Motion for Partial Judgment on the Pleadings
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 96-D-2004
URANTIA FOUNDATION, a non-profit trust, Plaintiff,
v.
ERIC SCHAVELAND and KRISTEN MAAHERRA,
Defendants.
PLAINTIFF'S MOTION AGAINST DEFENDANT SCHAVELAND FOR PARTIAL JUDGMENT ON THE PLEADINGS
COMES NOW Plaintiff URANIA Foundation (the "Foundation") pursuant to Rule 12(c) of the Federal Rules of Civil Procedure, and files the following motion for partial judgment on the pleadings against Defendant Eric Schaveland:
1. In this case, Defendant Schaveland has asserted an affirmative defense that the Foundation could not register its concentric circles trademark because it is the flag of a foreign government, to wit, the "Kingdom of Heaven." Schaveland Answer, Affirmative Defense 1 2.
2. He has also asserted an affirmative defense and a counterclaim that the Foundation procured the registered marks at issue by defrauding the U.S. Patent and Trademark Office. Schaveland Answer, Affirmative Defense 1 3, Counterclaim.
3. He has also asserted an affirmative defense that the registered marks at issue in this case are generic. Schaveland Answer, Affirmative Defense 14.
4. Viewing the pleadings in the light most favorable to Schaveland, and drawing all reasonable inferences therefrom in his favor, Schaveland still cannot prevail on these affirmative defenses and his counterclaim as a matter of law. For this reason, the Foundation is entitled to partial judgment on the pleadings dismissing said affirmative defenses and counterclaim with prejudice.
5. In support of this motion, the Foundation relies on the pleadings and the brief in support, filed herewith.
WHEREFORE the Foundation requests that the Court grant this motion and dismiss with
prejudice Schaveland's affirmative defenses 2-4 and his counterclaim.
Dated this 21 day of February, 1997.
By Steven G. Hill
and
Gordon Dean Booth, Jr.
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BRIEF IN SUPPORT OF PLAINTIFF'S MOTION AGAINST DEFENDANT SCHAVELAND FOR PARTIAL JUDGMENT ON THE PLEADINGS
I. INTRODUCTION
The Plaintiff URANTIA Foundation (the "Foundation") brought this action claiming, inter alla, that the defendants [It is admitted that Defendants Eric Schaveland and Kristen Maaherra are husband and wife and reside in Jamestown, Colorado. Complaint, paragraphs 2-4; Schaveland Answer, paragraphs 2-4.] have infringed its URANTIA and concentric circles symbol trademarks by using the marks on the Internet to identify domains, web sites, home pages, and in connection with various books and study aids offered by the defendants on the Internet. Defendant Schaveland filed his answer, affirmative defenses and counterclaim (the "Schaveland Answer") on October 28, 1996. He admits that the Foundation registered a symbol of three blue concentric circles and the word "URANTIA" as trademarks, service marks, and collective membership marks with the U.S. Patent and Trademark Office, as illustrated below:
MARK- REGISTRATION NUMBER- REGISTRATION DATE- GOODS/SERVICES
Concentric June29, 1971,
Circles Symbol renewed June 29,
1991
1,128,256 December 25, 1979 Printed Publications--namely
books, booklets, brochures,
pamphlets, newsletters, bulletins,
and leaflets, concerning
educational, religious, or
philosophical subjects
560,261 June 17, 1952, Religious Educational Services
renewed June 17,
1992
1,089,943 April 18, 1978 Indicating Membership in a
Social and Fraternal
Organization
URAL June 29, 1971, Books
renewed June 29,
1991
1,112,713 February 06, 1979 Printed Publications-- namely
books, booklets, brochures,
pamphlets, newsletters, bulletins,
and leaflets, concerning
educational, religious, or
philosophical subjects
1,089,942 April 18, 1978 Indicating Membership in a
Social and Fraternal
Organization
948,104 November 28, 1972, Educational Services -- namely
renewed November religious teaching
28, 1992
****************
Complaint, paragraph 9; Schaveland Answer, paragraph 9. However, Schaveland asserts the following affirmative defenses, among others:
2. Plaintiff claims a trademark on the Banner of Michael which is the flag of a foreign government. The Trademark Act of 1946 section 1052 clearly forbids such registration.
3. Plaintiff Foundation obtained its trademarks fraudulently. Under the Trademark Act of 1946 section1115(b)(1), fraudulent obtainment of a Trademark creates a valid defense against an Incontestable Trademark.
4. The Plaintiff's "marks" are a (1) a generic religious mark (the Banner of Michael), and (2) generic words ("Urantia" and "Urantian") which derive from a divine revelation and are used by a large body of religious believers to denote their religious affiliation and allegiance to God and are not subject to exclusive appropriation according to the Trademark Act of 1946 Section1052. Schaveland Answer, Affirmative Defenses paragraphs 2-4, p. 9.
