The opinion of the court was delivered by: Hutton, District Judge.
FINDINGS OF FACT, CONCLUSIONS OF LAW AND FINAL JUDGMENT
Having considered all of the testimony and exhibits offered at
trial, I now, pursuant to Federal Rule of Civil Procedure 52(a),
make the following findings of fact and conclusions of law:
A. The Plaintiff's Contentions
1. The plaintiff, The Gideons International, Inc. (hereinafter
"The Gideons" or the "Association"), has asserted that: (a) the
use by the defendant, Gideon 300 Ministries, Inc. (hereinafter
"Gideon 300"), of the name and mark "Gideon" within its name
"Gideon 300 Ministries" constitutes unfair competition under
Section 43(a) of the Lanham Act and infringes upon The Gideons'
federal trademark rights and its rights at common law; (b) the
subject marks are owned by The Gideons, and they are suggestive,
thus inherently distinctive; (c) even if the marks were held to
be merely descriptive, they have acquired a secondary meaning in
the minds of the consuming public and have achieved incontestable
status under the Lanham Act; (d) there is a strong likelihood of
confusion in the public, and Gideon 300 has admitted to instances
of actual confusion; and (e) Gideon 300 has diluted The Gideons'
famous marks by blurring its name and mark with the marks of The
Gideons. For these reasons, The Gideons contends that it should
be granted a judgment on its claims for unfair competition,
dilution and infringement, and that this Court should permanently
enjoin Gideon 300 from using the mark "Gideon" or any confusingly
similar name or mark. Compl., ¶¶ 15-34, Prayer for Relief at pp.
8-9 (Docket No. 1). During his opening statement at trial, The
Gideons' counsel advised the Court that The Gideons is not
seeking an award of damages or attorneys' fees against Gideon
300, but rather, simply an injunction compelling Gideon 300 to
change its name. May 3 Tr., 13:9-13.*fn1
B. The Defendant's Contentions
1. In its Answer, Gideon 300 generally denied The Gideons'
allegations of liability, Answer at ¶¶ 15-34 (Docket No. 4), but
Gideon 300 did not specifically plead any affirmative defenses,
id., p. 7. In its Amended Pretrial Memorandum, Gideon 300
stated that it was incorporated for the purpose of distributing
food to the homeless, that it has never used The Gideons' name,
or an amphora, in connection with its charitable activities,
which it contends are not related to the distribution of Bibles,
and that The Gideons have failed to produce any evidence of
confusion or an expert witness. Am. Pretrial Mem. at pp. 1-2
(Docket No. 28). In his opening statement at trial, Gideon 300's
counsel did not further identify any particular legal defenses
that Gideon 300 relied upon, but asserted that the Court should
take into account Gideon 300's intent in adopting its name, that
the name (according to Gideon 300) "came from God, he developed
that name," May 3 Tr. 14:5-6, that the evidence would show that
there is no harm in allowing Gideon 300 to maintain their
homeless ministry under the present name, id., 14:12-14, that
the Court does not need to and should not take into consideration
whether Gideon 300 will be harmed if forced to change its name,
id., 14:16-18, and that Gideon 300's use of Gideon 300
Ministries, Inc. as its name is both proper and not in any way
intended to harm or
dilute The Gideons' name. Id., 14:23-25. Although not
articulated in this way, Gideon 300's essential argument is that
there is not a likelihood of confusion between its name or marks
and those of The Gideons.
C. The Plaintiff and its Activities
1. The Gideons is an association of Christian business and
professional men, organized in 1899. Burden Test. May 3 Tr., 16:
17-19. It serves as an extended missionary arm of the church and
is the oldest Christian business and professional men's
association in the United States. Ex. P-3, p. 2. It is
interdenominational in its scope and worldwide in outreach,
operating in 172 countries. Burden Test., May 3 Tr., 16:19-20. In
1908 The Gideons adopted as a part of its ministry the goal of
placing a Bible in each hotel room in the United States, id.,
21:12-24, and Bible and Testament placement is one of the
organization's major activities. See generally, Exs. P-1, P-2,
2. The Gideons have used the names GIDEON and GIDEONS in
connection with its activities since its inception, and The
Gideons first began to use the names and marks GIDEON and GIDEONS
in interstate commerce in connection with its services described
above in 1903 on magazines and other printed literature and has
continued and expanded upon that use up to the present time. Ex.
