IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 96-D-2004
Urantia Foundation, Plaintiff.
v.
Eric Schaveland and Kristen Maaherra, Defendants.
Defendant Eric Schaveland's Response Brief to Plaintiff's Motion Against Defendant Schaveland for Partial Judgment on the Pleadings
Defendant Eric Schaveland asks the Court to deny Plaintiff's Motion Against Defendant Schaveland for Partial Judgment on the Pleadings and submits the following brief as a response.
Introduction
The main cause of action in this case is "commercial" trademark infringement of two registered trademarks -- but what underlies the series of legal actions initiated by Plaintiff Foundation is a religious dispute.
The word "Urantia" is a word revealed by the superhuman authors of the Urantia Papers in the text of the Urantia Papers (aka the Urantia Book). In the early 1970's, Urantia Foundation registered a trademark on this word "Urantia."
The three concentric circles symbol is an ancient religious symbol used in many cultures, and described in the Urantia Papers as the "Banner of Michael" (Christ Jesus) and the "material emblem of the Trinity government of all creation." This sacred symbol has been used by Urantians since at least the early 1940's to show affiliation to Jesus. This symbol was also registered by Plaintiff Foundation as a trademark in the early 1970's.
I am a believer in the Scripture called "Urantia." The Plaintiff, until 1994, was the sole publisher of those papers, using the name, "The Urantia Book." These Urantia Papers are in the public domain and are published by other organizations and in several foreign countries. The reading community identifies those publications and secondary works solely by the name "Urantia."
In 1995 I established an Internet web site for people interested in information contained in the Urantia Papers and used two common things to identify the web site: urantia.com and the three concentric circles identified in the Urantia Papers as the Banner of Michael (Jesus).
Plaintiff is seeking a permanent injunction to prevent my use of the word "Urantia" as part of any address on the Internet and to enjoin me from using the "Banner of Michael" symbol on the Internet. Without my use of the word "Urantia" and the symbol, people won't be able to find or identify my site as having anything to do with my religion. Plaintiff is attempting to control a religion and Urantians' religious activities through misuse of trademark law.
Response
Plaintiff's Motion on the Pleadings is presented to "dismiss Schaveland's affirmative defenses 2, 3 and 4 and his counterclaim for fraud with prejudice." Plaintiff's motion should be denied because the facts dispute Plaintiff's assertion.
I. Plaintiff's Motion at "A" claims my allegations are "legally insufficient," and "there are no facts which Schaveland can prove to save his defenses from judgment as a matter of law."
I can prove the following facts:
A. "Urantia" is the name of a religion.
"Plaintiffs simply cannot appropriate, from the public domain, the common name of a religion and somehow gain an exclusive right to its use and the right to prevent others from using it. This principle is fundamental to the law of trademarks, the body of law under which plaintiffs seek relief." Christian Science Bd. of Directors v. Evans 520 A.2d 1347 (N.J. 1987). Page 1352.
B. "Urantia" is a generic adjective when used to describe the "Urantia Book."
In re Northland Aluminum Products, Inc. 777 F.2d 1556, at 1559 227 U.S.P.Q. 961 (Fed. Cir. 1985) (Whether a term is a generic name is a question of fact. Evidence of public understanding of the term may be obtained from "any competent source, such as consumer surveys, dictionaries, newspapers and other publications.")
C. The three concentric circles symbol is a generic religious symbol which stands for the "Banner of Michael" and does not mean Plaintiff.
The dominant principal for determining whether a term is generic is the primary significance test. This test had its origins in the Supreme Court case of Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L. Ed. 73 (1938)... The Supreme Court held... It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer. A.J.Canfield Co. v. Honickman 806 F.2d 291 (3rd Cir 1986).
D. Plaintiff believes -- along with Defendant -- that the circles symbol is the "Banner of Michael" and the "Emblem of the Trinity government of all creation."