In addition, Schaveland asserts a counterclaim against the Foundation for "Fraudulent Trademarks." Schaveland Answer, Counterclaim paragraphs 1-11, pp. 9-11. In the counterclaim, Schaveland contends that:
1. the concentric circles mark is the flag or coat of arms of a foreign government, "[s]ince I am a citizen of the Kingdom of Heaven, the Banner of Michael is my insignia." Id., paragraph 2.
2. the Foundation knew the concentric circles mark was the flag of a foreign government, and failed to disclose that fact from the U.S. Patent and Trademark Office ("PTO"). Id., paragraph 3.
3. the Foundation failed to disclose to the PTO that to some people, Urantia is the name of the planet. Id., paragraph 4.
4. Urantia is the name of a religion, and the Foundation informed the PTOthat Urantia was not the name of a religion. Id., paragraph 5.
5. Plaintiff falsely claimed to have "coined" the word "Urantian." Id., paragraph 6. [Footnote 2: The Foundation has not alleged that Schaveland has infringed upon its "URANTIAN" mark, and the existence of that mark has not even been plead. Accordingly, not only does Schaveland lack standing to assert a counterclaim pertaining to the "URANTLAN" mark, but he has insufficiently plead a fraud count with respect to that registration.]
6. Theconclusory statement that "Plaintiff Foundation obtained its trademarks fraudulently. Id., paragraph 8.
7. The URANTIA and concentric circles marks are "generic religious marks and generic symbols." Id., paragraph 9.
For these reasons, Schaveland asks this Court to award him damages and cancel the trademarks at issue in this case.
With the exception of Schaveland's allegation that the concentric circles mark is the insignia of a "foreign government," each of these affirmative defenses and the counterclaim in this case were raised by Defendant Maaherra (Defendant Schaveland's wife) in a previous action and dismissed with prejudice. URANTIA Foundation v. Maaherra, 895 F. Supp. 1329, 1332-33 (D. Ariz. 1995) (the religious nature of trademarks or copyrights provides no ground for rejecting an otherwise valid claim of infringement); URANTIA Foundation v. Maaherra, 895 F. Supp. 1338, 1342-43 (D. Ariz. 1995) (dismissing fraud defense and counterclaim and genericism defense with prejudice). Despite these previous rulings against Maaherra, Schaveland's wife, Schaveland advances the same defenses and counterclaim, only this time in a more rudimentary fashion (e.g., the requisite elements of the counterclaim are not even asserted). [Footnote 3: The Foundation has also filed a motion to dismiss these defenses and the counterclaim on the ground that Schaveland and Maaherra are estopped by principles of res Judicata and collateral estoppel from raising any of the defenses and counterclaims which were dismissed with prejudice by the district court in the Foundadon's previous litigation with Maaherra.] As shown below, Schaveland's defenses and counterclaim as plead are insufficient as a matter of law. Accordingly, the Court should dismiss Schaveland's affirmative defenses 2, 3 and 4 and his counterclaim for fraud with prejudice.
II. ARGUMENT
A. Judgment on the Pleadings Should be Granted Where the Pleadings of the Non-Movant are Legally Insufficient to Sustain a Claim or Defense.
"A motion for judgment on the pleadings is designed to dispose of cases where material facts are not in dispute and judgment on the merits can be based on the content of the pleadings and any facts of which the court will take judicial notice." Hamilton v. Cunningham, 880 F. Supp. 1407, 1410 (D. Colo. 1995); In re Mulanev, 179 B.R. 942, 945 (D. Colo. 1995). Functionally, it is the equivalent of a motion to dismiss for failure to state a claim upon which relief can be granted. Id. Thus, where claims are insufficiently plead, they are dismissed with prejudice on a motion for judgment on the pleadings. Utah State Univ. v. Bear, Stearns & Co., 549 F.2d 164, 171 (l0th Cir. 1977), cert. denied, 434 U.S. 890 (1977) (dismissing fraud claim with prejudice on the basis of the legal insufficiency of the complaint). For purposes of such a motion, the well-plead material allegations of the non-movant's pleadings are taken as true. Hamilton, 880 F. Supp. at 1410. In the instant case, even if the Court accepts the truth of the well-plead allegations of Schaveland's counterclaim, it must be dismissed with prejudice on the ground that it is legally insufficient. Moreover, there are no facts which Schaveland can prove that will save his defenses from judgment as a matter of law.
B. 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.
Schaveland's affirmative defenses, paragraph 4, and the allegations in paragraphs 4, 7 of his counterclaim arc falsely premised on the notions that intellectual property such as trademarks that have religious significance to the defendant in an infringement action can be infringed with impunity, or that such property is not entitled to protection under federal law. The First Amendment requires that disputes over rights to property that is in any way religious must be resolved by looking solely to "neutral principles of law, developed for use in all property disputes...." Presbyterian Church v. Marv Elizabeth Blue Hill Mem. Presbyterian Church, 393 U.S. 440, 449, 89 S.Ct. 601 (1989). The application of such neutral principles of law can only be accomplished when courts turn a blind eye to whether the property rights at issue have or do not have religious significance. As the Court held in Bridge Technologies v. Vien, 827 F. Supp. 629, 634-35 (S.D. Cal. 1993), "plaintiffs' claims for copyright and trade secret protection are not barred by the religious nature of the works. . . " (emphasis added).
