17-2960-cv‌

The Universal Church, Inc. v. Toellner

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007 IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION “SUMMARY ORDER”). A PARTY CITING TO A SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.

1. At a stated term of the United States Court of Appeals for the Second Circuit,

2. held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the

3. City of New York, on the 2nd day of November, two thousand eighteen.

4

1. PRESENT: JOHN M. WALKER, JR.,

2. RAYMOND J. LOHIER, JR.,

3. Circuit Judges,

4. WILLIAM H. PAULEY III,*

5. District Judge.

10 ————————————————–

11 THE UNIVERSAL CHURCH, INC.,

12

1. Plaintiff-Counter-

2. Defendant-Appellant,

15

16 v. No. 17-2960-cv

17

1. CALVIN TOELLNER, GEORGE FREEMAN,

2. BRUCE TAYLOR, UNIVERSAL LIFE

3. CHURCH/ULC MONASTERY, UNIVERSAL

4. LIFE CHURCH MONASTERY STOREHOUSE,

* Judge William H. Pauley III, of the United States District Court for the Southern District of New York, sitting by designation.

1

2

3

4

5 DANIEL CHAPIN,

6

7

Defendants-Counter- Claimants-Appellees,

Defendant.

8 ————————————————

9 FOR APPELLANT: DAVID DONAHUE (Laura Popp-Rosenberg,

1. Jennifer Insley-Pruitt, on the brief), Fross Zelnick

2. Lehrman & Zissu, P.C., New York, NY; Katherine

3. J. Daniels, Tendy Law Office, LLC, New York,

4. NY.

14

1. FOR APPELLEES: JURA C. ZIBAS (Stephen J. Barrett, on the brief),

2. Wilson Elser Moskowitz Edelman & Dicker LLP,

3. New York, NY.

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1. Appeal from a judgment of the United States District Court for the

   
   

2. Southern District of New York (Naomi Reice Buchwald, Judge).

   
   

3. UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED,

   
   

4. AND DECREED that the judgment of the District Court is AFFIRMED.

   
   

5. The Universal Church, Inc. (“Universal Church”) appeals from a

24 September 20, 2017 order of the District Court (Buchwald, J.) granting summary

1. judgment in favor of appellees (collectively, “Universal Life Church”). We

   
   

2. assume the parties’ familiarity with the underlying facts and the record of prior

2

1. proceedings, to which we refer only as necessary to explain our decision to

   
   

2. affirm.

   
   

3. The standards for our de novo review of the District Court’s grant of

   
   

4. summary judgment are well established. See Nick’s Garage, Inc. v. Progressive

   
   

5. Cas. Ins. Co., 875 F.3d 107, 113 (2d Cir. 2017); Nora Beverages, Inc. v. Perrier Grp.

   
   

6. of Am., Inc., 164 F.3d 736, 745 (2d Cir. 1998). In granting summary judgment on

   
   

7. Universal Church’s trademark infringement claim and cancelling its trademark

   
   

8. registrations, the District Court concluded that the trademarks “Universal

   
   

9. Church” and “The Universal Church” are generic. A term is generic if it “refers

   
   

10. to the genus of which the particular product is a species.” Park ‘N Fly, Inc. v.

    
    

11. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985) (citing Abercrombie & Fitch Co.

    
    

12. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976)). In determining whether a

    
    

13. term is generic, moreover, “the relevant purchasing public is not the population

    
    

14. at large, but prospective purchasers of the product.” Lane Capital Mgmt., Inc.

    
    

15. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999). Here, the District

    
    

16. Court concluded that the relevant public is all those who seek and provide

    
    

17. religious worship services, and Universal Church does not challenge this

    
    

18. conclusion on appeal.

    3

    1. In this case, Universal Life Church met its burden of showing that the term

       
       

    2. “Universal Church” is generic in the context of “evangelistic and ministerial

       
       

    3. services, namely, conducting religious worship services,” and that the term “The

       
       

    4. Universal Church” is generic in the context of “religious counseling and

       
       

    5. ministerial services,” the classes for which the trademarks are registered. App’x

       
       

    6. 55, 63. Specifically, Universal Life Church introduced admissible evidence in

       
       

    7. the form of an expert report and testimony that “the longstanding common use

       
       

    8. of the phrase ‘Universal Church’ in various contexts demonstrates without

       
       

    9. question that the phrase has been in generic usage over two millennia to describe

       
       

    10. the Church as a whole throughout the world.” App’x 610, 659–61 (deposition

        
        

    11. testimony). It also introduced the following definition of “universal” from the

        
        

    12. Oxford English Dictionary: “Designating the whole Christian Church or all

        
        

    13. Christians collectively . . . Freq. in universal church.” App’x 572 (emphasis in

        
        

    14. original); see Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 810 (2d Cir. 1999)

        
        

    15. (“Though not conclusive, dictionary definitions of a word to denote a category of

        
        

    16. products are significant evidence of genericness because they reflect the public’s

        
        

    17. perception of a word’s meaning and its contemporary usage.”).