"If there is an express representation that the work is factual, the case law indicates that the author will be estopped from claiming fictionalization, even if most readers would not believe the representation." Nimmer on Copyright, ^U2.11[C], p. 2-172.23; Houts v. Universal City Studies, Inc., 603 F. Supp. 26 (C.D. Cal. 1984); Arica Institute Inc. v. Palmer, 970 F.2d 1067 (2d Cir. 1992); Oliver v. St. Germain Foundation, 41 F. Supp. 296 (S.D. Cal. 1941).
II. Plaintiff's Motion at "B" claims that: "Schaveland's allegations that the Foundation's `URANTIA' and concentric circles marks have religious meaning and value to him do not provide a defense to an otherwise valid claim of trademark infringement."
Urantia and the circles have religious significance to thousands of believers besides myself.
Plaintiff asserts that the Court should turn a "blind eye" to religious issues in this case and, in effect, ignore the fact of genericness just because the property in question is religious in nature. Plaintiff's position is not supported by case law.
Plaintiff misapplies National Bd. Of the YWCA v. YWCA of Charleston, 335 F Supp. 615, 624-25 (D.S.C. 1971) and Purcell v. Summers, 145 F.2d 979,987 (4th Cir. 1944) to the current case. Both of these cases dealt with the names of religious organizations, not the names of religions as such. I don't contest the right of Plaintiff to trademark protection of its name "Urantia Foundation," rather do I contest the right of Plaintiff to a monopoly on the generic name of a religion.
The religious nature of the "Banner of Michael" is simply a fact for this Court to consider as such a fact applies to the neutral principal of trademark law. The fact that thousands of people [Footnote 1: See Exhibit 8, page 633, with Affidavit, Harper's Encyclopedia of Mystical & Paranormal Experience, by Rosemary Guiley (1991), page 633: "Since its publication, The Urantia Book has attracted tens of thousands of followers . . ." (Emphasis added).] use this mark as a religious symbol to indicate allegiance to Michael (Jesus) and not to indicate Plaintiff, should not preclude this Court from considering the generic ramifications of such use just because the use is religious.
III. Plaintiff's Motion at "C" claims that: "Schaveland's affirmative defense and counterclaim allegation of genericism fail as a matter of law."
Plaintiff would have the Court disallow any evidence on the basis that such evidence would be insufficient to overcome a presumption. Plaintiff argues "insufficiency of evidence" in a Motion for Judgment on the Pleadings, before Discovery has even taken place. This now forces me to put forth my evidence [See Affidavit with Exhibits].
Defendant agrees that Plaintiff's certificates of registration are prima facie evidence. Defendant accepts that the burden of proof initially rests with him to overcome this prima facie presumption. However, the evidence herein is more than enough to prove genericness on the word "Urantia" and the "Banner of Michael" (the three concentric circles).
McCarthy on Trademarks and Unfair Competition Vol.2 ^U12:12 Para. 2 (4th Ed. 1996) "The Seventh Circuit has held that while an incontestable federal registration is prima facie evidence that the term is not generic, this presumption 'bursts' once the challenger presents sufficient evidence of genericness. When a defendant does so, plaintiff-registrant cannot rely on the registration as sufficient evidence to preclude summary judgment of dismissal." 'The presumption really serves only to shift the burden of production to the defendant.' Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934 231 U.S.P.Q. 579 (7th Cir. 1986) (summary judgment finding 'Liquid Controls' generic was affirmed).
Defendant agrees with Plaintiff that the "primary significance test" mandated by Congress is the standard of review for this Court to follow as regards generic issues. As Defendant shows below, Plaintiff's marks are generic under the Lanham Act for three reasons: (A) As the name of a religion, "Urantia" is generic; (B) As the name of a published product,"Urantia" is generic; and (C) As the "Banner of Michael," the concentric circles symbol is generic.
A. Urantia is generic under the Lanham Act as the name of a religion.
Plaintiff has four trademark registrations on the concentric circles symbol and the word "Urantia" for "Religious Educational services" and "Indicating membership in a social and fraternal organization." It is Defendant's assertion that these registrations are but a thinly disguised attempt by Plaintiff to monopolize the Urantia religion and control believers in the Urantia religion by pretending the religious groups associated with the Urantia revelation are merely educational, social and fraternal -- like some kind of Phi Beta Kappa college fraternity or Mickey Mouse Club. The facts, however, show that Urantians have a bona fide religion with religious objectives and activities.
