Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 VIRGINIA L. STOCKER AND WILLIAM L. PERRY
GENERAL CONFERENCE CORPORATION OF SEVENTH-DAY ADVENTISTS
Cancellation Nos. 17,554; 18,038
February 15, 1996
Hearing: April 25, 1994
Before Cissel, Quinn and Hohein
Administrative Trademark Judges
Dissenting Opinion: Hohein
*20 Turning to the issue of genericness, I disagree with the majority that petitioners have failed to meet their burden of showing, by a preponderance of the evidence, that the designation "SEVENTH-DAY ADVENTIST" is a generic term for religious observances, missionary services and publications of the kinds offered by respondent. While, as the majority points out, there seemingly are no prior published Board decisions concerning the genericness of names of religions, other tribunals have faced the type of question posed by this case. Although only one reported case includes a request for cancellation of a registration of a mark asserted to be the generic name of a religious group, [FN2] the litigation context in which the genericness issue arises should have no bearing upon the proper standard for establishing genericness and, hence, whether the terminology in question is generic. The fact that proceedings raising a claim of genericness have generally been infringement actions brought by a mother church to enjoin a splinter church or group from using a name asserted to be confusingly similar to that of the mother church, rather than suits by the splinter church or group to cancel a registration for a mark owned by the mother church, affects only the issue of which party bears the burden of proof (i.e., the ultimate burden of persuasion) that a designation is generic, but it otherwise should make no difference in the result. That is, whether genericness is raised by the splinter church or group as an affirmative defense to a suit by the mother church for injunctive relief or is instead asserted by the splinter church or group in either a declaratory judgment action against the mother church or in a petition for cancellation of the registration of the name used by the mother church, the same test for genericness should be involved [FN3] and must be satisfied in order for the party claiming that the name is generic for religious activities and/or publications pertaining thereto to prevail.
Petitioners, as the majority correctly points out, bear the burden of proving by a preponderance of the evidence that the designation "SEVENTH-DAY ADVENTIST" is in fact a generic term for the religious observances, missionary services and religious publications set forth in respondent's registration. Moreover, in light of the provisions of Section 7(b) of the Trademark Act, the registration, which issued on the Principal Register, is presumed valid and, as noted by the majority, such validity includes a presumption that the subject matter thereof is not generic in relation to the goods or services listed in the registration. [FN4] Although the majority, citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.Cir.1986), also states that "[a] term is generic if it names the class of the goods or services to which it is applied," the majority expresses some uneasiness with a straightforward application of genericness principles to terminology employed in a religious context. In particular, the majority seizes upon dicta in several cases which found religious designations to be generic to speculate that the results therein would have been different "had the parties' roles been reversed and cancellation of a registered mark had been sought." I doubt, however, that in the specific cases mentioned by the majority, a difference in which party has the burden of proving genericness and/or the statutory presumption of validity attached to the presence of a Principal Register registration would change the results with respect to the particular names actually in issue, given the facts established at trial and the reasoning expressed by the courts.
*21 Nevertheless, notwithstanding the majority's discomfort in applying traditional trademark law principles to a case such as this one, and while the reported decisions dealing with conflicts over religious designations and/or church names plainly contain overtones reflecting First Amendment concerns with the free exercise of a religion, it seems to me that, when dealing with names or other designations used by religious institutions and/or adherents to a religion, the proper standard for evaluating whether the terminology in question is generic for certain goods or services should be the same test as that which is utilized in commercial settings. Specifically, as noted by the Board in In re Leatherman Tool Group Inc., 32 USPQ2d 1443, 1449 (TTAB 1994):
The test for determining whether a designation is generic, as applied to the goods [or services] set forth in an application or registration, turns upon how the term is perceived by the relevant public. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552-53 (Fed.Cir.1991) and cases cited therein at 1553. Such perception is the primary consideration in a determination of genericness. See Loglan Institute Inc. v. Logical Language Group Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1532 (Fed.Cir.1992). As Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3), makes clear, "[a] ... mark shall not be deemed to be the generic name of goods [or services] solely because such mark is also used as a name to identify a unique product [or service]"; instead, "[t]he primary significance of the ... mark to the relevant public rather than purchaser motivation shall be the test for determining whether the ... mark [is or] has become the generic name of the goods [or service] on or in connection with which it has been used." Consequently, if the designation sought to be registered is understood by the relevant public primarily to refer to the class or genus of goods at issue, the term is generic. See H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., supra. Evidence of the relevant public's understanding of a term may be obtained from any competent source, including newspapers, magazines, dictionaries, catalogs and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed.Cir.1985).
Applying the above test, I agree with petitioners that, upon consideration of the entire record, the designation "SEVENTH-DAY ADVENTIST" is a generic term for respondent's religious publications, observances and missionary services. The evidence indicates that the primary significance of such designation to the relevant public is to name adjectivally a particular class or category of religious beliefs which, taken together, constitute the religion known nominatively as Seventh-Day Adventism. [FN5]
*22 As a starting point for analysis of the factual record, this case is analogous in significant respects to the situation in Loglan Institute Inc. v. Logical Language Group Inc., 962 F.2d 1038, 22 USPQ2d 1531 (Fed.Cir.1992). Our principal reviewing court in that case upheld the Board's holding, in a cancellation proceeding, that the term "LOGLAN," which was registered for goods identified as "dictionaries and grammars," was generic. Specifically, as noted by the court, the Board ordered cancellation of the registration "on the ground that Loglan 'is a generic designation identifying a language rather than a trademark to indicate the source of the goods.' " 22 USPQ2d at 1532. In reviewing the Board's holding, the court stated that:
The parties do not dispute that if Loglan is used generically to designate a language, the term cannot be registered as a trademark for "dictionaries and grammars" any more than English can be registered for a dictionary. That Loglan is not as well known as English is immaterial. Because a language is not "goods" or "services" under the Act, 15 U.S.C. § 1127 ..., a name originated for a new language is inherently not registrable for the language. By the same token, a generic name of a language alone cannot function as a trademark to indicate origin of a dictionary describing that language. Thus, our determination hinges on whether the Board was correct in concluding that the term Loglan is, "a generic designation identifying a language."
