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Right Reverend vonRosenberg v. Right Reverend Lawrenc

United States District Court, D. South Carolina, Charleston Division

September 19, 2019

The Right Reverend Charles G. vonRosenberg, et al., Plaintiffs,
v.
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.

         This 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.).[1]

         I. Background

         This 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.

         It is 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 follows:

1) Plaintiff The Episcopal Church (hereafter "TEC") is the national church and an Intervenor Plaintiff in this action;
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"[2]), 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").

         By way 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.)

         This 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.

         In 2007, TEC registered five marks with the United States Patent and Trademark Office:

• "The Protestant Episcopal Church in the United States";
• "The Episcopal Church";
• "The Episcopal Church Welcomes You";
• "La Iglesia Episcopal", and;
• The Episcopal Shield.[3]

(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.)

         In 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 State:

• "Diocese of South Carolina";
• "The Episcopal Diocese of South Carolina";
• "The Protestant Episcopal Church in the Diocese of South Carolina";
• "The Diocesan Seal".[4]

(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."[5] Fifty-five parishes that are part of the Disassociated Diocese are named as Defendants here.[6] (Dkt. No. 621-2 at 17 - 20; 621-3 at 1 - 11.)

         Concurrently, 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.

         On 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).

         After 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.

         All 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.)

         II. Legal Standard

         To 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.

         "When 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)).

         III. Discussion

         The 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.

         A. The South Carolina Supreme Court's Decision in Protestant Episcopal Church

         The 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.

         Defendants 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).[7] 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.

         Defendants 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 Carolina." Id.

         Defendants 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 ruling.[8]

         Finally, 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).

         Regardless, 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.[9] 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.

         Having ruled on the relevance of Protestant Episcopal Church, the Court turns to the claims at issue here.

         B. Continuation of the Historic Diocese

         A core 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.

         At the 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.

         Furthermore, 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.[10] (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.[11] 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.").

         Therefore, 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 a[]hierarchical[] 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.").

         In sum, 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 Diocese.

         Finally, 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.").

         Indeed, 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.[12] 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.

         C. TEC's Claims for Trademark Infringement

         As 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.)

         As the 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.

         1. Ownership of the Marks

         There is no dispute that TEC owns five trademarks:

• "The Protestant Episcopal Church in the United States";
• "The Episcopal Church";
• "The Episcopal Church Welcomes You";
• "La Iglesia Episcopal, " and;
• The Episcopal Shield.

         Each is 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. (Id.)

         Where 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.

         Defendants, 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.

         a. Genericness of "The Episcopal Church "

         Defendants 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.[13]

         Defendants, 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.

         Defendants 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.

         Assuming, 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, [14] 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 institution.").

         Defendants' 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.

         By 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 added).[15]

         Defendants 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.[16] (Dkt. No. 626 at 22, 24.) The term is therefore descriptive, and not generic.

         Defendants 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 generic.[17]

         Furthermore, 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 irrelevant

         Additionally, 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 for Christianity.'").[18]

         The 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.[19] 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.

         b. Priority of Rights

         Defendants 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, [20] 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.

         Under 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.").

         However, 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.

         Furthermore, 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 added).

         It is 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 ...


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