No. 18-1159

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In The

Supreme Court of the United States

———————————————————————–

THE UNIVERSAL CHURCH, INC.,

Petitioner,

v.

CALVIN TOELLNER, et al.,

Respondents.

———————————————————————–

On Petition For Writ Of Certiorari

To The United States Court Of Appeals

For The Second Circuit

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BRIEF OF THE CHURCH OF JESUS CHRIST OF LATTER-DAY SAINTS; GENERAL CONFERENCE OF THE SEVENTH-DAY ADVENTIST CHURCH; CHURCH OF GOD IN CHRIST, INC.; ORTHODOX CHURCH IN AMERICA; AND JEWISH COALITION FOR RELIGIOUS LIBERTY AS AMICI CURIAE IN SUPPORT OF PETITIONER

———————————————————————–

ALEXANDER DUSHKU

Counsel of Record

R. SHAWN GUNNARSON

KIRTON MCCONKIE

Key Bank Tower

36 South State Street, Suite 1900

Salt Lake City, Utah 84111

(801)328-3600 adushku@kmclaw.com

Counsel for Amici Curiae

================================================================

COCKLE LEGAL BRIEFS (800) 225-6964

WWW.COCKLELEGALBRIEFS.COM

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TABLE OF CONTENTS
	Page
TABLE OF AUTHORITIES ……………………………	ii
INTEREST OF AMICI CURIAE …………………….	1
SUMMARY OF ARGUMENT …………………………	2
ARGUMENT ………………………………………………..	3

I.This Case Holds National Importance for

Religious Organizations ……………………….	3
A. The Lanham Act vitally protects reli-
gious trademarks……………………………	3

B.Legally protecting the name of a reli- gious organization is an exercise of re-

ligion …………………………………………….

4

II.The Decision Below Especially Threatens the

Trademarks of Religious Organizations……

9

III.Review Is Essential to Restore the Lan-

ham Act to Its Textual Foundations and
this Court’s Established Interpretation….	11
CONCLUSION……………………………………………..	18

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TABLE OF AUTHORITIES

		Page
CASES
Assoc. of Coop. Members, Inc. v. Farmland Indus.,
Inc., 684 F.2d 1134 (5th Cir. 1982)……………………..		15
Bos. Duck Tours, LP v. Super Duck Tours, LLC,
531	F.3d 1 (1st Cir. 2008) ………………………………….	15
CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d
263	(4th Cir. 2006)……………………………………………	14
CES Pub. Corp. v. St. Regis Publications, Inc.,
531	F.2d 11 (2d Cir. 1975) …………………………………	15
Church of Scientology Int’l v. Elmira Mission of
the Church of Scientology, 794 F.2d 38 (2d Cir.
1986) ………………………………………………………………..		3
Corp. of Presiding Bishop of Church of Jesus
Christ of Latter-day Saints v. Amos, 483 U.S.
327	(1987) …………………………………………………………	5
Estate of P.D. Beckwith, Inc. v. Comm’r of Pa-
tents, 252 U.S. 538 (1920)………………………………….		15
Glover v. Ampak, Inc., 74 F.3d 57 (4th Cir. 1996) ……		13
Gomez v. United States, 490 U.S. 858 (1989) ………….		16
In re Merrill Lynch, Pierce, Fenner & Smith, Inc.,
828	F.2d 1567 (Fed. Cir. 1987) …………………………..	13
New Prime Inc. v. Oliveira, 139 S. Ct. 532 (2019) …….		13
Purcell v. Summers, 145 F.2d 979 (4th Cir. 1944)….		5, 8, 9
Reese Pub. Co. v. Hampton Int’l Commc’ns, Inc.,
620	F.2d 7 (2d Cir. 1980) …………………………………..	15