Id. Similarly, since a religion itself is neither "goods" nor "services" within the statutory framework of the Lanham Act, a name originated for a new religion, including the adjectival form thereof, is inherently unregistrable for the religion inasmuch as it cannot function either as a trademark for publications pertaining to the religion or as a service mark for religious observances and missionary services based upon the religion. The preponderance of the evidence in this case shows that "Seventh-Day Adventism" is the name for a new religion which was in existence by no later than 1850 and was formally organized as early as the 1860s. The adjectival form of such name, "SEVENTH-DAY ADVENTIST," is thus a generic designation for religious publications, observances and missionary services grounded on the doctrines that form the basis of Seventh-Day Adventism.
Preliminarily, as noted by the majority, there is the issue of whether the finding, in a prior civil action involving respondent, that the words "Seventh-Day Adventist" are generic and not entitled to trademark protection constitutes issue preclusion (collateral estoppel) in these proceedings. Respondent, as the plaintiff in Case No. CV 87-8113 MRP, sought injunctive and monetary relief in the U.S. District Court for the Central District of California against Seventh-day Adventist Kinship, International, Inc. ("Kinship"), which the district court described as "a mutual support group for gay and lesbian Seventh-day Adventists," on account of "Kinship's use of the name 'Seventh-day Adventist' and its acronym 'SDA'." (Slip op. at 1.) Among other claims, respondent asserted that Kinship's use of the name "Seventh-day Adventist" constituted trademark infringement of its federally registered mark "SEVENTH-DAY ADVENTIST," which is the subject of the registration involved herein. Kinship, while claiming that there was no likelihood of confusion, raised and lost on the defenses of fair use, laches and unclean hands (since each was found to be inapplicable), but prevailed on its affirmative defense that the designation "SEVENTH-DAY ADVENTIST" is generic because it refers to the name of a religion.
*23 In particular, the district court, properly stating that the relevant test for genericness under Section 14(3) of the Trademark Act "is what the 'primary significance of the registered trademark [is] to the relevant public' " and correctly noting that such test "was adopted by statute as part of the Trademark Clarification Act of 1984" (slip op. at 12), made the following findings of fact: [FN6]
The parties stipulated that the basic tenets of the religion practiced by the Seventh-day Adventist Church were established by 1850, and that no formal organizational structure was established until 1860. The name "Seventh-day Adventist" was officially adopted by the Battle Creek Conference in 1860. Prior to that time, Seventh-day Adventists were known by a variety of names.... But the name "Seventh-day Adventist" was clearly in use prior to its adoption at the Battle Creek Conference.... The Court finds, therefore, that Seventh-day Adventism, the religion, pre-existed the Seventh-day Adventist Church.
This Court is persuaded that the term "Seventh-day Adventist" has a dual meaning: it refers not only to the Church, but to adherents of the religion of Seventh-day Adventism. The American Heritage Dictionay of the English Language (1969) defines "Seventh-day Adventist" as "[a] member of a sect of Adventism distinguished chiefly for its observance of the Sabbath on Saturday." Id. at 1186. Although not determinative, the Court finds it significant that the term "Seventh-day Adventist" appears in a standard American language dictionary. The use of the name "Seventh-day Adventist" by at least two breakaway churches, The Seventh-day Adventist Church, Reform Movement, and the Davidian Seventh-day Adventists Association, without opposition by the General Conference [Corporation of Seventh-day Advenstists] also tends to support the view that the term "Seventh-day Adventist" has significance other than to indicate membership in the mother church. More importantly, there is no term that adequately describes an adherent to the religion of Seventh-day Adventism, other than "Seventh-day Adventist"; the only possible alternative would be "Adventist," and that term is too broad.
(Slip op. at 13-14.) The district court, in view thereof, further found that "Kinship is entitled to use the term 'Seventh-day Adventist' to identify the religion of the group's membership" and held that, "as used by ... Kinship, the terms 'Seventh-day Adventist,' and its acronym 'SDA' are generic, and are not entitled to trademark protection." (Slip op. at 15.)
The majority, in discussing the Board's February 26, 1992 denial of petitioners' motion for summary judgment, categorically states that, "lest there be any doubt on this point, we agree with the prior Board panel that issue preclusion does not apply here." [FN7] However, as pointed out in the prior panel's decision, it was respondent who requested, pursuant to Trademark Rule 2.117(a), [FN8] to suspend proceedings herein pending disposition of the civil action it had brought against Kinship because the question of whether its "SEVENTH-DAY ADVENTIST" mark is generic was also an issue in the civil action. Suspension was granted and petitioners, after the district court rendered its decision, moved for summary judgment on the genericness claim. Respondent opposed the motion, contending (in a striking change of position) that the district court's finding the designation "Seventh-day Adventist" to be generic for a religion was not applicable to these proceedings.
*24 Although the prior panel agreed with respondent, reasoning that "[t]he decision of the District Court did not touch on the issue of whether 'Seventh-day Adventist' is generic for ... goods or services, and therefore we cannot accord that decision any collateral estoppel effect insofar as the present proceedings are concerned," [FN9] it seems to me that a compelling argument can be made that in holding "Seventh-day Adventist" to be a generic name for a religion, the district court essentially decided the genericness issue in these proceedings. Clearly, under the rationale expressed in Loglan, the holding that "Seventh-day Adventist" generically names the religion practiced by Kinship's members is tantamount to a finding that such designation is generic for the religious observances, missionary services and religious publications which form an integral part of the practice of Seventh-day Adventism. To state the obvious, the members of Kinship who attend "Seventh-day Adventist" religious observances, participate in "Seventh-day Adventist" missionary services, and/or read "Seventh-day Adventist" publications are not going to encounter in such activities any religion other than that of Seventh-day Adventism. Kinship's members, like other adherents to that particular religion, are practicing Seventh-day Adventists and the practice of such religion necessarily extends to religious observances, missionary services and publications customarily associated with the expression and free exercise of that religion. It thus would seem to be too fine a distinction in these circumstances to say that what was actually litigated in and decided by the district court was only the narrow issue of the genericness of a designation for a religion, particularly when all of the other requisite elements for application of issue preclusion [FN10] have unquestionably been satisfied. [FN11] At the very least, the district court's finding that "Seventh-day Adventist" is a generic name for a religion and is not entitled to trademark protection is strong evidence of the genericness of the designation "SEVENTH-DAY ADVENTIST" when used in connection with the religious publications, observances and missionary services set forth in respondent's involved registration.