The arguments advanced by Schaveland, that the facts that the marks at issue have religious significance to him and others, and that the PTO should not recognize "religious marks" have previously been addressed and rejected by other courts. For example, in National Bd. of the YWCA v. YWCA of Charleston, 335 F. Supp. 615, 624-25 (D.S.C. 1971), the defendant argued that the First Amendment prevents the PTO from granting a trademark to a religious organization. The court rejected this argument, and stated:
[n]othing in the Constitution prohibits a religious organization from owning property -- and a trademark is a property right -- or prohibits the government from protecting that property from unlawful appropriation by others.
Id. In another case, Purcell v. Summers, 145 F.2d979, 987 (4th Cir. 1944), the court held that dissident members of the Methodist Episcopal Church, South, had no right to use the name of the church in a new church that they had formed. The rationale of Purcell is applicable in this case as well:
[n]o question of religious liberty is involved. Men have the right to worship God according to the dictates of their conscience; but they have no right in doing so to make use of a name which will enable them to appropriate the good will which has been built up by an organization with which they are no longer connected.
Id.
In short, as a matter of law, Schaveland's invocations of religion and religious significance do not warrant the departure from the application of neutral principles of trademark law, nor do they insulate acts of trademark infringement from liability. URANTIA Foundation v. Maaherra, 895 F. Supp at 1332-1333. Schaveland cannot affirmatively defend his actions on the ground that the marks have religious importance to him or that his religious freedom empowers him to violate otherwise valid trademarks with impunity. "The first amendment is not a license to trammel on legally recognized rights in intellectual property." Dallas Cowbovs Cheerleaders. Inc. v. Scoreboard Posters. Inc., 600 F.2d 1184, 1188 (5th Cir. 1979).
In conclusion, the need to apply neutral principles of trademark law to this case means that the Court should dismiss with prejudice Schaveland's aff'rmative defenses, paragraph 4, and his counterclaim, paragraphs 4, 7 to the extent they plead the alleged religious value and nature of the Foundation's marks.
C. Schaveland's Affirmative Defense and Counterclaim Allegation of Generics Fail As A Matter of Law.
Schaveland claims as both an affirmative defense (Schaveland Answer, Affirmative Defense, paragraph 4), and as part of his counterclaim (id., Counterclaim paragraphs 5, 9), that the Foundation's URANTIA and concentric circles mark are a religious word and a religious symbol that are "generic" within the meaning of the Lanham Act. As the preceding section shows, the facts that the marks are allegedly "religious" is no basis for a defense or counterclaim for fraudulent registration. Moreover, as shown below, neither "URANTIA" nor the concentric circles mark are generic within the meaning of the Lanham Act. In short, Schaveland's allegations that the religious nature of the marks makes them generic is fundamentally flawed, and cannot succeed.
The Foundation's certificates of registration are prima facie evidence that the Foundation owns its marks and has the exclusive right to use them. 15 U.S.C. section 1057. Pacific Telesis Group v. International Telesis Communications, 795 F. Supp. 979, 982 (C.D. Cal. 1991), aff'd, 994 F.2d 1364 (9th Cir. 1993). For Schaveland to argue genericism, he must be able to allege and prove facts that would justify the cancellation of the Foundation's marks. 15 U.S.C. section 1064(3) provides that a petition to cancel a registration of a mark may be filed:
[a]t any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered .... A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
15 U.S.C. section 1064(3) (1988) (emphasis added). "Whether a term or symbol is [generic] turns on how the mark is understood by the purchasing public." In Re Montrachet. S.A., 878 F.2d 375, 376 (Fed. Cir. 1989); Murphy Door Bed Co. v. Interior Sleep Systems, 874 F.2d 95, 100 (2d Cir. 1989). The Federal Circuit has recognized that the 1984 Amendment to 15 U.S.C. section 1064(3), (i.e., the "primary significance to the relevant public" standard)" . . . codified the time-honored test for genericness articulated by Judge Learned Hand in Bayer v. United Drug Co., 272 F.2d 505 (S.D.N.Y. 1921): "What do the buyers understand by the word for whose use the parties are contending?" Magic Wand. Inc. v. RDB. Inc., 940 F.2d 638, 640 (Fed. Cir. 1991); see also King-Seeley Thermos Co. v. Aladdin Industries. Inc., 321 F.2d 577, (2d Cir. 1963) (a defendant alleging invalidity of a trademark for genericness must show that to a "substantial majority of the public" the word has lost all trademark significance. Id., 321 F.2d at 580 (emphasis added), citing Marks v. Polaroid Corp., 129 F. Supp. 243, 270 (D. Mass. 1955)).