        
        

        4

        1. The remaining question before us, therefore, is whether Universal Church

           
           

        2. created a genuine factual dispute about the issue by presenting any contrary

           
           

        3. admissible evidence that the term “Universal Church” does not generically refer

           
           

        4. to religious counseling and evangelistic and ministerial services. We agree with

           
           

        5. the District Court that Universal Church did not. First, the testimony of

           
           

        6. Universal Church’s religious expert alone failed to create a genuine dispute that

           
           

        7. the term “Universal Church” refers to Christian services in general among the

           
           

        8. relevant public. Second, the testimony of Universal Church’s vice president

           
           

        9. that “Universal Church” is a “distinctive name” because the organization

           
           

        10. “promote[s] this brand” to its 30,000 members and in its weekly television

            
            

        11. program (which may reach up to 800,000 people), App’x 373; see id. 357, 360,

            
            

        12. also failed to establish the significance of the term “Universal Church” among

            
            

        13. the relevant public. In any event, “no matter . . . what success [the user of a

            
            

        14. generic term] has achieved in securing public identification, it cannot deprive

            
            

        15. competing manufacturers of the product of the right to call an article by its

            
            

        16. name.” Abercrombie, 537 F.2d at 9. In urging a contrary conclusion,

            
            

        17. Universal Church points to its efforts to police its mark by preventing other

            
            

        18. organizations from using the words “universal” and “church” in their name.

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1. But “when . . . the mark has entered the public domain beyond recall, policing is

   
   

2. of no consequence to a resolution of whether a mark is generic.” Murphy Door

   
   

3. Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d Cir. 1989) (quotation

   
   

4. marks omitted). Because a generic term can never be trademarked, moreover,

   
   

5. see Park ‘N Fly, 469 U.S. at 194; Genesee Brewing Co. v. Stroh Brewing Co., 124

   
   

6. F.3d 137, 143 (2d Cir. 1997), the District Court did not abuse its discretion in

   
   

7. thereafter cancelling the trademarks. We therefore affirm the District Court’s

   
   

8. grant of summary judgment in favor of Universal Life Church and cancellation

   
   

9. of the trademark registrations.

   
   

10. Because Universal Church’s marks are generic, we also affirm the District

    
    

11. Court’s grant of summary judgment to Universal Life Church on Universal

    
    

12. Church’s cybersquatting claims under the Anticybersquatting Consumer

    
    

13. Protection Act, 15 U.S.C. § 1125, which required Universal Church to show that

    
    

14. its marks were distinctive. See Sporty’s Farm L.L.C. v. Sportsman’s Market,

15 Inc., 202 F.3d 489, 497 (2d Cir. 2000).

1. Finally, the District Court was also correct to dismiss Universal Church’s

   
   

2. unfair competition claims. Universal Church argues that even a generic term

18 may give rise to an unfair competition claim if the junior user adopts the term in

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1. order to conflate itself with the senior user. But our review of the record does

   
   

2. not suggest that Universal Life Church, an organization which provides free

   
   

3. online ordination and does not conduct church services other than occasional

   
   

4. mass weddings, attempted to portray itself as a Pentecostal church in order to

   
   

5. “confus[e] the public into mistakenly purchasing [its] product in the belief that

   
   

6. the product is the product of the competitor.” Murphy Door Bed, 874 F.2d at

   
   

7. 102 (quotation marks omitted).

   
   

8. We have considered Universal Church=s remaining arguments and

   
   

9. conclude that they are without merit. For the foregoing reasons, the judgment

   
   

10. of the District Court is AFFIRMED.

    
    

11. FOR THE COURT:

12. Catherine O=Hagan Wolfe, Clerk of Court

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United States Court of Appeals for the Second Circuit Thurgood Marshall U.S. Courthouse

40 Foley Square New York, NY 10007

ROBERT A. KATZMANN

CHIEF JUDGE

Date: November 02, 2018 Docket #: 17-2960cv

Short Title: The Universal Church, Inc v. Universal Life Church/ULC

CATHERINE O'HAGAN WOLFE

CLERK OF COURT

DC Docket #: 14-cv-5213

DC Court: SDNY (NEW YORK CITY)

DC Judge: Buchwald

BILL OF COSTS INSTRUCTIONS

The requirements for filing a bill of costs are set forth in FRAP 39. A form for filing a bill of costs is on the Court's website.

The bill of costs must:

• be filed within 14 days after the entry of judgment;

• be verified;

• be served on all adversaries;

• not include charges for postage, delivery, service, overtime and the filers edits;

• identify the number of copies which comprise the printer's unit;

• include the printer's bills, which must state the minimum charge per printer's unit for a page, a cover, foot lines by the line, and an index and table of cases by the page;

• state only the number of necessary copies inserted in enclosed form;

• state actual costs at rates not higher than those generally charged for printing services in New York, New York; excessive charges are subject to reduction;

• be filed via CM/ECF or if counsel is exempted with the original and two copies.

United States Court of Appeals for the Second Circuit Thurgood Marshall U.S. Courthouse

40 Foley Square New York, NY 10007

ROBERT A. KATZMANN

CHIEF JUDGE

Date: November 02, 2018 Docket #: 17-2960cv

Short Title: The Universal Church, Inc v. Universal Life Church/ULC

CATHERINE O'HAGAN WOLFE

CLERK OF COURT

DC Docket #: 14-cv-5213

DC Court: SDNY (NEW YORK CITY)

DC Judge: Buchwald

VERIFIED ITEMIZED BILL OF COSTS

Counsel for

respectfully submits, pursuant to FRAP 39 (c) the within bill of costs and requests the Clerk to prepare an itemized statement of costs taxed against the

and in favor of

for insertion in the mandate. Docketing Fee

Costs of printing appendix (necessary copies )

Costs of printing brief (necessary copies )

Costs of printing reply brief (necessary copies )

(VERIFICATION HERE)

Signature