While, as the majority notes, the relevant public is not easy to define in these proceedings, I think that in embracing Dr. Smith's testimony, the majority too narrowly adopts the view that "the relevant public here comprises Christians and, more specifically, Adventist Christians (that is, those who believe in the nearness of the second coming of Christ)." Seventh-day Adventism, like most Protestant denominations, is a proselytizing religion. It seeks converts from all faiths and from anyone else who would be interested in its teachings about God and Jesus Christ. Consequently, while most of the persons who come into contact with respondent's religious observances, missionary services and religious publications will no doubt be members of respondent's parent entity, the General Conference of Seventh-day Adventists ("General Conference"), since it is by far the largest Adventist group, I think that the relevant public should be viewed as encompassing the general public and not just Christians or Adventist Christians. By so restricting its focus, I believe that the majority has been led astray since it is understandable that members of the General Conference would perhaps regard "SEVENTH-DAY ADVENTIST" as signifying religious materials and activities which emanate from their mother church.
Evidentiary Record and Testimonial Evidence
*25 As stated previously, the preponderance of the evidence herein establishes to my satisfaction that, to the relevant public, the primary significance of the designation "SEVENTH-DAY ADVENTIST" is that of a class or category of religious observances, missionary services and publications which are based upon the tenets of the Seventh-day Adventist religion. Petitioners' undisputed testimony reveals that they are Seventh-day Adventists; that is, they are adherents to the religion of Seventh-day Adventism. Both Mr. Perry and Ms. Stocker belong to churches which are constituents of the General Conference, although they are also members of The Rolling Hills Seventh-day Adventist Church of Mt. Dora, Florida, which significantly is not a constituent church of the General Conference. Moreover, as noted by the majority, petitioners "are involved in the Hartland Institute which, according to Mr. Perry, is 'an independent Seventh-day Adventist ministry,' and which uses 'Seventh-day Adventist' without the approval of either the General Conference or [respondent]." Likewise, as testified to by Ms. Stocker, "[a]ll Seventh-day Adventist independent ministries use the name Seventh-day Adventist more or less" even though she "know[s] of no independent ministry that has express written approval to use the name."
Similar testimony was presented by individuals belonging to other splinter groups or churches. Specifically, Mr. Adair of the General Association of Davidian Seventh-day Adventists described his group as "a separate religious association" which is "more like an independent ministry within the church." Mr. Hibbert of the Davidian Seventh-day Adventists indicated that such group is essentially a "layman's ministry" which "believe[s] and teach[es] all the fundamental doctrines of the Seventh-day Adventist Church," while Messrs. Burec and Sas belong to a group or church known as the Seventh Day Adventist Reform Movement.
The proper significance of such testimony lies in the fact that uses of the designation "SEVENTH-DAY ADVENTIST" in the names of ministries and other groups independent of the General Conference supports the view that such designation has a meaning to the relevant public other than merely indicating membership or affiliation with the mother church. Although the majority categorizes such usages as "de minimis" and maintains that "the testimony is revealing in that the deponents used 'Seventh-day Adventist' to identify the Mother Church to which they and others belong," the extent of such individual usages has minimal bearing where, as here, the critical fact is that the record shows that there are several other ministries and groups which, without objection from respondent, freely use the designation "SEVENTH-DAY ADVENTIST," in the very same manner as do respondent and the General Conference, as the generic name of the religion practiced by their members. In an analogous case, Christian Science Board of Directors of the First Church of Christ, Scientist v. Evans, 520 A.2d 1347, 1352, 2 USPQ2d 1093, 1096 (N.J.1987), the court majority, in concluding that the term "Christian Science Church" is generic for church services in which the Christian Science religion is practiced and that such term is thus not entitled to trademark protection, pointed out that (emphasis added):
*26 The fact that defendants seek here to use the name "Christian Science Church" now, after plaintiffs have used the phrase with little competition for a long period, makes no difference. 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.
Furthermore, while the majority herein quotes extensively from the "General Conference Working Policy" regarding the trademark guidelines established for respondent by the General Conference in the early 1980s, the record is devoid of any indication that such guidelines have been successfully enforced against any splinter churches, ministries or other groups which practice Seventh-day Adventism. Although the majority also relies heavily on the expert testimony presented by Dr. Smith as lending "credence to our view that the relevant public will perceive SEVENTH-DAY ADVENTIST as identifying a source or origin of the religious publications and services in issue," Dr. Smith's factual assertions, [FN12] as opposed to his academic opinion on the issue of genericness, [FN13] at best demonstrate only that the relevant public primarily recognizes the General Conference (which apparently is unofficially known as the "Seventh-day Adventist Church") simply as the largest or principal sect of Seventh-day Adventists due to the fact that, for over one hundred years, it is practically the only group which has published materials and conducted church services based upon the doctrines which constitute the religion of Seventh-day Adventism.
The mere fact, however, that the General Conference is regarded by the relevant public as essentially being synonymous with the practice of Seventh-day Adventism in the United States does not mean that respondent necessarily possesses proprietary rights in the designation "SEVENTH-DAY ADVENTIST". As noted by the court majority in Evans:
Plaintiffs demonstrated before the trial court that the Christian Science church organization centered in Boston is referred to, by itself and by the public, as the "Christian Science Church." It is natural that this usage would develop. It is equally natural and likely that new churches in which Christian Science is practiced will be called, regardless of their corporate names or formal designations, "Christian Science Churches." This is because, as a matter of pure common sense, "Christian Science Churches" is a generic name for churches in which Christian Science is practiced.....