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TABLE OF AUTHORITIES—Continued
		Page
Self-Realization Fellowship Church v. Ananda
Church of Self-Realization, 59 F.3d 902 (9th
Cir. 1995) ………………………………………………………..		16
Sovereign Order of Saint John of Jerusalem, Inc.
v. Grady, 119 F.3d 1236 (6th Cir. 1997) ………………..		4
TE-TA-MA Truth Found.—Family of URI, Inc. v.
World Church of Creator, 297 F.3d 662 (7th
Cir. 2002) …………………………………………………….		9, 10
STATUTES
15 U.S.C. § 1052(f) ………………………………………………..		3
15 U.S.C. § 1064(3)……………………………………..	3, 12, 13
OTHER AUTHORITIES
Church of God in Christ, Our History: Young C.
H. Mason…………………………………………………………..		7
W. Cole Durham & Robert Smith, Religious Or-
ganizations and the Law (2017) ………………………….		4
Petition for Writ of Certiorari, Elliott v. Google
(Aug. 14, 2017) (No. 17-258), 2017 WL 3601395…….		17
Thomas R. Lee & James C. Phillips, Data-Driven
Originalism, 167 U. Penn. L. Rev. 261 (2019) ………..		12
J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition (5th ed. 2018) ………………		15
President Russell M. Nelson, The Correct Name
of the Church, Ensign, Nov. 2018……………………..		4, 7

iv

TABLE OF AUTHORITIES—Continued

Page

Steven John Olsen, Protecting Religious Identity
with American Trademark Law, 12 Chi.-Kent
J. Intell. Prop. 131 (2013)………………………………..	6, 7

Kenneth A. Plevan, The Second Circuit and the
Development of Intellectual Property Law:
The First 125 Years, 85 Fordham L. Rev. 143
(2016)……………………………………………………………..	17

David A. Simon, Register Trademarks and Keep
the Faith: Trademarks, Religion and Iden-
tity, 49 IDEA: The Intell. Prop. L. Rev. 233
(2008)…………………………………………………..	5, 6, 9, 11

The Church of Jesus Christ of Latter-day Saints,
The Doctrine & Covenants of The Church of
Jesus Christ of Latter-day Saints (2013)…………………	7

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INTEREST OF AMICI CURIAE1

Religious organizations representing millions of Americans appear on this brief. Amici are The Church of Jesus Christ of Latter-day Saints; General Confer- ence of the Seventh-day Adventist Church; Church of God in Christ, Inc.; Orthodox Church in America; and Jewish Coalition for Religious Liberty. Despite disa- greements on many points of faith, we are united in supporting robust legal protections for religious organ- izations. This includes the ability of a faith community to define its religious identity through the choice of a distinctive name and to maintain the integrity of that name against misuse through trademarking. The deci- sion below severely undermines that ability by invali- dating The Universal Church’s trademark as generic based on a legal analysis that substantially departs from the text and established understanding of the Lanham Act. Left unreviewed, the Second Circuit’s de- cision especially threatens the trademarks of religious institutions. We submit this brief to draw attention to the national importance of this case for religious or- ganizations of many faiths that face the risk of losing trademark protection unless the Court grants review.

1Counsel for all parties were timely notified of the intent to file this amicus curiae brief and all parties have consented to the filing of this brief. No counsel for any party authored this brief in whole or in part, and no person or entity other than amici and their counsel made any monetary contribution intended to fund the preparation or submission of this brief.

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SUMMARY OF ARGUMENT

The name of a church reflects the exercise of reli- gion.2 Far more deliberately chosen than a commercial trademark, that name may be the outgrowth of theol- ogy, historical considerations, or the response to divine command. That name uniquely identifies a religious community for other community members and for the general public. Protecting a church’s trademark from unpermitted or wrongful use is how a faith community safeguards the integrity of its internal communica- tions and its public reputation.

