Intellectual Property Law

Upon This Mark I Will Build My Church: Religious Sects As Trademarks

By Marty Schwimmer

Plaintiff owns registrations for REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS. Defendant refers to itself as a 'restoration branch' and uses the term "Reorganized Church of Jesus Christ of LDS: Devon Part Restoration Branch." Most of this case is straight-forward. Defendant pleads abandonment as a defense and the court rejects that argument.

The interesting part is discussed on page 10: to what extent can the name of the religion serve as a trademark. The case-law appears to be uneven (and if you search for various names of sects on TESS you will find inconsistent results as to registrability).    One source of tension seems to be this: to the extent that a word is used to describe a doctrine, does the First Amendment allow the government determine that only one group may describe themselves by a term?  On the other hand, religious entities perform a variety of 'conventional' services (for example, educational, charitable and social welfare) and names of such sects come to designate single sources in the mind of the public.  This creates the potential for confusion and false endorsement from the misuse of such names.

The Court notes its inability to address 'religion-based' arguments in a trademark dispute (see footnote 3).   See further discussion of the issues in trademark protection of religious names here and here.

As an aside:  an entity named Intellectual Reserve, Inc. of Salt Lake City, which I assume is an IP-holding entity for The  Church of LDS (not related to the plaintiff in this matter), owns registration 3239919 for MORMON, and its response to a descriptiveness objection of March 31, 2003, contains an interesting history of the word.

UPDATE: Perceptive commenter Dan T. wants to understand how a trademark for REORGANIZED LATTER DAY SAINTS can co-exist with prior ownership of LATTER DAY SAINTS, a point I should have explained in the original post. The answer is: when RLDS applied for REORGANIZED LATTER DAY SAINTS, the application did receive a preliminary objection based on the earlier LDS mark, and RLDS submitted a coexistence agreement that it had executed with LDS. The objection was removed based on that agreement. Such an agreement says in effect "we don't believe that there is a likelihood of confusion, please take our word for it."

Decision Reorganized LDS

Full post as published by Trademark Blog on March 28, 2011 (boomark / email).