520 A.2d at 1352, 2 USPQ2d at 1096-97. By the same token, "SEVENTH-DAY ADVENTIST" has adequately been shown to be a generic name for respondent's religious publications, observances and missionary services since they each have as their subject matter the doctrines of Seventh-day Adventism. Any recognition or association by the general public of such goods and services with respondent (or, more likely, its parent entity, the General Conference) is, by longstanding authority, no more than a de facto secondary meaning, which in legal effect can neither confer nor maintain trademark or service mark rights in the designation "SEVENTH-DAY ADVENTIST". See, e.g., J. Kohnstam, Ltd. v. Louis Marx & Co., Inc., 280 F.2d 437, 126 USPQ 362, 364 (CCPA 1960); Schulmerich Electronics, Inc. v. J.C. Deagan, Inc., 202 F.2d 772, 97 USPQ 141, 145-46 (CCPA 1953); and Kellogg Co. v. National Biscuit Co., 385 U.S. 111, 39 USPQ 296, 299 (1938).
*27 The representative dictionary excerpts quoted by the majority define the words "Seventh-day Adventist" as a member of a sect of, or a believer in, Adventism and define the term "Adventist" as one who belongs to, or believes in the doctrines expounded by, any of various denominations which emphasize that both the second coming of Christ and the end of the world are near at hand. Such evidence, contrary to the majority's viewpoint, is indicative of the genericness of the designation "SEVENTH-DAY ADVENTIST" since it shows that, to the relevant public, the primary significance of the designation is to connote an adherent to or sect follower of certain essential beliefs which make up the particular religion known solely as Seventh-day Adventism. [FN14] Interestingly, while the majority readily concedes that the dictionary evidence supports a finding that "the generic term for the religion is 'Adventist' or 'Adventism')," the record additionally and plainly discloses that, as applied to respondent's goods and services, such terminology is much too broad. The reason this is the case is that the core doctrines or basic tenets which comprise the religion of Seventh-day Adventism encompass not only beliefs in the imminent second coming of Christ and the nearness of the end of the world, which are beliefs common to any Adventist creed, but also include an essential belief in the seventh day of the week--Saturday--as the Sabbath. [FN15] The dictionary definitions, when considered in conjunction with what the record discloses are the fundamental elements of Seventh-day Adventism, clearly demonstrate that the sole designation which adequately describes adherents to and believers in that religion is "SEVENTH-DAY ADVENTIST". Thus, such designation is generic for publications, observances and missionary services pertaining to the religion of Seventh-day Adventism.
The encyclopedia evidence likewise supports the above conclusion. In fact, the majority admits that "'Adventism,' as shown by the dictionary and encyclopedia evidence, is the name given to a core of beliefs, most significantly, a belief in the nearness of the second coming of Christ." While, in particular, the majority finds that the encyclopedia excerpts "identify Seventh-day Adventism as just one, albeit the largest and most significant by far, of the branches or denominations of Adventism," the record also clearly reveals that not all Adventists are Seventh-day Adventists. Nevertheless, the majority further finds that "the encyclopedia evidence supports our view that Adventist (or Adventism) is the generic name of the category of religion, while Seventh-day Adventist is a trademark/service mark identifying a specific origin or source of products and services within that category."
It is plain from the encyclopedia evidence, however, that Seventh-day Adventism is not just "one branch of Adventism," as the majority states. Merely because all Adventist groups share a core belief in the nearness of the second coming of Christ does not mean that "various differences over doctrinal interpretations of the nature of the millennium, the nature of man, the ministry of Christ, the return of the Jews, the Sabbath, and spiritual gifts," as the majority puts it, are insignificant or trivial. The various Adventist denominations, and their associated acts of worship, missionary ministries, and/or spiritual publications, are simply not fungible, given their doctrinal differences in basic emphasis. In consequence thereof, one Adventist creed is plainly not the same as, nor a substitute for or reasonable approximation of, another Adventist faith.
*28 Instead, as the encyclopedia and other evidence of record shows, it is the designation "SEVENTH-DAY ADVENTIST" which is the only terminology which names the particular religion practiced by the largest and best known group of Adventists. [FN16] No other alternative name in fact exists. It is impossible, therefore, to describe or otherwise talk about such religion without using, as the generic term therefor, the designation "SEVENTH-DAY ADVENTIST". See Primal Feeling Center of New England, Inc. v. Janov, 201 USPQ 44, 50 (TTAB 1978) [[phrase "PRIMAL THERAPY," registered for "psychotherapeutic services," held generic], cited in Evans, 52??Missing Text?? A.2d at 1352 and 2 USPQ2d at 1096. "Adventist," while clearly a generic term, is an overbroad and hence insufficient generic description for the specific set of beliefs constituting the religion practiced not only by certain church congregations affiliated with the General Conference and respondent, but also by petitioners and others independently of the General Conference and respondent.
Accordingly, because no designation other than "SEVENTH-DAY ADVENTIST" adequately describes the particular religion which forms the subject matter of the publications, observances and missionary services involved herein, and because petitioners, as adherents to that religion, share the right to so refer to their religion, respondent cannot be permitted--despite the large size and attendant influence of the General Conference--to maintain a registration for the name by which the religion is known generically to the relevant public. Stated otherwise, the designation "SEVENTH-DAY ADVENTIST" primarily signifies a category, class or "branch" of religious publications, observances and missionary services; it does not identify and distinguish their source.
The excerpts from other printed publications, along with representative samples of respondent's various books, periodicals, bulletins and other literature, all contain references in which the designation "SEVENTH-DAY ADVENTIST" is used to identify the religion practiced by congregations affiliated with the General Conference and respondent. While the majority finds such evidence to be "replete with uses of 'Seventh-day Adventist' to identify the Mother Church, that is, the Seventh-day Adventist Church administered by the General Conference," and it indeed is the case that the phrase "Seventh-day Adventist Church" is often used as an unofficial designation for the particular religious denomination governed by the General Conference, it is also clear that the words "Seventh-day Adventist" primarily signify the religion practiced by members of the mother church and are so understood by the relevant public.