The Second Circuit’s decision poses a direct threat to the ability of many religious organizations to main- tain trademarks for their institutional names by sub- stantially departing from the text and established interpretation of the Lanham Act. The decision below committed two basic errors. Rather than applying the test of genericness prescribed by the Act, the court of appeals looked to cramped notions of historical usage alone and disregarded contemporary understanding. The court exacerbated this error by violating the anti- dissection rule—isolating single words within the reg- istered trademark rather than examining the mark as a whole. In both respects, the decision below conflicts with decisions of other circuits. Review is imperative to restore the Lanham Act to its textual moorings, so

2We use the term “church” here in the broad sense of a reli- gious denomination and its associated faith community, be it Christian, Jewish, Muslim, Hindu, or any other faith within the great tapestry of American religiosity.

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that religious organizations can enjoy the protections that Congress enacted.

ARGUMENT

I.This Case Holds National Importance for Religious Organizations.

A.The Lanham Act vitally protects reli- gious trademarks.

The question presented holds profound national importance for the religious organizations appearing here as amici curiae. For them, and for the millions of their adherents, resolving the question presented is necessary for a faith community to protect its legal identity through the tools accorded by Congress under the Lanham Act.

Under the Act, one may seek to register a trade- mark “which has become distinctive of the applicant’s goods in commerce.” 15 U.S.C. § 1052(f ) (2006). Once registered, a trademark continues to be protected un- less, among other things, it has become generic. Id.

§1064(3). To determine whether a mark is generic, “[t]he primary significance of the registered mark to the relevant public * * * shall be the test for determin- ing whether the registered mark has become * * * ge- neric.” Ibid. (emphasis added).

Religious organizations frequently rely on the Act’s trademark protections by registering their names and bringing actions against others who infringe their marks. See, e.g., Church of Scientology Int’l v. Elmira

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Mission of the Church of Scientology, 794 F.2d 38, 40– 41, 44–45 (2d Cir. 1986) (granting the Church of Scientology’s preliminary injunction against a former licensee’s use of the church’s trademarks); Sovereign Order of Saint John of Jerusalem, Inc. v. Grady, 119 F.3d 1236, 1239–41 (6th Cir. 1997) (granting a trade- mark infringement claim to a religious order whose former member founded a schismatic church and order and used the trademark holder’s mark without permission).

B.Legally protecting the name of a reli- gious organization is an exercise of re- ligion.

The name of a faith community holds enormous meaning and significance.3 A religious organization’s name expresses a faith community’s religious identity. See W. Cole Durham & Robert Smith, 4 Religious Or- ganizations and the Law § 30:62 (2017) (“The names of religious organizations are extrinsically linked to the identity of the organization.”); id. § 30:1 (“[R]eligious symbols [and] names * * * may have sacred value to the religious organizations and their believers.”). Not surprisingly, courts recognize that “[t]he name of [a]

3As the leader of one amicus religious organization recently declared, “So, what’s in a name? When it comes to the name of [a] [c]hurch, the answer is ‘Everything!’ ” President Russell M. Nel- son, The Correct Name of the Church, Ensign, Nov. 2018, at 89, https://www.lds.org/study/ensign/2018/11/sunday-morning-session/ the-correct-name-of-the-church?lang=eng (last visited April 3, 2019).

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church * * * [i]s of great value” because “members as- sociate[ ] with the name the most sacred of their per- sonal relationships and the holiest of their family traditions.” Purcell v. Summers, 145 F.2d 979, 982 (4th Cir. 1944).

A faith community’s selection, promotion, and pro- tection of its name is an important “means by which a religious community defines itself,” and religious or- ganizations must have “[t]he authority to engage in this process of self-definition.” Corp. of Presiding Bishop of Church of Jesus Christ of Latter-day Saints v. Amos, 483 U.S. 327, 342 (1987) (Brennan, J., concur- ring). “Solicitude for a church’s ability to do so reflects the idea that furtherance of the autonomy of religious organizations often furthers individual religious free- dom as well” because “[f ]or many individuals, religious activity derives meaning in large measure from partic- ipation in a larger religious community.” Ibid.

