IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 96-D-2004
URANTIA FOUNDATION, Plaintiff,
vs.
ERIC SCHAVELAND and KRISTEN MAAHERRA, Defendants.DEFENDANT MAAHERRA'S BRIEF IN OPPOSITION TO PLAINTIFF'S MOTION AGAINST DEFENDANT SCHAVELAND FOR PARTIAL JUDGMENT ON THE PLEADINGS
I. INTRODUCTION.
The Urantia Foundation ("the Foundation") has moved for partial judgment on the pleadings against Defendant Eric Schaveland ("Schaveland"). The motion is functionally equivalent to a motion to dismiss for failure to state a claim upon which relief can be granted. (Foundation Brief at 5.) The motion must be denied if Schaveland merely identifies a set of facts which, if proven, would sustain his defenses and counterclaim. Schaveland is not required to establish a prima facie case at this point, or even to show that there are genuine issues of material facts. For the reasons set forth below, his defenses and counterclaim are legally sufficient, and the Foundation's motion must be denied.
II. SCHAVELAND HAS PLED A SUFFICIENT CAUSE OF ACTION TO SUSTAIN A CLAIM THAT THE WORD "URANTIA" AND THE CONCENTRIC CIRCLES SYMBOL ARE A GENERIC RELIGIOUS WORD AND SYMBOL THAT CANNOT BE VALID TRADEMARKS.
Schaveland has asserted as an affirmative defense to the Foundation's trademark claims that the plaintiff's purported marks are generic. Consistent with the decision of the Ninth Circuit in General Conference Corp. of Seventh-Day Adventists v. Seventh-Day Adventist Congregational Church, 887 F.2d 228 (9th Cir. 1989), cert. denied, 493 U.S. 1079 (1990), this Court should hold that Schaveland, at minimum, has presented a legally sustainable claim on this issue. See also Stocker v. General Conference Corp. of Seventh-day Adventists, 39 USPQ2d 1385 (TTAB 1996) and cases cited therein.
A.Schaveland's Allegations Sustain the Genericness Defense
A trademark functions to identify and distinguish the goods and services of one seller from those of another. Seventh-Day Adventists, 887 F.2d at 231. A generic term is the antithesis of a trademark -- that is, it "tells the buyer what the product is, rather than from where, or whom, it came." Id. Thus, a generic term cannot be accorded trademark protection. Id. See also 1 J. McCarthy, Trademarks and Unfair Competition Section 12:1 (3d ed. 1996) ("[t]he concepts of 'generic name' and 'trademark' are mutually exclusive . . . [A generic term] can never function as a mark to identify and distinguish the products of only one seller.").
In reversing the lower court's decision to grant judgment on the pleadings in favor of the plaintiff, the Ninth Circuit held in Seventh-Day Adventist that the defendant had stated a valid affirmative defense of genericness to a trademark infringement claim when he alleged that
The phrase "Seventh-day Adventist" is not theirs alone, as they would like to claim, for it describes a system or set of Bible based christian beliefs, doctines [sic], and standards.
One, therefore, is not necessarily a Seventh-day Adventist because of what organization he may be affiliated with, but rather, he is a Seventh-day Adventist because of what he believes. Seventh-day Adventism is a particular faith, and those that conscientiously hold to that faith are Seventh-day Adventists.
Seventh-Day Adventists, 887 F.2d at 231. The court stated that even assuming that the defendant had used the alleged mark, the claim for infringement would be defeated if the defendant could prove the genericness of mark at issue. Thus, "[b]ecause this defense was raised in the answer, it bars a judgment on the pleadings." Id.
Schaveland's allegations of genericness are sufficient for the Court to deny the Foundation's motion. He alleges that the word "Urantia" does not identify a single Urantia group but, rather, a set of beliefs based on The Urantia Book. Similarly, Schaveland's allegations show that he has used the word "Urantia" and the concentric circles symbol to indicate the subject matter of his Internet home page -- namely, The Urantia Book and his religion, which is based on the book. Schaveland has sufficiently alleged, and has the right to prove at trial, that the word "Urantia" refers to a religion founded upon the teachings of The Urantia Book. The Foundation's motion must be denied.