Such evidence, concededly, is by no means definitive. The difficulty it presents arises from the fact that recommended trademark and service mark usage typically dictates that a mark should be used in the manner of an adjective and that it should be capitalized or otherwise set apart from a generic term for particular goods and services. Such usage, however, is of limited practical assistance in these proceedings. This is due to the fact that in the English language, the names of religions are treated as proper nouns and adjectives rather than as common nouns and adjectives. Hence, in accordance with standard English usage, the names of religions and their adjectival forms are always capitalized. Consequently, when used in the phrase "Seventh-day Adventist Church," the words "Seventh-day Adventist" may appear to some to have the look and feel of a mark, but they actually function to designate the religion associated with the principal governing organization of that particular religion.
*29 The third-party registrations offered by respondent are also of limited evidentiary value. Nevertheless, they are interesting to the extent that they show that at least some religious organizations have acknowledged, by virtue of disclaimers, that as applied to missionary services and/or publications, they possess no proprietary rights in the name of the religion (e.g., "Presbyterian") practiced by their members because, to their adherents and members of the general public alike, such name is a generic term. In addition, the survey evidence presented by respondent, while by no means dispositive, tends to indicate that the general public is familiar with the name "Seventh-day Adventists" as chiefly denoting adherents to, or those who belong to a church or group which practices, a particular religion which observes Saturday as their Sabbath. Such evidence is consistent with the view that the designation "SEVENTH-DAY ADVENTIST" primarily signifies the name of a religion to the relevant public.
Trademark Clarification Act of 1984
As a final consideration, a brief discussion is in order of the Trademark Clarification Act of 1984, Pub.L. 98-??Missing Text?? (98 Stat. 3335), which among other things amended, in pertinent part, former Section 14(c) of the Trademark Act of 1946 to provide, as set forth in 15 U.S.C. § 1064(3), that:
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.
The majority, except for a passing reference (in footnote 10) to "the hearings on the 1984 amendments to the Act," never mentions the Trademark Clarification Act of 1984. Instead, the majority quotes certain language pertaining thereto, as set forth in In re Montrachet S.A., 878 F.2d 375, 11 USPQ2d 1393, 1395 (Fed.Cir.1989), [FN17] apparently to support the proposition that the "single source" or uniqueness of respondent's goods and services [FN18] justifies the continued registration of the designation "SEVENTH-DAY ADVENTIST". Such reliance, however, is misplaced for several reasons, starting with the fact that these proceedings do not involve a situation where what originally was unquestionably a valid mark at the time of its registration later becomes generic through improper usage.
By way of background, it should be noted in this regard that, while having its impetus as a private bill which was designed to resurrect the trademark status of the designation "MONOPOLY" as applied to a real estate board game, the broader purpose behind the Trademark Clarification Act of 1984 was to reject purchaser motivation as the test for genericness. Instead, as accurately pointed out by the court majority in Evans:
*30 The [statutory] amendments addressed the problem of "dual-function" marks--marks that may serve to identify both a product and its source..... It is clear that the Lanham Act was amended in response to the Ninth Circuit decision in Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296, 305 [204 USPQ 978, 985] (1979), after remand, 684 F.2d 1316 [216 USPQ 588] (1982), cert. denied sub nom. CPG Products Corp. v. Anti-Monopoly, Inc., 459 U.S. 1227 ..., reh'g denied, 460 U.S. 1104 ... (1983).
In Anti-Monopoly the court held that the registered trademark "Monopoly" had become the generic name for real estate board games. In reaching that conclusion the court deviated from the previously well-recognized test that focused on the primary significance of the term to the consuming public, and adopted instead a "motivation" test ... which looked essentially to the reasons the consumer bought the product. Based on that test and because "Monopoly" served to identify the product--a real estate board game--the court held that "Monopoly" had lost its trademark status, i.e., it had become generic.
The Anti-Monopoly decision created an uproar among commentators and practitioners..... Congress responded by amending the Lanham Act to make clear that trademarks and service marks may distinguish unique products and products whose source is unknown.... The legislation also provided that registered marks will not be deemed to have become common descriptive (generic) names of goods or services solely because they are also used to identify a unique product or service..... Congress rejected the Ninth Circuit approach out of hand and restored the "primary significance" test. Significantly, Congress emphasized that the amending legislation was designed to clarify the test for determining whether a registered mark has become the common descriptive name of an article or service--that is, has become generic.....
520 A.2d at 1354-55, 2 USPQ2d at 1098-99. It is especially important to note that the court majority in Evans went on to point out that (emphasis added):
The amendments were not intended to change existing trademark law. Among the many doctrines left securely in place was the basic principle that no producer may usurp a generic term..... The legislation recognized that there are two types of generic words or terms: those that are inherently generic, and those that originated as trademarks but through usage suffered the loss of their distinctive sense, characteristic, or meaning..... The Lanham Act amendments dealt only with the latter.
520 A.2d at 1355, 2 USPQ2d at 1099.
It is clear from the record that the designation "SEVENTH-DAY ADVENTIST" falls in the former category instead of the latter. Specifically, as mentioned earlier, the record shows that by no later than 1850, "Seventh-day Adventism" was established as the name of a new religion which was formally organized by the 1860s. Although the early adherents thereto were known by several different names, including "Seventh-day Adventists," it is plain that such name was in use to refer to followers of Seventh-day Adventism prior to the formal organization of the religion in the form of its governing administrative body, the General Conference. Thus, because the Seventh-day Adventist religion pre-existed the formation of the Seventh-day Adventist Church (as the General Conference is often informally referred to), it is clear that these proceedings involve a designation which was inherently generic rather than one which initially was a valid mark. [FN19] This clearly is not a situation of a once valid mark which, through third-party or other usage, has become a generic term for the goods and/or services it formerly identified and distinguished as to source.