Trademark law helps religious institutions estab- lish their self-definition in the larger community. This is because “the whole identity of the religious group— its ideology, its teachings and its practices—is con- tained in an identity-indicating name or symbol.” Da- vid A. Simon, Register Trademarks and Keep the Faith: Trademarks, Religion and Identity, 49 IDEA: The In- tell. Prop. L. Rev. 233, 240 (2008). Registering a trade- mark “allows a religious group to invest its identity in a legally-controllable entity,” and “[l]egal control over the trademark therefore enables the religious organi- zation to maintain its identity.” Ibid. In other words, “[t]o a religious organization, this control allows it to

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construct and protect the representation(s) of a reli- gious name”; and “[c]ontrol of the organizational trade- mark is crucial to religious capital because the value of the mark consists of its identity.” Id. at 239–40. So the “value of a mark for a religious organization lies in the association between the ideas, values and beliefs of the organization and the mark itself.” Id. at 240.

The Lanham Act establishes a mechanism for re- ligious organizations, which “are naturally concerned with their identities,” to defend themselves against “any entity using a confusingly similar mark [that] poses a risk to that identity.” Simon, 49 IDEA: The In- tell. Prop. L. Rev. at 265. Religious organizations like the amici “us[e] [trademark] lawsuits to maintain their own identity, and thereby maintain their religious au- thenticity.” Ibid. This is to be expected because “[a] re- ligious organization has a substantial interest in protecting the good will and reputation associated with its ministry” since they “are constantly under scrutiny and deserve to be able to control what occurs under the guise of their marks.” Steven John Olsen, Protecting Religious Identity with American Trademark Law, 12 Chi.-Kent J. Intell. Prop. 131, 143 (2013).

For some faith communities, the name of a church is the product of divine mandate. For instance, origi- nally known as the “Church of God,” “in 1897, * * * the name ‘Church of God in Christ’ was revealed to Bishop [M]ason while walking along a certain street in Little

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Rock, Arkansas.”4 Another amicus also owes its name to divine revelation. In 1838, “Joseph Smith the Prophet” received divine instruction declaring that the church’s name should “be called in the last days, even The Church of Jesus Christ of Latter-day Saints.”5 And just last fall that Church’s president reminded its members that “the name of the Church is not negotia- ble” because “it is the command of the Lord.” President Russell M. Nelson, The Correct Name of the Church, Ensign, Nov. 2018, at 87.

A religious organization earns the trust of its members when they know the organization’s messages are authentic, accurate, and true. By safeguarding the integrity of institutional names, trademarks secure intra-faith trust. That trust is vital. Trademark dis- putes over a religious name “most common[ly]” involve “religious groups of similar ideological beliefs with some distinctive differences”—which is the very kind of dispute “most likely to confuse parishioners.” Olsen, 12 Chi.-Kent J. Intell. Prop. at 134.

Consider companies that provide kosher certifica- tion, for instance. They stamp their symbols on food la- bels to communicate that the food was prepared in compliance with a particular standard of kosher

4Church of God in Christ, Our History: Young C. H. Mason, http://www.cogic.org/about-company/our-history/ (last visited April 3, 2019).

5The Church of Jesus Christ of Latter-day Saints, The Doc- trine & Covenants of The Church of Jesus Christ of Latter-day Saints § 115:4 (2013), https://www.lds.org/scriptures/dc-testament/ dc/115?lang=eng (last visited April 3, 2019).

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observance. Since there are many different opinions re- garding kosher dietary requirements, the seemingly generic names of these certifying organizations have taken on great significance to kosher consumers. Words like “orthodox” or “kosher” or “rabbinical” may qualify as generic in other contexts, but in the context of kosher certification, they permit the faithful to iden- tify food that complies with their religious strictures. Organizations that utilize names and marks such as those listed above are well-known and relied on within the community. Kosher supervision agencies rigor- ously enforce the use of their marks, sending notices to companies that misuse their symbols on products, and issuing notices to Jewish communities if mislabeled products are circulating. The decision below threatens these legal protections to the extent that it precludes kosher certification organizations from using their es- tablished names and symbols. Such a result would cre- ate confusion among Jews who observe kosher dietary laws.