Many different groups of religionists who believe the Urantia Papers to be an authentic revelation have formed a religion around this revelation. Urantia churches (such as one in Hawaii) have sprung up here and there. Charismatic leaders such as Vern Grimsley ("Family of God Foundation") and "Gabriel of Sedona" (mentioned on page 68 of Time Magazine, December 16, 1996) have led different Urantia religious groups with their own interpretation of the Urantia Papers. There have been Urantian schools (Boulder School for Students of the Urantia Book; The Brotherhood School in Chicago, etc.) For many years, the largest group of believers was the Urantia Brotherhood, formed in the 1950's. There were many different Societies in different States, each using the name Urantia. Around 1989, Plaintiff Foundation dis-enfranchised the Urantia Brotherhood. Another group of about 1000 Urantians is the Fifth Epochal Fellowship. Popular author Martin Gardner, in his book, "Urantia, the Great Cult Mystery," explores some of the many factions of the Urantia religion that have so far sprung up -- all based on different interpretations of the Urantia Papers. This tendency to disagree and splinter into differing groups is not unique to the Urantia religion. The Courts have explored these issues extensively, and the case law on these issues is well established. As the New Jersey Supreme Court stated:
"Many separate groups that now share some common element in their names were once single denominations." Christian Science Bd. of Directors v. Evans 520 A.2d 1347 (N.J. 1987), page 1355.
Used as the name of a religion, anyone practicing that religion has a right to use the name "Urantia." As the Court noted in McDaniel v. Mirza Ahmad Sahrab, 27 N.Y.S.2d 525 (Sup.CT.), aff'd, 262 A.D. 838, 29 N.Y.S.2d 509 (1941):
The plaintiffs have no right to a monopoly of the name of a religion. The defendants, who purport to be members of the same religion, have an equal right to use the name of the religion in connection with their own meetings, lectures, classes and other activities. No facts are alleged in the complaint to indicate that the defendants have been guilty of any act intended or calculated to deceive the public into believing that their meetings, lectures, or book shop are identified with or affiliated with the meetings, lectures, etc., and book shop of the plaintiffs. Defendants have the absolute right to practice Baha'ism, to conduct meetings, collect funds and sell literature in connection therewith, and to conduct a book shop under the title "Bahai Book Shop."
The modern equivalent of the small religious book shop is the Internet web page ("Home Page.") The hostmaster of a web page can have books, literature, pictures, sound, movies, classes, chat rooms -- even interactive games -- all available for the Internet user who visits the web site. My purpose in using the domain name "urantia.com" is so that the relevant public browsing the Internet can find the Urantia Papers and related Urantia religious materials quickly and easily.
Plaintiff Foundation also has a web page on the Internet. The "domain name" that they chose to use is "urantia.org." Plaintiff Foundation objects to the word "Urantia" used by Defendant in any context as an address on the Internet. When I changed my domain name to "urantia-papers.org" in an attempt to settle this case, Plaintiff insisted that I abandon use of that domain name as well. Plaintiff simply demands a monopoly on the word "Urantia." However, the issue of who has the right to use the name of a religion has been extensively explored by the Courts:
(Plaintiffs simply cannot appropriate, from the public domain, the common name of a religion and somehow gain an exclusive right to its use and the right to prevent others from using it. This principle is fundamental to the law of trademarks, the body of law under which plaintiffs seek relief.) Christian Science Bd. Of Directors v. Evans 520 A.2d 1347 (N.J. 1987), page 1352.
Even the dissenting opinion in Christian Science (supra at 1363) supports Defendant's position. Referring to McDaniel, Judge Garibaldi states:
"In essence, plaintiffs attempted to secure an exclusive right to use the name of their religion, and the court correctly ruled that they could not do so."