". . . [A] proper genericness inquiry focuses on the description of services [or goods] set forth in the certificate of registration." Magic Wand. Inc. v. RDB. Inc., 940 F.2d 638, 640 (Fed. Cir. 1991). Thus, to prevail on his "genericism" claims, Schaveland must show that the Foundation's marks are commonly-used descriptive terms and symbols for the following goods
and services:
MARK DESCRIPTION OF GOODS OR SERVICES
Concentric Circles, Reg. No. Books
915,733
URANTIA, Reg. No. 915,734 Books
URANTIA, Reg. No. 1,112,713 Printed publications -- namely, books, booklets, brochures, pamphlets, newsletters, bulletins, and leaflets concerning educational, religious or philosophical subjects
Concentric Circles, Reg. No.1,128,256 Printed publications -- namely, books, booklets, brochures, pamphlets, newsletters, bulletins, and leaflets concerning educational, religious or philosophical subjects
Concentric Circles, Reg. No. Religious educational services
560,261
URANTIA, Reg. No. 948,104 Educational services--namely religious teaching
Concentric Circles, Reg. No. Indicating membership in a social and fraternal organization
1,089,943
URANTIA, Reg. No. 1,089,942 Indicating membership in a social and fraternal organization
There is no bona fide allegation that the Foundation's marks are "generic" within the meaning of the Lanham Act -- there is no dispute that the marks are not commonly-used terms for the goods and services listed above in the manner that "cellophane" means "plastic wrap," or "thermos" means "vacuum insulated container." [Footnote 4: Compare Dupont Cellophane Co.. Inc. v. Waxed Products Co. Inc., 85 F.2d 75 (2d Cir. 1936) (cellophane); King-Seeley Thermos Co. v. Aladdin Industries. Inc., 321 F.2d 577 (2d Cir. 1963) (thermos).] For instance, Schaveland does not suggest that the term "URANTIA" is commonly used to mean "book" (i.e., "Have you read any good URANTIAs lately?), or "religious educational services" (i.e., "the Urantia Foundation offers URANTIAs"). The Foundation's marks simply are not common descriptive terms which are synonymous with the goods and services described in the registrations. URANTIA Foundation v. Maaherra, 895 F. Supp. at 1343.
Moreover, in determining whether a mark is generic, the critical question is what the designation means to the purchasing public, not what it means to those who are active in the trade and who already are familiar with the plaintiff's goods or services. Big O Tire Dealers v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (l0thCir. 1977), cert. denied 434 U.S. 1052 (1978); WSM. Inc. v. Hilton, 724 F.2d 1320, 1328, In. 3 (8th Cir. 1984); see also J. McCarthy, Trademarks and Unfair Competition, section12.2 at 522-23 (2d ed. 1984). [Footnote 5: Burger King Corp. v. Pilgrim's Pride Corp., 705 F. Supp 1522, 1524 (S.D. Fla. 1988), aff'd without opinion 844 F.2d 412 (11th Cir. 1990); Kelley Blue Book v. Car-Smarts. Inc., 802 F. Supp. 278, 285 (C.D. Cal. 1992) (a mark is generic "when the principal significance of the word to the public becomes the indication of the nature or class of an article, rather than the indication of the article's origins citing Coca-Cola Co. v. Overland Inc., 692 F.2d 1250, 1254 n. 10 (9th Cir. 1982); Berner Int. Corp. v. Mars Sales Co., 987 F.2d 975, 980 (3rd Cir. 1993) (it is the public's understanding that is crucial)] Thus, to the extent Schaveland relies upon the allegation that to a small number of people, himself included, who already are familiar with The URANTIA Book and who are active in groups which study the teachings of The URANTIA Book, the Foundation's marks are "generic" to them, these allegations are insufficient as a matter of law to overcome the Foundation's motion for judgment on the pleadings.
D. The Concentric Circles are not the Insignia of Foreign Government Within the
Meaning of the Lanham Act.
The Lanham Act, 15 U.S.C. section 1052, states in relevant part:
[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration . . . unless it --
* * *
(b) consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation or any simulation thereof.
In his second affirmative defense, and in paragraph 2 of his counterclaim, Schaveland alleges that the Foundation's concentric circles mark is the flag of a foreign nation -- the Kingdom of
Heaven. As the Foundation has already shown, this dispute should be decided by the application of neutral, secular law. Whether the concentric circles mark has religious significance does not matter in this case. Accordingly, the Court should reject this awkward attempt by Schaveland to pigeon hole his religious beliefs into 15 U.S.C. section 1052(b) by contending that "Heaven" is a foreign nation [Footnote 6: BLACK'S LAW DICTIONARY (5th ed. 1979) at 923, defines "nation" as "[a] people, or aggregation of men, existing in the form of an organized jural society, usually inhabiting a distinct portion of the earth ...." (emphasis added). The Foundation submits that neither this definition, nor the legislative history of the Lanham Act supports any claim by Schaveland that "Heaven" is to be regarded as a nation.] /foreign government within the meaning of the Lanham Act. Vuitton Et Fils S.A. v. J. Young Ent.. Inc., 644 F.2d 769, 775 (9th Cir. 1981) (term "national insignia" restricted to official symbols of a government). This affirmative defense should be dismissed with prejudice.