P-1, Sowers of the Word, A 95-Year History of The Gideons
International, pp. 309-316; Ex. D-6, ¶¶ 3-5; Compl., ¶ 7.
3. The Gideons is the owner of the following United States
Trademark Registrations: No. 677,829 for GIDEON and amphora
design, registered on April 28, 1956; Ex. P-13, p. 8; Compl., ¶
8, Ex. A; No. 631,355 for GIDEON and amphora design, registered
on July 24, 1956, Ex. P-13, pp. 1-7; Compl., ¶ 9, Ex. B; No.
635,619 for GIDEON wreath and amphora design, registered on
October 9, 1956, Compl., ¶ 10; and No. 89,839 for amphora design,
registered on January 14, 1913, Ex. P-13, pp. 9-11. The Gideons
also claims common law rights to the names and marks GIDEON and
GIDEONS based upon its use of such names and marks which are
superior to any rights which Gideon 300 may claim in and to said
marks or the confusingly similar names and marks "Gideon 300" and
"Gideon 300 Ministries." Compl. ¶ 11, p. 3 (Docket No. 1). The
Gideons do not claim that its amphora symbol has been used by
Gideon 300. Burden Test., May 3 Tr., 81:21-24.
4. The Gideons' nondenominational Christian ministry involves
approximately 135,000 members in 172 countries around the world,
more than 85,000 in the United States and about 50,000 in other
countries, plus approximately 80,000 women involved in a women's
auxiliary ministry. Burden Test., May 3 Tr., 24:9-13; Ex. D-6, ¶
2. Its volunteer membership donates their time without charge to
place and distribute Bibles and New Testaments and engage in
related activities. Burden Test., May 3 Tr., 32:13-16; Ex. D-6, ¶
5. The first meeting of The Gideons was on July 1, 1899, at
Janesville, Wisconsin. Ex. P-1; Ex. D-6, ¶ 3. Three traveling
salesman met at that time and, after consideration as to what the
name of the newly formed Association should be, and after prayer
devoted to the same, decided that their members would be called
"Gideons," after the story in the sixth and seventh chapters of
the Book of Judges in the Holy Bible. Burden Test., May 3 Tr.,
20:21-21:11; Ex. P-1. The origins of the Association go back even
further, to the autumn of the year 1898, when two of the three
original founders, both traveling salesman, met at the Central
Hotel at Boscobel, Wisconsin. Burden Test., May 3 Tr.
19:25-20:20; Ex. D-6, ¶ 3. The history of The Gideons, including
further details concerning how The Gideons have made extensive
use of the names "Gideon" and "Gideons" over the years, is
described in great detail in the book Sowers of the Word. A
95-Year History of The Gideons International. Ex. P-1.
7. As of May 31, 1998, The Gideons had placed 257,088,482
Bibles and Testaments in the United States, and 818,023,040
Bibles and Testaments worldwide. Ex. P-2, pp. 169-72; Ex. D-6, ¶
8. The Gideons place Bibles in hotels and motels, hospitals,
penal institutions, schools, colleges and universities,
courtrooms, bed and breakfast inns, transient efficiency
apartments, airplanes, steamships, trains, physicians' (including
osteopaths, chiropractors and outpatient clinics) offices,
dentists' offices, military day rooms, libraries, bases,
recruiting offices, guardrooms and chapels, funeral homes, and
nursing or convalescent homes. Ex. P-3; Ex. D-6, ¶ 6; Burden
Test., May 3 Tr., 35:2-36:3. Unlike other Bible societies, such
as the American Bible Society, The Gideons do not sell Bibles to
the public. Id., 36:10-37:7. Gideon members place Bibles both
on their own initiative and at the request of hotels and motels.