Also in Christian Science (supra at 1351) the Court pointed out that:
"An understanding of this case requires recognition of two significant, related facts: first, the religion and the organization are conceptually separate; and second, the religion pre- existed the organization."
This situation is exactly what we have in this current case. From Judge Urbom's findings of Factual Background in Urantia Foundation v. Maaherra , 895 F. Supp. 1347 (D. Ariz. 1995) at 1349, para.2, we see that Plaintiff was created in 1950 to print the Urantia Papers, whereas the Papers were being studied in written form in the 1930's. The hundreds of people who met to study the Papers, pray, worship God, and raise the money to print the Urantia Book -- before the existence of Plaintiff -- initiated the Urantia religion through their group activities. [Footnote 2: Encyclopedia of Occultism & Parapsychology by Leslie Shepard (1978) p.955 has entry in U's under "Urantia": "A nineteenth century psychically inspired gospel expressed in The Urantia Book (1955). . ." (See Attached Affidavit, Exhibit 9, p. 955).]
Plaintiff has been sensitive to this "name of a religion" issue for many years. In two hearings in Urantia Foundation v. Maaherra, Plaintiff's attorney stated that the Urantia Book was "not a religious book" (3/7/91 hearing) and that Urantia Foundation was not a religious organization "in any way, shape, or form." (3/15/91 hearing). However, Plaintiff applied for tax exempt status with the IRS as being "organized exclusively for religious and charitable purposes." Judge Urbom did find Plaintiff to be a "religious organization," and The Urantia Book to be a "religious book." Urantia Foundation v. Maaherra 895 F. Supp. 1347, at No.2 (D. Ariz. 1995): (Religious organization's possession of manuscript for religious book did not give rise to presumption that copyright to book had been transferred to organization). Urantia Foundation v. Maaherra 895 F. Supp. 1339, at No.5 (D. Ariz. 1995): (Religious organization's book and alleged infringer's computerized version of book with concordance were "related goods," not "competitive goods" for purposes of organization's trademark infringement claim.) In fact, Judge Urbom calls Plaintiff Foundation a "religious organization" in Nos. 2, 3, 4, 5, 8, 9, 10, 11, 12, 14, and 15.
For many years Plaintiff has been listed as a "Religious Organization" in the following publications: The Encyclopedia of American Religions, Volume 2, Page 119, 1978 by J. Gordon Melton; Religion in America, A Directory, Page 166, by James V. Geisendorfer (1983); A Concise Dictionary of Cults & Religions, Page 244, by William Watson, ( 1991 by The Moody Bible Institute of Chicago); Religious Bodies in the United States: A Directory, Pages 238-9, by J. Gordon Melton (1992); Encyclopedia of American Religions, Page 766, Fourth Edition, by J. Gordon Melton (1993). [See Attached Affidavit, with Exhibits 1-5].
Since Plaintiff is well known as a religious organization, the obvious question is "What is the name of the religion that Urantia Foundation is supposed to be fostering?" The answer is, the "Urantia" religion.
B. "Urantia" is generic when used as the name of a published product (i.e. book).
Plaintiff's misreading of trademark law would have this Court believe that only a noun can qualify for generic status. This is simply not so.
(Fact that word was adjective did not prevent it from being generic or common descriptive word, for trademark purposes.) Miller Brewing Co. v. G. Heileman Brewing Co. 561 F.2d 75 (1977) page 76, para. 6 ("Light" is common descriptive word when used with beer, as well as in other similar contexts . . .) supra. para. 8.
Plaintiff points out that two of its trademark registrations (No. 915,734 and No. 1,112,713) are for "books" and then asks the question: "Have you read any good Urantias lately?" Plaintiff's question is superficial and misleading to the generic issue. The question should read: "Have you read any good Urantia Books lately?" The answer to this question is "Yes, I have read several different versions of the Urantia Book, from sources other than the Plaintiff." The word "Urantia" as applies to Urantia books is a generic adjective.