*31 Instead, where, as here, the primary significance of the registered term names a particular religion, the term is generic for the publications, observances and missionary services customarily associated with the expression of that religion. Accordingly, notwithstanding any de facto secondary meaning, such term is not entitled to remain registered. Although it is undeniable that the publications and religious services emanating from a specific denomination, such as the General Conference, are unique and distinguishable from those of other denominations, the reason therefor is that each religious denomination, while often sharing some of the same basic beliefs as other groups, fundamentally has its own irreducible set of principles, tenets or precepts which collectively make the religion it offers one of a kind. Thus, when a particular church publishes books and renders services with recognizable characteristics of the religion guiding the church, that does not convert the name of the religion into a designation of source for the church's publications and religious activities. The name of the religion, as applied to publications and religious services based upon the religion, remains a generic designation which all adherents thereto, as well as other members of the general public, are free to use to describe the religion. Such name is simply not the property of the largest organized group of practitioners of the religion, even if the general public, due to the happenstance that the largest group usually is the most prominent or best known, associates that group with the religion.
Lastly, to the extent that the designation "SEVENTH-DAY ADVENTIST" may arguably be said to have a dual function or meaning, such duality lies, as the court in Kinship found and the record herein supports, in the fact that "it refers not only to the [Mother] Church, but to adherents of the religion of Seventh-day Adventism." (Slip op. at 14.) The record, as stated previously in this opinion, shows that the designation "SEVENTH-DAY ADVENTIST" has significance other than to indicate membership or affiliation with the largest group of practitioners of a particular religion. Indeed, the record establishes that the primary significance of such term is to designate generically the particular religion practiced by all adherents to the faith known as Seventh-day Adventism, and not just those who exclusively belong to or attend churches affiliated with the General Conference.
Petitioners have proven, by a preponderance of the evidence, that the situation herein involves an improperly issued registration for a designation which clearly, from virtually the time of its inception and for more than a century before its registration by respondent, has been a generic term. In particular, the findings of the district court in the Kinship case, together with the testimony, dictionary definitions, encyclopedia articles and various other publications of record, establish that the designation "SEVENTH-DAY ADVENTIST" primarily signifies a category or class of religion. As such, under the authority of the Loglan and Evans cases, it is generic for the kinds of publications, observances and/or missionary services which are customarily associated with the expression or practice of that religion, including those provided by respondent and the General Conference. In fact, the record demonstrates that the designation "SEVENTH-DAY ADVENTIST" has been used in the names of other groups and ministries which practice the religion of Seventh-day Adventism independently of, and without successful objection by, respondent and the General Conference. More importantly, the record shows that no alternative name exists which adequately describes an adherent to, or any of various publications, observances and missionary services based upon, the core teachings and beliefs which collectively constitute the religion of Seventh-day Adventism. By contrast, the term "Adventist," which the majority readily concedes is generic for respondent's goods and services, is shown by the record to be too broad.
*32 Furthermore, the concerns which led to enactment of the Trademark Clarification Act of 1984 are simply not present in these proceedings. The Act was not intended to change existing trademark law and the concepts governing genericness, other than to reject the purchaser motivation test formulated by the Ninth Circuit in the Anti-Monopoly case and thereby make uniform the longstanding rule that the primary significance of a term to the relevant public is the proper standard for determining whether a term is generic. Instead, the Act was designed to deal with situations where a term, although plainly a trademark or service mark at its inception and/or when it was registered, is alleged to have become generic through use in connection with unique (that is, one of a kind) products or services emanating from a single source.
Here, the record satisfactorily demonstrates that the designation "SEVENTH-DAY ADVENTIST" was a generic term, describing a unique set of basic religious beliefs, prior to its adoption and use by the General Conference and long before its registration by respondent. Moreover, merely because the relevant public happens in certain contexts to associate such designation with the General Conference, due to its being by far the largest and most significant group of those practicing the religion of Seventh-day Adventism, does not mean that the sole name by which the particular religion is known to the relevant public also becomes a source indicator for publications and services which, while emanating from the General Conference and/or respondent, are based upon or have as their subject matter the core doctrines that comprise the religion. For the majority to conclude otherwise is to ignore the fact that it is the specific religious content of respondent's publications, observances and missionary services which makes them unique. There is simply nothing, however, which is unique about religious publications, observances and missionary services in general since such goods and services are common to all Protestant religions. It is only the particular religion itself that differentiates such goods and services. Like other names of familiar religious denominations which have been recognized or considered to be generic, such as "Christian Science" in Evans and both "Methodist" and "Episcopal" in Purcell v. Summers, 145 F.2d 979, 988 (4th Cir.1944), the designation "SEVENTH-DAY ADVENTIST" primarily signifies the name of a religion to the relevant public. It is therefore a generic term for respondent's goods and services inasmuch as it primarily signifies a category or class of publications, observances and missionary services which have such religion as their subject matter.
Accordingly, because petitioners have met their burden of proof, I would grant the petitions for cancellation on the ground that the designation "SEVENTH-DAY ADVENTIST" is generic for respondent's religious publications, religious observances and missionary services.
FN1. Sections 1(a)(1)(A) and 1(b)(1)(A), besides respectively requiring, among other things, that an application contain a verified statement that the declarant believes that the applicant is the owner of the mark sought to be registered or is entitled to use such mark in commerce, require in each case a verified statement in the application that the person making the verification believes that "no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person cause confusion, or to cause mistake, or to deceive".
FN2. See Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 35 USPQ2d 1342, 1344-45 (9th Cir.1995). In this regard, Section 37 of the Trademark Act empowers a federal court as follows (emphasis added):
In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action.....
FN3. The test, of course, should be applied with the same degree of sensitivity and circumspection to religious designations as is the case with a genericness determination in any other context, such as names for commercial products and services.
FN4. The evidentiary presumption that a registration is valid is, however, a prima facie one and thus may be rebutted by evidence from the party seeking cancellation. See, e.g., Dan Robins & Assoc., Inc. v. Questor Corp., 599 F.2d 109, 202 USPQ 100, 105 (CCPA 1979).