E. The Court Should Dismiss Schaveland's Counterclaim with Prejudice.
To establish a counterclaim of fraudulent registration [Footnote 7: Schaveland's third affirmative defense, like his counterclaim, is based on the notion that the Foundation procured its marks by defrauding the PTO. Thus, the Foundation submits that the affirmative defense of fraud stands or falls along with the fraud counterclaim.], Schaveland must plead and prove all of the following: (1) that the Foundadon made a false representation regarding a material fact concerning its trademark and service mark applications; (2) that it knew the representation was false when made; (3) that it intended to induce reliance upon the misrepresentation; (4) that the PTO actually relied on the representation as a basis for issuing the registration; and (5) that damage resulted therefrom. Robi v. Five Platters. Inc., 918 F.2d 1439, 1444 (9th Cir. 1990); Texas Pig Stands. Inc. v. Hard Rock Cafe Internat'l, 951 F.2d 684, 693 n. 14 (Sth Cir. 1992). Moreover, a deliberate intent to mislead the PTO must be established by clear and convincing evidence in order to support cancellation of the Foundation's marks. Beer Nuts. Inc. v. Clover Club Foods Co., 711 F.2d 934, 942 (lOthCir. 1983); Monev Store v. Harriscorp. Finance. Inc., 689 F.2d 666, 670 (7th Cir. 1982). Against this background, the Court should dismiss Schaveland's counterclaim with prejudice. It does not sufficiently plead a cause of action, nor are its allegations supportable as a matter of law.
First, the fact that the counterclaim is essentially a fraud claim subjects it to the heightened pleading requirements of Rule 9(b) of the Federal Rules of Civil Procedure. Fraud must be plead with particularity, and insufficient pleading of fraud warrants judgment on the pleadings for the party defending itself from the fraud allegation. Utah State Univ., 549 F.2d at 171. If the Court tests Schaveland's allegations of fraud for legal sufficiency, it will find that:
- with respect to the concentric circles mark, there is no allegation that the Foundation affirmatively misrepresented any fact;
- there is no allegation, however general, that the Foundation made a material misrepresentation of any fact to the PTO at any time;
- there is no allegation, however general, that the Foundation knew that any representation that it made to the PTO was false at the time it was made;
- there is no allegation that the Foundation intended to induce the PTO to rely on any material misrepresentation;
- there is no allegation that the PTO relied on any material misrepresentation made by the Foundation.
That Schaveland does not even plead the requisite elements of a fraud claim is grounds for the Court to grant its motion for judgment on the pleadings dismissing the claim with prejudice. Moreover, as shown below, the allegations that Schaveland makes in his counterclaim are incapable of supporting a fraud counterclaim.
Schaveland's counterclaim is based upon the same allegations--that the Foundation failed to disclose [Footnote 8: The Foundation also submits that any argument that a "failure to disclose" on its part is legally insufficient grounds for a fraud claim because it overlooks the quasi-adversarial nature of the trademark registration process. Indeed, the case law on fraudulent registration cited in this brief shows that the Court need only be concerned with allegations of affirmative misrepresentations of material fact.] the concentric circles mark is the flag of a foreign government (Schaveland Answer, Counterclaim paragraphs 2, 3), that the Foundation failed to disclose the religious nature of the marks (id., paragraphs 5, 9), and that the Foundation failed to disclose the "generic" nature of the marks (id., paragraph 9) -- that the Foundation has previously shown are immaterial or insupportable as a matter of law.
Since the concentric circles mark is not alleged to be the insignia of a foreign nation within the meaning of the Lanham Act, the Foundation did nothing wrong by failing to inform the PTO that the circles are insignia of a foreign nation.
Since the Court is to apply neutral principles of law in a case such as this one to avoid needless entanglements in matters of religious doctrine, it is not material whether the marks at issue are religious in nature or not. URANTIA Foundation v. Maaherra, 895 F. Supp. at 1342.
Moreover, the so-called "religious nature" of the marks is not grounds to support a claim for genericism under the Lanham Act. Instead, under 15 U.S.C. section 1064, the test is whether the particular mark at issue has become synonymous in the general public with the goods or services it is used to identify. In this case, Schaveland does not allege that URANTIA is synonymous with books (or even religious books) or study aids or related services to anyone, much less the general public. The Foundation submits that there are no facts which Schaveland could hope to prove that would give rise to a colorable claim of "genericism" within the well-established meaning that term in trademark law.
In short, the allegations of the counterclaim cannot, as a matter of law, support a claim of fraudulent registration by the Foundation.
III. CONCLUSION
For all of the foregoing reasons, the Foundation's motion for judgment on the pleadings
should be granted, and Schaveland's affirmative defenses 204 and his counterclaim should be dismissed with prejudice.
Dated this 21 day of February, 1997.
By Steven G. Hill
and
Gordon Dean Booth, Jr.