As applied to Miller supra., Plaintiff's question would be: "Have you tasted any good Lights lately?" The question the Court asked -- and answered -- in Miller was in effect: "Have you tasted any good light beer lately?" The answer being: "Yes, light beer is generic, but it still tastes good."
1. No Organization Can Appropriate Names Which Belong to the Public.
As the Court pointed out in Weiss Noodle Co. V. Golden Cracknel and Speciality Co. 290 F.D. 845, at 848 para.2 (1961):
". . .merchants act at their peril (emphasis added) in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use. Even though they succeed in the creation of de facto secondary meaning, due to lack of competition or other happenstance, the law respecting registration will not give it any effect."
See also: Schulmerich Electronics v. J.C. Deagan, Inc. 202 F.2d. 772, 777 (C.C.P.A. 1953). (One properly may not procure the exclusive rights appertaining to a registered trademark when the mark consists of nothing more than the name of the object to which applied); J. Kohnstam, Ltd. v. Louis Marx and Co. 280 F. 2d. 437,440 (C.C.P.A. 1960) (Exclusive use "cannot take the common descriptive name of an article out of the public domain and give the temporarily exclusive user of it exclusive rights to it, no matter how much money or effort it pours into promoting the sale of the merchandise.); A.J.Canfield Co. V. Honickman 806 F.2d 291, at 304 (3rd Cir 1986) (Courts refuse to protect a generic term because competitors need it more to describe their goods than the claimed markholder needs it to distinguish its goods from others.)
Though declared invalid in 1995, Plaintiff's copyright certificate had given Plaintiff Foundation a monopoly on the Urantia Book for almost 40 years. When the Urantia Book was declared to belong to the public by the Court, the generic name "Urantia"was needed by other producers of the Urantia Book to refer to their products as well. While the word "Urantia" has always been generic, the point was moot while Plaintiff was the single source of the Urantia Book.
Kellogg Co. V. National Biscuit Co. 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73 (1938) (Evidence that, because of long period during which plaintiff or its predecessor was the only manufacturer of "Shredded Wheat," many people came to associate the product and the name by which it was generally known with plaintiff's factory at Niagra Falls was insufficient to show that plaintiff had the exclusive right to the name "Shredded Wheat".)
2. The Word "Urantia" is Generic under the "Primary Significance Test."
When determining the fact of genericness, the Honorable Judge Urbom, in (Urantia Foundation v. Maaherra, 895 F. Supp. 1338 (D.Ariz. 1995) page 1343, Para.4), primarily relied on the Plaintiff's alleged fact that the word "Urantia" was not found by Plaintiff in any known dictionary. Judge Urbom stated:
"It strains my imagination to think of a product name 'that over time the public adopted, or, rather, expropriated, . . . as a synonym for any [product of that genus],' Murphy Bed, 874 F.2d at 101, but which does not appear in any known dictionary."
Unknown to Defendant Maaherra, the generic definition of the word "Urantia" did appear in three Encyclopedias:
(a). The Encyclopedia of the American Religious Experience Vol. 2 (1988):
"Another modern Scripture, the Urantia Book, was received anonymously and first published in 1955; it is distributed by Urantia Foundation of Chicago and is studied by a number of informal groups. Urantia offers extensive new information on the spiritual organization of the universe, the religious history of earth, and the life of Jesus." (See Attached Affidavit Exhibit 7, page 717, para. 2).
(b). The Encyclopedia of Occultism & Parapsychology (1978) in U's under "Urantia:"
"A nineteenth century psychically inspired gospel expressed in The Urantia Book (1955)." (See Attached Affidavit Exhibit 9, p. 955).
(c). Harper's Encyclopedia of Mystical & Paranormal Experience (1991):
"Urantia Book, the -- A collection of 196 papers of reputed celestial origin. . ." "according to the Urantia Foundation, which publishes the book and aids the Urantia mission, the technique by which the papers were communicated is unknown to any living person." p. 630 para.6 (See Attached Affidavit Exhibit 8, pages 630-633).