Trademarks also reduce public confusion. In one case, the Fourth Circuit relied on trademark law to prevent a dissenting Methodist group from using the mark of a pre-merger sect. See Purcell, 145 F.2d at 982–83. The court of appeals explained that “[a] large portion of any community is not well informed about ecclesiastical matters.” Id. at 983. Thus, “for the dissi- dent members to use the name of the old church will enable them to appear in the eyes of the community as the continuation of that church, and to make the

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united church, which is in reality the continuation of the old church, appear as an intruder.” Ibid.

II.The Decision Below Especially Threatens the Trademarks of Religious Organizations.

The Second Circuit’s decision poses a direct threat to the ability of many religious organizations to main- tain trademarks for their institutional names. Reli- gious trademarks tend to differ from non-religious ones. Religious organizations, particularly churches, often have names composed of common religious words, such as “God,” “orthodox,” or “church.” See Si- mon, 49 IDEA: The Intell. Prop. L. Rev. at 247 (“Reli- gious organizations frequently use terms of faith within their names, leaving them particularly suscep- tible to th[e] problem” “of genericness”). If courts assess the validity of a church’s trademark by dissecting a name and analyzing its constituent parts, religious trademarks would often fail the test for genericness.

Take one of the amici here, Church of God in Christ, Inc. Considered in isolation, each word of its trademark is a generic word common to many other denominations. As Judge Easterbrook explained, “[i]n the contemporary United States, variations on ‘Church of [Deity]’ are used to differentiate individual denomi- nations, not to denote the class of all religions,” which would make the name generic. TE-TA-MA Truth Found.—Family of URI, Inc. v. World Church of Crea- tor, 297 F.3d 662, 666 (7th Cir. 2002). He further ob- served:

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The list is considerable: Church of God; Church of God (Anderson, Indiana); First Church of God; Worldwide Church of God; Church of God in Christ; Assembly of God; Ko- rean Assembly of God; Church of the Naza- rene; Church of Christ; United Church of Christ; Disciples of Christ; Church of Christ, Scientist; [The] Church of Jesus Christ of Lat- ter[-d]ay Saints. There is room for extension with Church of Our Savior, Church of the Holy Spirit, Church of the Holy Trinity, Church of Jehovah, and so on. Yet all of these are recog- nizable as denominational names.

Ibid. (citation omitted). Like fingerprints consisting of lines that are indistinguishable if considered individu- ally, the countless ways of combining common faith terms “leaves ample options for other sects to distin- guish themselves and achieve separate identities.” Ibid.

Adopting the Second Circuit’s approach means that a religious trademark can be invalidated for being generic when just one of the mark’s words is generic in isolation or used by other faiths. On that mistaken test, many religious organizations could lose their trade- marks. For instance, the words “orthodox,” “Methodist,” “Evangelical,” and “Lutheran” are used by numerous religious groups. If each word of a trademark is ana- lyzed in artificial isolation, as in the decision below, a trademark with a common religious term like these could be declared generic.

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In short, allowing the Second Circuit’s generic trademark analysis to stand would have disastrous consequences for religious institutions in a way not comparable with more commercial entities. Commer- cial trademarks like Nike or Dell do not rely on com- mon terms or a word shared by similar entities. Unlike businesses, faith communities often select a name con- strained—or even mandated—by sincere religious be- lief. The decision below heightens these and other burdens that religious organizations already face when they seek trademark protection.6

III.Review Is Essential to Restore the Lanham Act to Its Textual Foundations and this Court’s Established Interpretation.

The Second Circuit’s methodology for deciding whether the trademark for The Universal Church is generic substantially departed from the text of the Lanham Act and this Court’s decisions in two im- portant respects.