ATTORNEYS FOR PLAINTIFF, URANTIA FOUNDATION
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March 11, 1997
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, 2.11[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 12:12 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, 2.11[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
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March 14, 1997
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: 970/653-4361
Joseph D. Lewis
Scott J. Major
Cleary, Komen & Lewis, LLP
600 Pennsylvania Avenue, SE, Suite 200
Washington, DC 20003
Ph: 202/675-4700
Attorneys for Defendant Kristen Maaherra
Dated: March 14, 1997
*************************************************
March 21, 1997
REPLY TO DEFENDANT ERIC SCHAVELAND'S RESPONSE BRIEF TO PLAINTIFF'S MOTION AGAINST DEFENDANT SCHAVELAND FOR PARTIAL JUDGMENT ON THE PLEADINGS
Contrary to Schaveland's suggestion that the URANTIA Foundation (the "Foundation") argues "insufficiency of the evidence," it is the adequacy and nature of his pleadings that the Foundation challenges. Schaveland has now introduced evidence in the form of his affidavit and exhibits, see Schaveland's brief, p. 4, which converts this motion to a motion for partial summary judgment. F.R.C.P. 12(c). The evidence he submits fails to raise a genuinely disputed issue on each of the required elements of his defenses and counterclaim. Thus, the Foundation is entitled to a judgment dismissing with prejudice his counterclaim based on fraud, and his affirmative defenses 2 (concentric circles mark is the flag of a foreign government), 3 (trademarks procured by fraud) and 4 (genericism).
A. Schaveland's Counterclaim and Affirmative Defense based on Fraud Should Be Dismissed.
Whether tested by the pleading requirement of Rule 9(b) of the Federal Rules of Civil Procedure or by the evidence of record, Schaveland's fraud-based counterclaim and affirmative defense fail as a matter of law. The Foundation's opening brief, pp. 12-15, shows that Schaveland has not properly plead a fraud claim. Moreover, the evidence proffered by Schaveland is not sufficient create a genuinely disputed issue of material fact on each of the five requisite elements of a claim of trademark fraud. [Footnote 1: The Foundation's opening brief cited Tenth Circuit precedent in support of its argument that an improperly plead fraud claim is subject to dismissal with prejudice on a motion such as this one.]
The gravamen of Schaveland's fraud claim (Schaveland Brief, p. 17) is based on a statement made to him by Philip Rolnick, a former trustee of the Foundation. [Footnote 2: Moreover, contrary to Maaherra's brief in opposition, there is also no evidence that in 1971 "URANTIA" was the name of a religion. She raised this very same fraud argument she now asserts in her brief and lost in previous litigation with the Foundation.] However, Schaveland's brief is not evidence. Even if it were, there is no evidence that Mr. Rolnick was a trustee when the Foundation registered its trademarks. There is not evidence that he made any statements to the Patent and Trademark Office during the registration process. Id., 1 3. SO, while Schaveland asks the Court "to let Discovery proceed on this fraud issue in order to dispel any doubts about the matters,]" (Schaveland brief, p. 17) (emphasis added), the insufficiency of the pleadings and evidence relating to a bona fide fraud claim should lead the Court to dismiss the fraud counterclaim and affirmative defense with prejudice.
B. The Court Should Dismiss Schaveland's Affirmative Defenses That the Concentric Circles Mark is The Flag Of A Foreign Nation With Prejudice.
Schaveland insists that "Heaven" is a "nation" and that the "Kingdom of Heaven" is a "government" within the meaning of the Lanham Act. The Foundation submits that 15 U.S.C. 1052(b) of the Lanham Act refers only to foreign nations on earth. For the Court to extend the definition of "foreign nation" to "Heaven" in the manner requested by Schaveland would run afoul of the directive of Establishment Clause case law that secular, neutral principles of law should decide disputes regarding intellectual property. For these reasons, the Court should dismiss this affirmative defense with prejudice. [Footnote 3: It is also noteworthy that Maaherra's brief does not even address this defense.]
C. The Court Should Dismiss Schaveland's Genericism Defense With Prejudice.
With respect to genericism, Schaveland has introduced his affidavit and exhibits into evidence, which converts this motion into a motion for partial summary judgment. F.R.C.P. 12(c). [Footnote 4: Maaherra's opposition brief is flawed on the genericism issue because it completely overlooks the fact that Schaveland has made an offer of proof to the Court.] On summary judgment, Schaveland must show that a genuinely disputed issue of material fact exists as to whether each of the Foundation's four "URANTIA" marks and four concentric circles marks are generic. As shown below, no such genuinely disputed factual issue exits.
The Foundation owns four registered "URANTIA" and four concentric circles marks, which cover (1) books; (2) educational services; (3) printed publications; and (4) collective membership in an organization. As shown in the Foundation's opening brief, pp. 9-10, for arty of these marks to be generic within the meaning of the Lanham Act, "URANTIA" or the concentric circles must "specif[y] the genus of which the particular product is the species." Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir. 1986); Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir. 1977) ("[a] generic or common descriptive term is one which is commonly used as the name or description of a kind of goods"). Schaveland has not introduced any evidence that any of the marks means books, publications, religious or educational services, or membership in an organization. [Footnote 5: Schaveland's evidence does not show that "URANTIA" has become to the goods and services for which it is registered what "KLEENEX" is to facial tissue, "THERMOS" is to vacuum-packed containers or "CELLOPHANE" is to plastic wrap. When Schaveland's own authorities are scrutinized, it is apparent that the Foundation's "URANTIA" marks are not generic.]