As Schaveland can show at trial, the word "Urantia" and the concentric circles symbol were not created by the Foundation; they stem directly from the divine teachings of The Urantia Book and serve to identify this religious revelation. The symbol of the Urantia religion comprises the concentric circles, which are described in the book as the emblem of Jesus of Nazareth. The symbol is as powerfully compelling a religious symbol to Urantians as the cross is for Christians and the Star of David is for Jews.
Moreover, since the Urantia Book is no longer subject to copyright protection, the name and symbol of the book may be used by anyone when referring to the book, or any source of information about the book.
If Schaveland's allegations are proven, the Foundation's mark is generic for religious-related goods and services. He also has identified ample facts which, if proven, establish that his use of "Urantia" and the concentric circles symbol identified the content of his Internet site and the religion based on them. His claim that the Foundation's marks are generic cannot be dismissed.
B.The Foundation is Seeking Application of an Improper Genericness Test
The Foundation asserts that the test for genericness requires this Court to determine what the term or symbol at issue means to the general public. This is the same erroneous standard applied by the Arizona court in the prior case that is contrary to the statutory language and case law precedents. See Urantia Foundation v. Maaherra, 895 F. Supp. 1347 (D.Ariz. 1995). The proper test for genericness is to determine the primary significance of the term to the relevant public. 15 U.S.C. Section 1064(3). The "relevant public" does not mean everyone. It could comprise a small group of knowledgeable customers for a specialized product or service. See 2 McCarthy, Section 12:5 at 12-10, 11.
In the instant case, the relevant public is the pool of potential purchasers of Urantia books -- namely, adherents to the Urantia teachings. See Stocker v. General Conference Corp. of Seventh- day Adventists, supra, 39 USPQ2d at 1394 (relevant public is Adventist Christians). To the members of this group, the word "Urantia" and the concentric circles symbol claimed as marks by the Foundation signify their religion; they do not signify the Foundation or any other organization. The fact that the term and symbol may seem unusual or fanciful to those unfamiliar with the religion is immaterial. 2 McCarthy, Section 12:5 at 12-10, 11.
The Foundation's analogy to situations where a term is known in the trade, but not to the ultimate customers, is not valid. (Foundation Brief at 10-11). Adherents to The Urantia Book are the "ultimate consumers" of the teachings. It is these people who buy The Urantia Book, practice what the book teaches, and evangelize its teachings. These people cannot be analogized to, for example, the professional tire dealers in the Big O Tire Dealers case. See Plaintiff's Brief at 10-11 (citing Big O Tire Dealers v. Goodyear Tire and Rubber Co., 561 F.2d 1365 (10th Cir. 1977), cert. denied 434 U.S. 1052 (1978)).
The cases cited by the Foundation, in which the names of religious organizations were protected, e.g., National Board of the WMCA v. WMCA of Charleston, 335 F. Supp. 615 (D.S.C. 1971); and Purcell v. Summers, 145 F.2d 979 (4th Cir. 1944), deal with the names of religious organizations or particular churches within a religion. They do not deal with the name of a religion itself.
In Purcell v. Summers, 145 F.2d 979 (4th Cir. 1944), the court held that an organization has no right to use the exact name which had been used by another organization and appropriate the former organization's good will. The case did not involve rights in the name of a religion. As the court noted,
[Defendants] are using the precise name of the old church; and the question is, not whether they have the right to use `Methodist' or `Episcopal' in a new name so constructed as to avoid confusion, but whether they have the right to use the old name in a way that amounts, as we think it does, to imply misrepresentation to the damage of plaintiffs.
145 F.2d at 988 (emphasis added). Had the plaintiff sought to establish exclusive rights to use the terms "Methodist" or "Episcopal," the court undoubtedly would have reached a different result. Such a claim is directly analogous to the claim the Foundation is making here. [Footnote 1: Thus, while the Foundation possibly could prevent others from masquerading as the "Urantia Foundation," it cannot prohibit all uses of "Urantia" by others. Indeed others must use that word in order to effectively discuss and use The Urantia Book, which is in the public domain, as well as to prepare supplemental works and study aids. See, Christian Science Bd. of Directors v. Evans, 530 A.2d 1347 (N.J. 1987) (use of "Christian Science" permitted). There is no claim that Schaveland used the name "Urantia Foundation."]