First, the court of appeals disregarded the Act’s unambiguous direction to test whether a trademark

6Religious trademarks are already at a disadvantage com- pared to more commercial trademarks. See David A. Simon, Reg- ister Trademarks and Keep the Faith: Trademarks, Religion and Identity, 49 IDEA: The Intell. Prop. L. Rev. 233, 259, 260 (2008) (observing that “most religious marks are not ‘famous,’ [so] dilu- tion probably will not aid religious organizations in their quest to protect their identity” and that the “ ‘use in commerce’ require- ment is another obstacle for religious organizations seeking to protect their identities with trademark law”).

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has become generic by “[t]he primary significance of the registered mark to the relevant public.” 15 U.S.C.

§1064(3) (emphasis added). The statute removes any doubt as to the importance of this phrase by stating plainly that it “shall be the test” for genericness. Ibid. But rather than applying this test, the Second Circuit turned to expert testimony and reports on obscure the- ological texts regarding historical usage of particular words. See Pet. App. 4a (relying on respondents’ “evi- dence in the form of an expert report and testimony that the longstanding common use of the phrase ‘Uni- versal Church’ in various contexts demonstrates with- out question that the phrase has been in generic usage over two millennia to describe the Church as a whole throughout the world”) (internal quotation marks omitted). Also, the court leaned on a dictionary defini- tion with the most recent documented usage from 75 years ago. See ibid. (relying on respondents’ evidence in the form of a “definition of ‘universal’ from the Ox- ford English Dictionary”).

Millennia-old linguistic usage from obscure texts and outdated definitions, standing alone, cannot qual- ify as “the relevant public” under the Lanham Act since a dead “public” is no public at all. Without a focus on the living public, the Act’s test for generic marks would miss the phenomenon of linguistic drift—where the historical meaning of a word comes to differ signifi- cantly from contemporary understandings. See Thomas R. Lee & James C. Phillips, Data-Driven Originalism, 167 U. Penn. L. Rev. 261, 298–302 (2019), https://papers.ssrn.com/sol3/papers.cfm?abstract_id=

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3036206 (last visited April 4, 2019) (documenting how the most common meaning of “domestic violence” drifted from an insurrection sense in 1789 to the con- temporary sense of assaulting a household member).

This is not to say that evidence of a trademark’s historical usage is irrelevant. The relevant public meaning of a church’s name may be deeply informed by the long history of its use. Historical usage may be one of several factors used to demonstrate that a chal- lenged trademark is not generic. See, e.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570 (Fed. Cir. 1987) (“Evidence of the public’s under- standing of the term may be obtained from any compe- tent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, news- papers and other publications.”); Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996) (“[E]vidence may come from purchaser testimony, consumer surveys, listings and dictionaries, trade journals, newspapers and other publications.”). Of course, the relevance of historical usage of a church’s name turns on its influence on the mark’s “primary significance * * * to the relevant pub- lic.” 15 U.S.C. § 1064(3).

The Second Circuit solely relied on historical us- age at the expense of the Lanham Act’s mandatory fo- cus on “the relevant public.” In doing so, the court of appeals flouted the “fundamental canon of statutory construction that words generally should be inter- preted as taking their ordinary * * * meaning.” New Prime Inc. v. Oliveira, 139 S. Ct. 532, 539 (2019) (inter- nal quotation marks omitted). Not only did the court of

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appeals make no effort to discern what “relevant public” means in this case, it measured the validity of the petitioner’s trademark according to a different test than the one Congress mandated. Petitioner has ably shown how the Second Circuit’s atextual ap- proach creates a conflict with at least the Sixth, Sev- enth, and Eighth Circuits.7 See Pet. 15–18. This conflict places religious trademarks at particular risk since they often consist of words and phrases that con- vey a different meaning from a historical perspective than they communicate to a contemporary public.