Schaveland asserts that adjectives can be generic for trademark purposes, citing Miller Brewing Co., 561 F.2d at 76. In that case, the Court held that "LITE BEER" was generic in that it described the product type and was necessary to refer to less alcoholic, low calorie, low carbohydrate beer: "[w]e hold that, because "light" is a generic or common descriptive word when applied to beer, neither that word nor its phonetic equivalent may be appropriated as a trademark for beer. " In this regard, Miller Brewing Co. shows the importance of looking to the relationship between the specific trademark and the specific product or service for which it is registered. [Footnote 6: Schaveland has not done this. He simply lumps all of the "URANTIA" marks together and declares them generic. While trademark law counsels the Court to use a scalpel in genericism analysis, Schaveland would have the Court cut with a machete.]
What Schaveland ignores in his "adjective versus noun" analysis is that Miller Brewing Co. specifically states that "if light beer is a generic name, then 'light' is a generic word when used as a part of that name." Id. at 80. Furthermore, "light" is defined in the dictionary as being of a beverage having comparatively low alcoholic content. Id. What this case shows is that an adjective may be generic if it is defined as being characteristic of a type or kind of good or service.
Applying this analysis to the instant case, Schaveland has come forward with no evidence that "URANTIA" is defined as being characteristic of any product or service. [Footnote 7: 7 When this same analysis is applied to the Foundation's concentric circles marks, it becomes obvious that they are not generic either.] None of his encyclopedic evidence shows that "GRANDAM means book, or publication, or educational service or membership in an organization. [Footnote 8: However, one of his citations is a reference to the Plaintiff, which shows that the association between "URANTIA" and the Foundation is well-recognized in Schaveland's own authorities.]
The other examples of genericism raised by the cases cited by Schaveland's brief are "Bundt Cake," In re Northland Aluminum Products. Inc., 777 F.2d 1566 (Fed. Cir. 1985), "Liquid Controls," Liquid Controls Corp., 802 F.2d 934 (7th Cir. 1986) and "Egg Noodles," Weiss Noodle Co. v. Golden Carackhel and Speciality Co., 290 F.2d 845 (CCPA 1961). These are all the names of categories of products. Conversely, Schaveland presents no evidence that "URANTIA" is such a generic reference to such a product category.
So, even though the "primary significance test" [Footnote 9: The Foundation takes issue with Schaveland's characterization of the "relevant public." However, for purposes of this motion, Schaveland has no evidence that meets the primary significance test to what he characterizes as the relevant public.] is the appropriate standard for testing genericism, Schaveland has no evidence that "URANTIA"'s primary significance is as the genus of any particular good or service, much less for a good or service as to which the Foundation owns registered marks.
The Foundation submits that the Court should pierce Schaveland's label of "genericism" to what he is really saying. As Walt-Weiss Ent., Inc. v. Gannet Co.. Inc. 695 F.2d 1050, 1057 (7th Cir. 1982) cautioned, there is a "decided tendency in trademark cases to argue about the legal labels rather than he underlying analytical inquiries those labels are designed to trigger. The labels themselves are merely springboards for analysis, not a substitute for it." What Schaveland is really contending is that "URANTIA" as it pertains to the products and services for which the Foundation owns the marks "describes" a characteristic of those goods and services, namely, (according to Schaveland) that they relate to the teachings of his "Urantia" religion. [Footnote 10: To refer back to Schaveland's "adjective versus noun" distinction, the fact that he is referring to "URANTIA" as an adjective shows that he is challenging the Foundation's "URANTIA" mark based on its descriptiveness rather than its inherent genericness as the name of a genus or class of goods or services. See 3 Callman, Unfair Competition, Trademarks and Monopolies. 18.03 at 9 (4th ed. 1983) ("[t]he typical descriptive term is an adjective rather than a noun").] The same can be said of his allegation that the concentric circles mark is generic. However, the fact that a mark is descriptive does not mean that it is not entitled to protection. Miller Brewing Co., 561 F.2d at 79 (if the descriptive term has acquired "secondary meaning," [Footnote 11: To show "secondary meaning," a party must show that the descriptive mark is recognized by the public as denoting a single seller or source. Aloe Creme Laboratories. Inc. v. Milsan. Inc., 423 F.2d 845, 849 (5th Cir.), cert. denied, 398 U.S. 928 (1970).] it is protectible as a valid trademark). In fact, the evidence of the Foundation's registration of its "URANTIA" marks is prima facie evidence that the marks, if descriptive, have the secondary meaning necessary to be entitled to trademark protection under the Lanham Act. 15 U.S.C. 1115(a); Liquid Controls Corp., 802 F.2d at 936. Schaveland has not shown any evidence that bears on the issue of secondary meaning.