Id., 42:25-44:2; Ex. P-11.
9. In addition to its Scripture distribution and Bible
placement activities, The Gideons also meet together on a regular
basis, conduct retreats, make presentations regarding their
activities at various venues, including churches, and exhibit
booths at state fairs, county fairs, exhibitions and the like, at
which they display Gideon Scriptures and tracts and other
promotional material. Burden Test., May 3 Tr., 25:9-27:13; Ex.
D-6, ¶ 7. Representative samples of such promotional materials
were presented at trial. Exs. P-4A-P-4N.
10. Since approximately 1908, when the suggestion was made that
churches fund the Bibles placed in local area hotel rooms,
churches have been a primary source of funds for The Gideons.
Burden Test., May 3 Tr., 22:1-13. Approximately 65% of The
Gideons' funds are from churches. Id., 74:8-12. As Jerry
Burden, Executive Director of The Gideons, testified at trial,
The Gideons have long been inextricably tied to churches, where
Gideon members go on a regular basis to share information and to
encourage church members to participate financially in The
Gideons' ministry. Id. Voluminous examples of The Gideons'
promotional literature displayed at and distributed to churches
were presented at trial. Ex. P-4A-4N. Mr. Burden testified that
between five and six million brochures or pamphlets carrying the
GIDEON mark and name are distributed in churches each year.
Burden Test., May 3 Tr., 61:18-24; Exs. P-4G, P-4H. He also
testified that other Gideons literature, Exs. P-4C-4E, is
distributed at churches, their volume being from several thousand
to 20 to 30 thousand per year. Burden Test., May 3 Tr., 61:4-11.
The additional documents in The Gideons' Collective Ex. P-4 are
representative examples of The Gideons' promotional literature,
according to Mr. Burden. Id., 60:18-62:16.
11. For almost 100 years, the Gideons has published a monthly
magazine titled The Gideon. Ex. D-6, ¶ 13; Burden Test., May 3
Tr., 63:11-25. The Gideon is distributed to Gideon members and
to others and includes educational, training and inspirational
materials, including "testimonies," stories of the impact that
Gideon Bibles have had on people. Id. A set of The Gideon
magazines from January 1998 through April 1999, each including
such testimonies, was presented at trial. Ex. P-5A-P-50.
Approximately 95,000 issues of The Gideon magazine are
distributed every month in the United States and around the
world. Burden Test., May 3 Tr., 64:1-3; Ex. D-6, ¶ 13. Additional
testimonies appear in other publications of The Gideons. Ex. D-6,
¶ 13, Ex. 5; Exs. P-41-P-4N.
13. The Gideons spend approximately $60 million each year on
Bibles, and from $30 to $31 million is paid each year to National
Bible Press in Philadelphia. Burden Test., May 3 Tr., 38:4-16.
National Bible Press in Philadelphia has published Gideon Bibles
for 60 years. Id., 36:4-9. All Bibles distributed to the public
by The Gideons have the Gideon name on them. Id., 38:20-25.
14. At the camp level, Gideon members attend monthly camp
prayer meetings, engage in personal witnessing, Scripture
placements, new member recruitment and report to churches. Ex.
D-6, ¶ 8; Ex. P-2, pp. 37-50. Each camp has a cabinet which meets
on a regular basis. Id. The United States Gideon membership is
further divided into 10 regional zones, each zone consisting of a
number of states. Id. There are also 44 state Gideon
associations in the United States, the state Gideon associations
conduct their own cabinet meetings, zone rallies, state
conventions, and state training conferences, and the state
association presidents attend conferences at The Gideon's
International headquarters in Nashville, Tennessee. Id.
