of TEC since at least 1841. (Dkt. No. 609-7 at 23, "The
Diocese of South Carolina was a founding Diocese of PECUSA,
" Id., "[t]here was no explicit
acknowledgement of diocesan accession to the PECUSA
Constitution and Canons until 1841"; 609-7 at 24,
"[a]t South Carolina's Diocesan Convention of 1790,
'the General Constitution and Canons [of PECUS] being
read, were unanimously agreed to....'")
(emphasis in original). Dr. Bonner disagrees about the nature
of the associations, and particularly the ability to
disassociate, but there is no dispute that the Historic
Diocese acceded to TEC's Constitutions and Canons.
Therefore, even had the Disassociated Diocese demonstrated
that it was the continuation of the Historic Diocese for
purposes of trademark rights (which, as ...