Second, the court below also departed from this Court’s precedent by assessing the petitioner’s trade- mark one word at a time, rather than as a single whole. See Pet. App. 4a (relying on the definition of a single word in petitioner’s trademarked name and noting ev- idence of usage in “various contexts”8). Slicing up a trademark for analysis violates the anti-dissection rule, meaning that “a composite mark is tested for its

7The circuit split implicated by the Second Circuit’s decision may be even broader. Petitioner confined its analysis to religious trademark disputes, but the Lanham Act applies the same statu- tory test to religious and non-religious trademarks. Examining how federal circuits perform the genericness analysis in the con- text of non-religious trademarks almost surely would increase the number of circuits in conflict with the decision below. See, e.g., CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 267 (4th Cir. 2006) (“[W]e look to how the two parties actually use their marks in the marketplace.”).

8The Second Circuit’s analysis here is terse. The “various contexts” appear to include the evidence the district court noted of the use of universal in at least one other denomination’s name. See Pet. App. 27a.

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validity and distinctiveness by looking at it as a whole, rather than dissecting it into its component parts.” 2 J. Thomas McCarthy, McCarthy on Trademarks and Un- fair Competition § 11:27 (5th ed. 2018).

Adopted by this Court nearly a century ago, the anti-dissection rule is an essential element of trade- mark law. See Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 545–46 (1920) (“The commer- cial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.”). By dissecting petitioner’s trademark for analysis, the decision below conflicts with still other circuits.9 Unfortunately, the decision here is not the first time the Second Circuit has violated the anti- dissection rule. See, e.g., Reese Pub. Co. v. Hampton Int’l Commc’ns, Inc., 620 F.2d 7, 10–11 (2d Cir. 1980) (find- ing no trademark protection for “Video Buyer’s Guide” because its constituent terms—video and buyer’s guide—were generic in isolation); CES Pub. Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 13–15 (2d Cir. 1975) (finding no trademark protection for a periodical

9By our count, at least nine circuits have adopted the anti- dissection rule. See, e.g., Bos. Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 33 (1st Cir. 2008) (“[T]he ‘anti-dissection rule’ instructs that composite trademarks, those with more than one word, are considered as a whole.”); Assoc. of Coop. Members, Inc. v. Farmland Indus., Inc., 684 F.2d 1134, 1140 (5th Cir. 1982) (“The whole, in trademark law, is often greater than the sum of its parts. Common words in which no one may acquire a trade- mark because they are descriptive or generic may, when used in combination, become a valid trademark.”).

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with the term consumer electronics in its title because the term is generic).

This established anti-dissection rule is especially crucial for religious trademarks. Because they tend to consist of common faith-related words, ignoring the anti-dissection rule makes it significantly more likely that a court will invalidate a trademark as generic.

Understanding these risks, the Ninth Circuit ap- plied the anti-dissection rule to a religious trademark. See Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902 (9th Cir. 1995). There, the district court invalidated the trademarks “Self-Realization Fellowship” and “Self-Realization Fellowship Church” because the term “Self-realization” was invalid, so the court reasoned, “adding ‘Fellowship’ or ‘Fellowship Church’ could not make the composite terms valid.” Id. at 912. But the Ninth Circuit reversed. “A court may not review the validity of a composite- term trademark by ‘dissecting’ the term and reviewing the validity of its component parts individually.” Ibid.

Another reason for rejecting the Second Circuit’s interpretation of the Lanham Act is the principle of constitutional avoidance. See, e.g., Gomez v. United States, 490 U.S. 858, 864 (1989) (“It is our settled policy to avoid an interpretation of a federal statute that en- genders constitutional issues if a reasonable alterna- tive interpretation poses no constitutional question.”). As we explained above, religious trademarks reflect re- ligious beliefs, practices, and self-definition. Failing to protect a faith community’s registered trademark

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CONCLUSION

For these reasons, the Court should grant the pe- tition.

Respectfully submitted,

ALEXANDER DUSHKU

Counsel of Record

R.SHAWN GUNNARSON

KIRTON MCCONKIE

Key Bank Tower

36 South State Street, Suite 1900

Salt Lake City, Utah 84111

(801)328-3600 adushku@kmclaw.com

Counsel for Amici Curiae

April 5, 2019