FN5. Counsel for respondent candidly and admirably conceded at the oral hearing in this case that trademark law recognizes the existence of generic adjectives and prohibits their registration, just as it more commonly deals with generic nouns and likewise precludes registration thereof. See, e.g., In re Pennzoil Products Co., 20 USQP2d 1753, 1758-60 (TTAB 1991) ["MULTI-VIS" is generic for multiple viscosity motor oil] and Miller Brewing Co. v. G. Heileman Brewing Co., Inc., 561 F.2d 75, 195 USPQ 281, 285 (7th Cir.1977), cert. denied, 434 U.S. 1025, 196 USPQ 592 ["The fact that 'light' is an adjective does not preclude it from being a generic or common descriptive word" as applied to beer]. Interestingly, while respondent's counsel ventured that there probably are even such things as generic adverbs, the point is simply that for purposes herein, if the nominative term "SEVENTH-DAY ADVENTISM" is generic for a religion, then its adjectival form "SEVENTH-DAY ADVENTIST" is a fortiori generic, not only for the religion but also, in my view, for goods and/or services which are based upon, pertain to or otherwise have such religion as their subject matter.
FN6. As is plain from the district court's opinion, references therein to the "Seventh-day Adventist Church" mean the General Conference of Seventh-day Adventists, which is the same entity (and parent of respondent) which the majority herein refers to as the "General Conference" or "Mother Church". The district court, by way of background, also noted the following facts:
Seventh-day Adventism had its origins in the early Nineteenth Century prophecies of William Miller. Miller lectured in small towns in New York and New England, teaching that the Second Advent of Christ was imminent, that it would be a literal, visible event, and predicting that it would occur sometime between March 21, 1843 and March 21, 1844. An interchurch revival movement developed, drawing members from existing churches of various demoninations. The movement spread throughout the northeast and midwest and, by about 1840, had developed a following in larger cities of the United States. Its adherents were referred to as "Adventists" because of their belief that the Second Advent was imminent.
When Miller's prediction failed to come true, the Millerites experienced their first disappointment. Samuel Snow, a follower of Miller, began then to spread the word that Christ would come ... on October 22, 1844..... When October 22, 1844 passed uneventfully, the "Seventh Month" movement (as Snow's followers had come to be known) endured its "Great Disappointment" and the movement lost many adherents.
But some, including ... James and Ellen White, ... who became key figures in the early Seventh-day Adventist Church, remained faithful and searched for an explanation of the failed prophecy..... They believed that the Second Coming was still imminent, although most abandoned efforts to predict the date.
By 1850, although there were still differences in interpretation, the essential doctrines of what was to become known as Seventh-day Adventism had been established: 1) the Bible alone as the rule of faith and practice; 2) the Old Testament law as binding and immutable, including the Seventh-day Sabbath; 3) the imminent second coming of Christ; 4) the immortality of the soul; and 5) the doctrine of sanctuary. The first congregation of practicing Seventh-day Adventists was formed in Washington, New Hampshire in May of 1845, although there is no persuasive evidence that they called themselves that at the time.....
No formal organizational structure was established until 1860. This was in part due to the fact that the belief in the immediacy of Christ's coming made long range institutional planning seem unnecessary. Moreover, some Adventists continued to set dates for Christ's coming in 1845, 1846, 1849, and the 1850s. In September 1860, James White called a conference in Battle Creek, Michigan. The delegates at the conference selected the name "Seventh-Day Adventist" from among several by which they had come to be known. In October 1861, the Michigan Conference of Seventh-day Adventists was formed. Shortly thereafter, several other state conferences were formed.
The General Conference of Seventh-day Adventists was formed in May of 1863, marking the official organization of the Seventh-day Adventist Church. Since that time, the names "Seventh-day Adventist" and "SDA" have been used by the Seventh-day Adventist Church as the church name, and thereafter as its trade name in advertising and publishing.....
(Slip op. at 3-5.)
FN7. While no one on the present panel also served on the panel for the prior Board decision, it should be noted that because a decision denying summary judgment is interlocutory in nature, this panel is not bound by the doctrine of the law of the case to adhere automatically to the prior decision, especially when it involves an issue of first impression before the Board. As noted in 1B J. Moore, J. Lucas & T. Currier, Moore's Federal Practice ¶0.404 (2d ed. 1984) (footnotes omitted)
At the trial level, the doctrine of the law of the case is little more than a management practice to permit logical progression toward judgment. Prejudgment orders remain interlocutory and can be reconsidered at any time, but efficient disposition of the case demands that each stage of the litigation build on the last, and not afford an opportunity to reargue every previous ruling. In the end, however, the doctrine of the law of the case does not require or encourage a trial court to render a judgment erroneous in law.
Although the majority is correct that petitioners did not timely request reconsideration, pursuant to Trademark Rule 2.127(b), of the Board's denial of summary judgment, and did not specifically ask that this panel revisit such ruling at final hearing, petitioners' counsel at oral argument relied upon the Kinship case as supporting petitioners' position both factually as well as legally. Given the novelty of the genericness issue presented herein, the Board in this rare instance may properly exercise its discretion and reconsider the denial of summary judgment. The majority, despite "see[ing] no reason to do so now sua sponte," has in effect done just that by its unequivocal pronouncement that the Board's prior ruling was correct. Accordingly, I see no reason not to offer my thoughts on the question of issue preclusion.
FN8. Such rule provides that "[w]henever it shall come to the attention of the ... Board that parties to a pending case are engaged in a civil action which may be dispositive of the case, proceedings before the Board may be suspended until termination of the civil action."
FN9. It should be noted in any event that there is nothing which indicates that the judgment of the district court was on appeal or otherwise was not final, a factor which would prevent application of collateral estoppel.
FN10. See, e.g., Mother's Restaurant Inc. v. Mama's Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 397 (Fed.Cir.1983), which lists the following as essential requirements for the application of issue preclusion:
(1) the issues to be concluded are identical to those involved in the prior action; (2) in that action the issues were raised and "actually litigated"; (3) the determination of those issues in the prior action was necessary and essential to the resulting judgment; and (4) the party precluded ... was fully represented in the prior action.
FN11. Nevertheless, in light of Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1475-76 (Fed.Cir.1992), there seems to be some reluctance on the part of our principal reviewing court to uphold, on summary judgment, a finding by the Board of issue preclusion where the issue is genericness. However, in the event that an appeal of the majority's decision is taken, petitioners may, of course, elect to seek review of the Board's denial of their motion for summary judgment as part of their appeal.