For an actual Dictionary reference, my research has uncovered The HarperCollins Dictionary of Religion. [See Attached Affidavit]. First published in late 1995 [Footnote 3: [Note: Plaintiff's Motion and Defendant's Response on this trademark issue in Urantia Foundation v. Maaherra occurred in late 1994 and early 1995. The HarperCollins Dictionary of Religion was first published in November of 1995. This is a new factual situation never before litigated.] and compiled by a team from the prestigious AAR (American Academy of Religion), this dictionary contains the following entry under "Urantia:"
"Urantia Book (yoo'ran-shi-yah), the 1955 collection of the American, Spiritualist- influenced teachings of Bill Sadler, redefining Jesus' role in human salvation and cosmic history. See also North America, new religions in."
The word Urantia obviously has been in generic use as an adjective describing a particular collection of teachings at least since 1955. As a "new religion" in "North America" anyone practicing that religion has a right to use the name "Urantia."
The significance in this regard of finding the word "Urantia" in dictionaries and encyclopedias to describe a genus of "Urantia products" -- the Urantia Book, Urantia Papers, and Urantia religion -- simply cannot be overstated. Under the "primary significance" test the fact that the word "Urantia" must be used by all of the authors of dictionaries and encyclopedias to refer to the genus of Urantia products -- and that no other term conveys the same meaning -- is a strong indicator of genericness. Stated otherwise, the evidence of genericness in religious dictionaries and encyclopedias is wholly adequate for this Court to determine what the meaning of the word "Urantia" is to the "relevant public" -- in this case, the reading public interested in religious works.
In re Northland Aluminum Products, Inc. 777 F2d. 1556, at 1559 227 U.S.P.Q. 961 (Fed. Cir. 1985) (Whether a term is a generic name is a question of fact. Evidence of public understanding of the term may be obtained from "any competent source, such as consumer surveys, dictionaries, newspapers and other publications."); S. S. Kresge Co. V. United Factory Outlet, Inc., 598 F.2d 694, 202 U.S.P.Q. 545 (1st Cir. 1979), appeal after remand, 634 F.2d 1, 208 U.S.P.Q. 313 (1st Cir. 1980) (Dictionary definition relied upon);Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 217 U.S.P.Q. 677 (7th Cir. 1983) (dictionary is "an especially appropriate source of evidence"); Murphy Door Bed Co. V. Interior Sleep Systems Inc. , 874 F.2d 95, 10 U.S.P.Q.2d 1748 (2d Cir. 1989) (dictionary listings are "influential" because they reflect the general public's perception of a mark's meaning and implication.)
Under Judge Urbom's "Dictionary Test," the product name "Urantia" refers to a genus of products of which the Urantia Book published by Plaintiff is one species and the electronic format of the Urantia Papers distributed by defendant on the Internet is another.
The "species list" of products known to the Defendant at this time is quite extensive. Besides the many electronic versions available from many different sources on the Internet, there are: (1) three separate Pathways' printings of the Urantia Papers, (2) the Fifth Epochal Fellowship printing of the Urantia Book in four different styles, (3) the Braille Institute's multi-volume Braille printing of the Urantia Book, (4) an audio version available from Merritt Horn, (5) a CD-disk version in Acrobat Reader, and (6) a Folio views electronic index version of the Urantia Book. None of the above products originate from Plaintiff Foundation.
See Also: Self-Realization Fellowship Church v. Ananda 59 F.3rd 902 (9th Cir. 1995), 903 (Term is "generic" name, not trade name, if it merely identifies the genus of which particular business is species.); Roux Laboratories, Inc. v. Clairol Incorporated 427 F. 2d 823 (1970) (Mere advertising or other evidence of supposed secondary meaning cannot convert something unregistrable by reason of it being the common descriptive name or generic name for the goods into a registrable mark.); Bristol-Myers Squibb Co. V. McNeil- P.P.C., Inc. 973 f.2d 1033 (2nd Cir. 1992) ("Descriptive mark" is one that forthwith conveys immediate idea of ingredients, qualities, or characteristics of the goods. Lanham Trade-Mark Act, 43(a), as amended, 15 U.S.C.A. 1125 (a).); Liquid Controls, Corp. V. Liquid Control Corp. 802 F.2d 934 (7th Cir. 1986) (A generic or common descriptive term can never function as a trademark.) Supra. (A "generic term" is one that is commonly used as the name of a kind of good; unlike a trademark, which identifies source of a product, a generic term merely specifies the genus of which the particular product is species.); General Conf. Corp. V. Seventh-day Adventist Ch. 887 F.2d 228 (9th Cir 1989) (Generic trademark -- one that tells buyer what product is, rather than from where, or whom, it came -- cannot be subject to trademark protection inasmuch as it does not indicate product or services origin, but is term for product or service itself.)
