Religion and Trademark Law
The General Conference Corporation of Seventh-day Adventists is a corporation formed in 1863, marking the official organization of the Seventh-day Adventist Church. The corporation holds title to various registered marks including "Seventh-day Adventist," "Adventist," and "General Conference of Seventh-day Adventists." It also used "SDA" as an acronym for "Seventh-day Adventist" but has not registered the acronym.
The defendant, Walter McGill, was originally baptized in a Seventh Day Adventist church affiliated with the plaintiffs. McGill later separated from the church due to a theological dispute and formed his own church called "A Creation Seventh Day & Adventist Church," which name he said came from a divine revelation. He apparently was aware that plaintiffs had trademarked "Seventh Day Adventist" but used the name anyway, believing he was divinely mandated to do so.
Plaintiffs sued McGill alleging a number of federal and state law claims including trademark infringement, unfair competition and dilution under the Lanham Act.
McGill filed a motion to dismiss arguing that (1) the District Court lacked subject matter jurisdiction because it could not decide the trademark question without resolving an underlying religious doctrine dispute; (2) the Religious Freedom Restoration Act rendered trademark law inapplicable to him; and (3) Seventh-Day Adventism is a religion and therefore generic and not capable of being trademarked. The District Court concluded that trademark law did apply, that McGill had waived the RFRA defense, and the issue of whether the trademark term was generic was a factual issue that could not be resolved on a motion to dismiss.
The plaintiffs later moved for summary judgment, which the District Court granted with respect to the infringement claim relating to "Seventh-day Adventist" but denied as to "Adventist" and "SDA."
As to McGill's claim that the District Court lacked subject matter jurisdiction because it could not apply neutral principles of trademark law without resolving an underlying doctrinal dispute (i.e., "who are the 'true' Seventh-day Adventists"), the Sixth Circuit disagreed. It concluded that "[t]rademark law will not turn on whether the plaintiffs' members or McGill and his congregants are the true believers" and therefore affirmed the District Court's (and its own) subject matter jurisdiction over the case.
The Sixth Circuit noted that McGill's RFRA defense had merit as a factual matter but ultimately concluded that he could not claim the benefit of RFRA because it did not apply in suits between private parties. The court thus sided with the Seventh and Ninth Circuits, which had reached a similar conclusion.
The Sixth Circuit also appeared to acknowledge the merit of McGill's genericness argument, noting that "well-known terms that society understands to refer to a particular faith in general are generic, and no single party can prevent others from using them." But because whether a name is generic is a question of fact, the Sixth Circuit concluded that "[i]t would be inappropriate to conclude as a matter of law, regardless of the evidence that could be adduced . . . that the public considers 'Seventh-day Adventist' to refer generically to a religion."
Finally, the Sixth Circuit affirmed the grant of summary judgment on the trademark infringement claim relating to the mark "Seventh-day Adventist," specifically addressing only McGill's assertion that the District Court misjudged the relevant factors in light of the relevant public:
McGill argues that the relevant public--those who believe in the imminence of Christ's return and that the Sabbath should be observed on Saturday--are so discerning that there is a genuine issue of material fact about the likelihood that they would confuse McGill's church for the plaintiffs' church. But while it may indeed be hard to envision a person mistakenly joining the wrong church, it is not at all difficult to imagine a person consuming McGill's published materials and ascribing his teachings to the General Conference, especially in light of the relatedness of the parties' services and similarity of the marks.
The case cite is Gen. Conference Corp. of Seventh-Day Adventists v. McGill, No. 09-5723 (6th Cir. Aug. 10, 2010).
