Internet Trademark Case Summaries
General Conference Corp. of Seventh Day Adventists v. McGill
2008 WL 2404036 (W.D. Tenn. June 11, 2008)
Plaintiff General Conference Corporation of Seventh Day Adventists (“SDA”) was a religious organization representing the interests of the Seventh Day Adventist Church. SDA owned trademark registrations for the marks SEVENTH-DAY ADVENTIST, ADVENTIST, and GENERAL CONFERENCE OF SEVENTH DAY ADVENTISTS. Defendant McGill, a former member of SDA who had broken away after a theological dispute, was the founder and pastor at “A Creation Seventh Day & Adventist Church,” a three-member church unaffiliated with SDA. McGill registered several domain names, including 7th-day-adventist.org, creation-7th-day-adventist-church.org, creationseventhday-adventistchurch.org, creationsda.org, and csda.us. SDA sued for federal and common law trademark infringement, federal and state dilution, unfair competition, and cybersquatting, and moved for summary judgment. The court granted SDA’s motion on its infringement and unfair competition claims as to the SEVENTH-DAY ADVENTIST mark. Despite SDA’s incontestable registrations, McGill argued that the SEVENTH-DAY ADVENTIST, ADVENTIST, and SDA marks were generic, or at best descriptive without secondary meaning, as they referred to a religion or set of religious beliefs, rather than a specific church. McGill cited several break-away congregations that had taken the Seventh-Day Adventist name and criticized SDA’s 1999 survey evidence that showed only 13% of the public thought “Seventh-day Adventist” represented a religion (i.e., a generic term) rather than an organization or church. The court rejected McGill’s arguments as to the SEVENTH-DAY ADVENTIST mark, citing prior TTAB and district court cases that did not find the mark generic when used as a church name. Evidence of two small churches that took the SEVENTH-DAY ADVENTIST name was not sufficient to prove genericness. Instead, the presence of only two splinter groups supported SDA’s claim that the public associated the SEVENTH-DAY ADVENTIST mark only with SDA. Additionally, while the court agreed that SDA’s survey questions were misleading, this simply weakened the evidence that the mark was not generic, rather than supporting McGill’s burden of proving genericness. Turning to the ADVENTIST mark, the court cited dictionary definitions that referred to ADVENTIST primarily as a set of beliefs rather than a church or organization. As such, the court denied summary judgment on the ADVENTIST mark and the unregistered SDA mark. Finding the SEVENTH-DAY ADVENTIST mark valid and protectable, the court proceeded with a likelihood-of-confusion analysis and found that every factor either favored SDA or was neutral. The mark was strong due to its statutory incontestability, and the parties’ services and marketing channels were closely related. The court also found that defendants’ addition of “Creation” to the church name, capitalizing “Day,” and using an ampersand did not sufficiently distinguish the marks. The court, however, discounted SDA’s evidence of actual confusion in the form of guestbook entries on McGill’s website. These online requests for additional information about McGill’s church or making prayer requests were too ambiguous to “conclusively indicate that Defendant’s church was part of the ‘mother’ church.” Additionally, the court found no intent by McGill to confuse consumers and viewed purchasers’ degree of care as largely irrelevant, but held that the likelihood of ‘product-line’ expansion favored SDA. Based on its review of all of the factors, the court found liability for trademark infringement and unfair competition. McGill presented several affirmative defenses, including the First Amendment, laches, fair use, and a lack of use in commerce. The court rejected each defense, finding the First Amendment not implicated, laches inapplicable, fair use precluded due to McGill’s use of the mark as a trademark, and use in commerce satisfied through the mark’s use on the Internet because “the Internet is generally an instrumentality of interstate commerce.” The court denied summary judgment on SDA’s dilution and cybersquatting claims, finding that SDA did not sufficiently address either claim in its motion.