In a more recent opinion addressing a claim of exclusive rights in the name of a religion, the court held that
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.
Christian Science Board of Directors v. Evans, 520 A.2d 1347 (N.J. 1987). This Court should adopt a similar position and should deny the Foundation's motion.
III. THE FOUNDATION'S PLEADINGS DO NOT ESTABLISH TRADEMARK RIGHTS COVERING AN ADDRESS ON AN ELECTRONIC COMPUTER NETWORK.
A trademark "registration constitutes prima facie evidence of a protected interest with respect to the goods specified in the registration only." Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985) (en banc) (plaintiff cannot rely on a federal registration of its mark on pants to establish a protected interest on shirts). Accord, Miller Brewing Co. v. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977), cert. denied, 434 U.S. 1025 (1978) (registration for beer with no available carbohydrates is not prima facie evidence of rights when used by registrant on beer with available carbohydrates; mark held to be a generic term).
None of the registrations cited by the Foundation in the Complaint cover what Schaveland has been doing, namely providing information on an Internet web site. Thus, the Foundation's reliance on its registrations is totally inadequate at this stage of the case.
IV. THERE IS SUFFICIENT EVIDENCE TO SHOW FRAUD BY THE FOUNDATION IN OBTAINING ITS REGISTRATION.
Although Schaveland's allegation of fraud is broad, he should be entitled to prove his case as trial. At this juncture, Schaveland merely must show that he has pleaded an actionable claim. He has met that requirement. Moreover, even if Schaveland's pleading is deemed too vague, the Court should not issue judgment. Rather, it should afford him an opportunity to plead fraud with greater particularity. He then could show that the Urantia Foundation did not seek to register the word "Urantia" as a trademark until 1971, long after the Urantia religion had been established, and that the Foundation had been granted special tax status as a religious organization.
In examining the Foundation's trademark application, the Patent and Trademark Office specifically advised the Foundation
"that names of religions, as such, are not subject to exclusive appropriation. The name itself is not considered to be a service, and anyone practicing a particular religion has the right to use that name."
In response to this warning, the Foundation made the false statement that "URANTIA is not the name of a religion." This misrepresentation constitutes fraud on the Patent and Trademark Office. See Bart Schwartz International Textiles, Ltd. v. Federal Trade Comm'n, 289 F.2d 665 (C.C.P.A. 1961); G. Levor & Co. v. Nash, Inc., 123 USPQ 234 (T.T.A.B. 1959). See also, Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881 (C.C.P.A. 1969). Such fraud invalidates its trademark registrations. See Robi v. Five Platters, Inc, 918 F.2d 1439 (9th Cir. 1990).
The material nature of the Foundation's representation cannot be overstated. The Patent and Trademark Office posed the issue in a clear and unambiguous manner. In crafting its response, the Urantia Foundation knew that if it admitted that "Urantia" identified a religion, it never would have received a registration for its mark. It chose to deny this fact. Since the representation was made in direct response to a refusal to register, it is clear that the Foundation intended the Patent and Trademark Office to rely on its representation.
In view of the above, Schaveland can present sufficient evidence to show fraud or at least raise genuine issues of material facts. The Court should permit Schaveland to present this defense for consideration at trial.
V. CONCLUSION
For all the foregoing reasons, Maaherra respectfully requests that the Foundations's Motion Against Defendant Schaveland for Partial Judgment on the Pleadings be denied.
Respectfully submitted,
Peter A. Jaffe
Jaffe and Asher
2624 Catamount Creek Road
McCoy, CO 80463
Ph: 970/653-4361Joseph D. Lewis
Scott J. Major
Cleary, Komen & Lewis, LLP
600 Pennsylvania Avenue, SE, Suite 200
Washington, DC 20003
Ph: 202/675-4700Attorneys for Defendant Kristen Maaherra Dated: March 14, 1997