Close attention to the case law also shows that the allegations of both Defendants that "URANTIA" is the name of their religion shows that this argument is not grounds to invalidate the Foundation's trademarks and service marks as generic. In the first place, the application of Christian Science Bd.of Dir. v. Evans, 520 F.2d 1347 (N.J. 1987) is misplaced. In that case, genericism was premised on the notion that "Plaintiffs simply cannot appropriate, from the public domain, the common name of a religion .... " Id. (emphasis added). While Schaveland and Maaherra place great emphasis on this rationale for their genericism arguments, it completely cuts against their position.
Schaveland's affidavit does not place in dispute whether "URANTIA" was the name of a religion when the Foundation first registered its trademark. Without such a dispute, he cannot survive this motion because he cannot prove the Foundation "took" something that already belonged to the public. Prior to 1971, the Foundation used the word "URANTIA, " as evidenced by the certificates of registration themselves. No other evidence is in the record. Defendant's assertions that "URANTIA" is listed as a new religion in the United States totally belies their claims that the Foundation appropriated a pre-existing, generic religious name for itself over twenty-six years ago. [Footnote 12: Technically, Schaveland's burden would be to show that "URANTIA," which was used by the Foundation in the 1950's, was already the name of a religion before it was appropriated and used by the Foundation in connection with its goods and services.] In short, this argument works from a totally flawed premise.
Secondly, a close review of the authorities cited by Schaveland and Maaherra shows that the names at issue were generic as trade names, but not as trademarks. For example, in Self- Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 909-911 (9th Cir. 1995), the Court held that while the use of "Self Realization" as a trade name was generic in the context of a name for a spiritual organization, the use of "Self Realization" by the Self- Realization Fellowship Church ("SRF") as a trademark to describe its products was not generic, but was descriptive. As shown below, the Foundation's certificates are evidence of secondary meaning, which supports their viability if they are descriptive, and there is no contrary evidence submitted by Schaveland.
A similar result was reached in Stocker v. General Conf. Corp. of Seventh~av Adventists, 39 U.S.P.Q.2d 1385, 1395-1396 (STAB 1996), where substantial testimony was introduced that others taught the religious doctrines of the Seventh-day Adventist Church in an effort to have the church's "Seventh-day Adventist" mark canceled as generic. However, in response to this evidence, the Appeal Board stated, "The above testimony is hardly the kind upon which to base a holding of genericness and to cancel a longstanding registration." Id. at 1395.
Stocker held:
Based on the record before us, we conclude that the term indicates products and/or services of a single source . . . and, therefore, the term functions as a trademark/servicemark.
* * *
To the contrary, it is the trademark function to so identify a product that the consumer is assured of the quality and characteristics that it has come to associate with a particular source of that product. Id. at 1398.
In these cases, which Schaveland relies upon, the courts recognized the distinction between religious names being generic as "trade names" and being generic when they describe a class of goods or services. However, Schaveland seeks to stand this proposition on its head and ask the Court to declare the Foundation's "URANTIA" trademarks generic because when he uses "URANTIA" it is to identify the name of his religion. Schaveland is not asking the Court to declare a trade name generic; he is asking the Court to invalidate trademarks, which identify particular goods and services, as generic.
Lastly, the potential consequences of accepting Schaveland's argument that "URANTIA" is generic because it is the name of his religion, even though there is not evidence that it was the name of any religion before the Foundation's first use of "URANTIA" as a mark, are far- reaching. What Schaveland is arguing is that if a party such as the Foundation procures a registered mark which others later claim is the name of their religion, that the property owner would lose the trademark so that others can freely practice their religion. The only way the uses of the respective parties would collide is if the religionists attempt to use the "name of their religion" commercially. If claiming that a mark is the name of a religion (and submitting one hundred affidavits, for example, testifying to that fact) can make a prior-registered trademark generic, then people can accomplish the ability to use confusingly similar marks in commerce by first canceling the prior mark's validity as generic -- the name of their religion. This consequence is inconsistent with the neutral principles approach to the First Amendment, which counsel that the First Amendment is not a license to violate intellectual property rights. [Footnote 13: There is no reason why genericism should be stretched to a place where it does not belong. Two principles of trademark litigation protect anyone who makes a bona fide personal, religious use of "URANTIA" or any other registered mark: the distinction between commercial and noncommercial use, and the "likelihood of confusion" test. When an individual such as Schaveland uses "URANTIA" to say "URANTIA is the name of my religion," for example, the Foundation would be hard-pressed to show that such a use of the word "URANTIA" either is commercial or would likely cause confusion with the Foundation's marks. These principles, not genericism, should be used to preserve marks that are claimed to have a dual commercial/religious import.]
Dated this 21 day of March, 1997.
By Steven G. Hill
and
Gordon Dean Booth
and
William T. Slamkowski
ATTORNEYS FOR PLAINTIFF,
URANTIA FOUNDATION
Last Updated April 9, 1997 by Kristen Maaherra