3. The Word "Urantia" is Generic to the "Relevant Public."
In Urantia Foundation v. Maaherra 895 F. Supp. 1339, at No.4 (D. Ariz. 1995), Judge Urbom found: (Evidence that religious organization's "URANTIA" name and symbol of three blue concentric circles may have been considered generic by segment of public that had previously purchased the organization's book . . .) However, Judge Urbom did not consider Urantians to be the "relevant public." In March, 1996, the law became very clear. See Stocker v. General Conference Corp. of Seventh-day Adventists, 39 USPQ2d 1385 (TTAB 1996), a detailed opinion which addresses the appropriate standard for determining the genericness of a religious mark. In determining whether the term "Seventh-day Adventists" was generic, the TTAB determined that the "relevant public" was not the general public, but only Adventist Christians.
The Arizona Court already noted (twice) that Plaintiff Foundation's marks "may be considered generic by a segment of the public that previously purchased the Urantia Book . . ." (F.Supp. at 1343.)
C. As the "Banner of Michael," the circles symbol is generic.
Trademarks function to alert the consumer as to where a product comes from.
"The trademark laws exist not to 'protect trademarks, but . . . to protect the consuming public from confusion, concomitantly protecting the trademark owner's right to a non-confused public.'" Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225 (1978) at 1228.
Plaintiff claims that my having the three concentric circles on an Internet web page will confuse the public. On my web page, I had the three concentric circles clearly labeled with the text "Banner of Michael" and "Emblem of the Paradise Trinity." When I told Plaintiff Trustee Phil Rolnick that the symbol on my web page was the "Banner of Michael" and certainly not any Urantia Foundation trademark, he responded by telling me that Urantia Foundation owned the "Banner of Michael" on this world and that they were holding it in trust for Him. He indicated to me that only his Foundation had the right to determine who could use this sacred religious symbol on this world.
From a strictly commercial application of trademark law, Plaintiff is actually attempting to steal the goodwill that Michael and the Trinity have built up for thousands of years through the use of this mark. As a generic religious symbol, the "Banner of Michael" represents a product (the Kingdom of Heaven) as well as the source of that product (Michael). By claiming that the "Banner of Michael" trademark represents Urantia Foundation as the source of the goods and services that religionists associate with the mark (instead of Michael), Plaintiff is saying to the relevant public in effect "we are the source of the goods and services of Michael." Urantia Foundation is taking the goodwill associated with Michael and claiming this divine product as theirs alone.
While the idea of arguing who owns the "Banner of Michael" in a civil Court may seem a little far-fetched, nevertheless, it is Plaintiff's preposterous claim of ownership of this religious symbol as a trademark indicating source of products that is at issue here. Plaintiff is claiming that the "Banner of Michael" is their religious property. I refuse to participate in this projected insult to my beloved Michael. I would ask this Court to declare the "Banner of Michael" a generic religious symbol thereby allowing everyone -- including Plaintiff -- the right to associate themselves with our Creator-Father, Michael of Nebadon, as well as with the Trinity government of all creation.
IV. Plaintiff's Motion at "D" claims: "The concentric circles are not the insignia of a foreign government within the meaning of the Lanham Act."
To support this claim, Plaintiff quotes Black's Law Dictionary. However, "People. . . existing in the form of an organized jural society" does not preclude those people living somewhere other than on the Earth or require that those people be homo sapiens.