FN12. While the majority, with respect to the various usages of "SEVENTH-DAY ADVENTIST" testified to by petitioners and other witnesses on their behalf, notes that "Dr. Smith acknowledged that there 'might have been some type of limited use' of 'Seventh-day Adventist' by the Seventh-day Adventist Reform Movement," his further comment, quoted by the majority, that he "would expect that today any such limited use has become virtually nonexistent" is clearly speculative and does not detract from or otherwise lessen the weight to be accorded the testimony of Messrs. Burec and Sas regarding the Seventh Day Adventist Reform Movement. Similarly, Dr. Smith's testimony that he lacks personal knowledge concerning use of the designation "SEVENTH-DAY ADVENTIST" by such small groups as the Davidians and the Shepherd's Rod does not serve to undermine the testimony offered with respect thereto by witnesses for petitioners.
FN13. As stated by the Board in Tanners' Council of America, Inc. v. Scott Paper Co., 185 USPQ 630, 637 (TTAB 1975):
[I]t is well established that the expressions of opinion by witnesses, including persons considered to be experts in a particular field on any question before the Board, is not binding upon the Board for "if such testimony were adopted without considering other aspects of the case, the effect would be to substitute the opinion of the witnesses for the ultimate decision to be reached by the Court and would therefore be improper." The Quaker Oats Company v. St. Joe Processing Company, Inc., [232 F.2d 653,] 109 USPQ 390 at 391 (CCPA, 1956)....
Consequently, the views offered by respondent's expert witness on the issue of genericness, unlike his testimony as to factual matters within his area of expertise and personal knowledge, are essentially of no probative value in this case. See Mennen Co. v. Yamanouchi Pharmaceutical Co., Ltd., 203 USPQ 302, 305 (TTAB 1979) at n. 4. In particular, there is nothing in this record to indicate that Dr. Smith is knowledgeable in trademark law or that he is otherwise familiar with and understands the appropriate application of the proper test for genericness. See In re Pennzoil Products Co., supra at 1759 Thus, while the underlying factual basis for Dr. Smith's views is entitled to consideration, his opinion as to the "primary significance of the term Seventh-day Adventist to the relevant public" can scarcely be said to add credence to the result reached by the majority.
FN14. In this regard, judicial notice may properly be taken that The Random House Dictionary of the English Language (2d ed. 1987) lists "Adventist" at 29 as a noun denoting "a member of any of certain Christian denominations that maintain that the Second Advent of Christ is imminent" and as an adjective meaning "of or pertaining to Adventists." The same dictionary also defines "Seventh-Day" at 1753 as an adjective which means: "designating certain Christian denominations that make Saturday their chief day of rest and religious observance: Seventh-Day Adventists."
FN15. It is judicially noticed that, for instance, The Random House Dictionary of the English Language (2d ed. 1987) defines "Sabbath" at 1687 as, inter alia, a noun signifying "1. the seventh day of the week, Saturday, as the day of rest and religious observance among Jews and some Christians. Ex. 20:8-11. 2. the first day of the week, Sunday, similarly observed by most Christians in commemoration of the Resurrection of Christ. 3. any special day of prayer: rest resembling the Sabbath: Friday is the Muslim Sabbath. 4. (sometimes l.c.) a period of rest".
FN16. One of the problems presented herein is that, according to the record, the source for most Seventh-day Adventist publications and services is, as a practical matter, the General Conference. While other Seventh-day Adventist groups not affiliated therewith have ministries preaching such faith, the record discloses that, especially in the case of religious publications, the General Conference is and has been virtually the only publisher of books, magazines, newsletters and other literature dealing with the Seventh-day Adventist creed. This virtual singleness of source, however, does not necessarily mean that the designation "SEVENTH-DAY ADVENTIST" functions as a source indicator. As pointed out in 2 J. McCarthy, McCarthy on Trademarks & Unfair Competition § 12.15 (3d ed. 1995) at 12-95:
During the single source period, it is difficult but possible to determine whether the name is generic or a mark. The prime question is: What does the public call this "thing"? If, to the public, the "thing" is named by the term that the seller intends as a trademark, then it is not a mark at all--it is generic. But if the public calls the "thing" by some name other than the mark, then the mark probably does function as a mark even though there is, temporarily, no one else on the market with the"thing."....
Such likewise would be true where there are or have been a few other minor sources since, in practical effect, unless those sources are or have had more than a de minimis exposure, the public essentially is aware of only a single source.
FN17. The court, in reversing the Board's finding that "MONTRACHET" was unregistrable as a generic name for cheese, was particularly careful to point out that:
It is undisputed that the term MONTRACHET originated as a designation of the source of appellant's goat cheese..... The issue is whether MONTRACHET has lost its original trademark significance; that is, whether MONTRACHET is now the ... generic name for appellant's cheese. If through usage MONTRACHET has become the ... generic name of the cheese, and is no longer an indication of source, it would no longer be entitled to trademark status, for generic names are incapable of indicating source.....
11 USPQ2d at 1394. Such case, however, is factually distinguishable from the circumstances presented by the current proceedings.
FN18. According to the majority, not only does the designation "SEVENTH-DAY ADVENTIST" function as a source indicator for such goods and services, but the mere fact "[t]hat a particular church publishes books and renders services with recognizable characteristics of the religion guiding the church does not convert the designation of source to a common or generic name."
FN19. While it should be acknowledged that Judge Pfaelzer stated in the Kinship case that "this Court would place less significance on that fact than the Evans court did" (slip op. at 13), finding instead that it was relevant "only insofar as it sheds light on the current primary significance of the term 'Seventh-day Adventist' " (slip op. at 13, 14). I concur with the approach of the court majority in Evans that it is meaningful that the concerns prompting the enactment of the Trademark Clarification Act of 1984 are simply not present in these proceedings. It was in this light that the court majority in Evans made the statement, relied upon by the majority herein, that "[p]laintiffs are not facing cancellation of a registered mark." 520 A.2d at 1355, 2 USPQ2d at 1099.