Plaintiff's cite of Vuitton Et Fils S.A. v. J. Young Ent., Inc., 644 F.2d 769, 775 (9th Cir. 1981) is distinguishable from the current case because: (1) in Vuitton, the symbol in question (the French fleur-de-lis) was no longer in use as a national flag; and (2) unlike Vuitton, in the current case all parties agree the "Banner of Michael" is currently in use as the emblem of the Trinity government.
"Nevertheless, equity and good morals will not permit one who asserts something as a fact which he insists his readers believe as the real foundation for its appeal to those who may buy and read his work, to change that position for profit in a law suit." Oliver v. St. Germain Foundation, 41 F. Supp. 296 (S.D. Cal. 1941) See also: Houts v. Universal City Studies, Inc., 603 F. Supp. 26 (C.D. Cal. 1984); Arica Institute Inc. v. Palmer, 970 F.2d 1067 (2d Cir. 1992); Nimmer on Copyright, ^U2.11[C], p. 2-172.23.
Plaintiff has claimed authorship of the Urantia Book as a non-fiction work [Footnote 4: Urantia Foundation v. Maaherra, 895 F. Supp. 1337 (D.Ariz. 1995): (Book published, promoted and disseminated as divine revelation -- emphasis added -- was "literary work" under copyright act).] for over forty years. The Urantia Book clearly describes the circles symbol in question as the official symbol of a government on page 606:
". . .in the presence of the forgathered hosts of loyal personalities, he (Gabriel) displayed the banner of Michael, the material emblem of the Trinity government of all creation, the three azure blue concentric circles on a white background."
Plaintiff is estopped from claiming that the Banner of Michael is not a governmental flag for expediency in this litigation.
V. Plaintiff's Motion at "E" claims: "The Court should dismiss Schaveland's Counterclaim with prejudice."
Plaintiff's assertion that Defendant cannot prove fraud before Discovery begins is probably true. Whether I can prove fraud after Discovery remains to be seen. I believe Plaintiff's admission to me that what they had in fact trademarked was the "Banner of Michael" certainly points to fraud. For Plaintiff to state that they are "holding the "Banner of Michael" in trust for Him" would indicate that this is not a simple trademark registration. I ask this Court to let Discovery proceed on this fraud issue in order to dispel any doubts about the matter.
Conclusion
I believe the evidence already available in this Reply Brief shows Plaintiff's marks to be generic under the Lanham Act. However, I have also already accumulated hundreds of examples of religious use of the word Urantia and the Banner of Michael by Urantians. None of these uses refer to Plaintiff. This list includes: A nationally distributed song titled "Urantia;" a 1-800- URANTIA phone number in use for over seven years; Internet addresses with Urantia as part of the address; Urantia jewelry with the Banner of Michael (the three blue concentric circles); photos of ancient pottery with the three blue concentric circles; manuscripts of the Jain religion with the three blue concentric circles; reproductions of paintings of twelfth-century Saint Hildegard Von Bingen's visions of the three blue concentric circles representing the Trinity; use by painters and artists of the circles as religious symbols; Military dog tags with "Urantian" for religion; the circles flanking the Cross and the Star of David on the CD cover of a well-known singer; the Banner of Michael flying over Jerusalem on Jesus' 2000 Birthday; my own wedding ring; photos of stained glass circles in the homes of Urantians; photos of the Banner of Michael used at religious ceremonies (such as Worship services, Weddings, and Memorial Services); photos of license plates and bumper stickers with "Urantia" and the circles; the title of Martin Gardner's book, Urantia, the Great Cult Mystery.
Hundreds of believing Urantians are looking forward to giving personal testimony of the generic religious meaning of the word Urantia and the generic religious meaning of the circles when this case goes to trial.
As to the fraud issue, I request the Court to let Discovery proceed.
Therefore Plaintiff's Motion should be denied.
RESPECTFULLY SUBMITTED this 11th day of March, 1997. Eric Schaveland
152 California Gulch
Jamestown, CO, 80455
Telephone: 303-459-0848
Message: 303-459-0315