15. On an international level, there are 16 Gideon national
associations which are organizations outside of the United
States, and all countries outside the United States are organized
into one of 11 areas. Ex. P-2; Ex. D-6, ¶ 8. There are also
self-supporting national associations and there are well-defined
committees and cabinet structures within The Gideons'
International membership, as well. Id.
16. The organizational structure of The Gideons and the
policies and procedures which Gideon members are required to
follow are very important to the success of the Association and
its ministry. Ex. P-2; Ex. D-6, ¶ 9. According to Mr. Burden, the
discipline, training and the very strict policies and procedures
which govern the manner in which Gideon members perform their
public activities (set forth in The Gideons' Guide Book, Ex. 3;
Trial Ex. P-2) are also critical to the organization and its
work. Ex. D-6, ¶ 9; Burden Test., 26:5-10.
17. The un-rebutted testimony of Mr. Burden established that
The Gideons' extremely large membership is united in carrying out
the same program using the same methods to accomplish the
organization's constitutional objective of winning others to
Christ, and the Association's policies are important because
larger numbers of new members join it every year. Ex. D-6, ¶ 9;
Ex. P-2, pp. 111, 114. The high esteem in which The Gideons is
held by members of the public at large is due in large part to
its members' strict observance of these policies and procedures.
Id. Burden Test., May 3 Tr., 49:5-50:10. Mr. Burden testified
based on his experience that The Gideons and its members are held
in extremely high esteem, citing as examples the routine giving
of hotel and motel passkeys to Gideon members so they may place
Bibles in hotel rooms and the allowance of Gideon members into
military induction and enlistment centers to present testaments.
18. The Court notes that The Gideons' Guide Book contains a
series of detailed policies and procedures that govern the
organization's members' public and non-public or
association-level activities, including scripture distribution,
offerings, church meetings, camp meetings, advertising, and
publicity policies. Ex. P-2, pp. 111-45. The Court also notes
that The Gideons publishes in its Guide Book, which is
distributed to Gideon members, policies governing the use of the
GIDEON name and emblem. Id., pp. 116, 118-20. One such
policy provides as follows:
The Gideon name and emblem are registered as a
trademark with the governments of more than 190
countries. No brochure, tract, folder, pamphlet,
form, book, video cassette, cassette tapes,
slide presentation, display, podium, rostrum, etc.
is to be published, manufactured or produced in the
name of The Gideons International and/or using The
Gideon emblem except those authorized by The
International Cabinet or a committee appointed by the
Cabinet (usually the Executive Committee). This
policy applies to manufactured products including
novelty items such as jewelry, pen sets, wearing
apparel, etc. . . .
19. As another example, The Gideons do not solicit funds
publicly. Id. Its primary public activity is the distribution
of Bibles and Testaments, and its policies provide that it will
do so wholly in keeping with the law of the land, largely to
avoid compromising the future work of the ministry. Ex. P-2, pp.
126-38. Accordingly, in the view of The Gideons, any activity by
a person using the name "Gideon" or "Gideons" which is
inconsistent with its practices has the potential to damage the
reputation of the Association in the public's eye and to disturb
the uniformity with which The Gideons has operated publicly for
100 years. Id.; Ex. D-6, ¶ 9. The Gideons also believes that
the good will that the public associates with its organization
would be damaged if other religious ministries that are not
established churches, such as Gideon 300 in this action, were to
use the "Gideon" name, which has come to be known in the public's
mind as synonymous with The Gideons.
20. The Gideons focus on being what it calls "a disciplined
ministry," Ex. P-2, p. 1, carries over into its fund raising
activities. Mr. Burden testified that The Gideons have approved
methods of fund raising which must be followed. Burden Test., May
3 Tr., 46:18-49:4. Mr. Burden explained that The Gideons
participate with about 208,000 Protestant churches in the United
States, of which approximately 75,000 are visited by Gideons on
an annual basis, and that members of those churches have an
expectation as to what will be done with monies they donate to
The Gideons. Id. The uniformity of The Gideons' message and
publications is also deemed important by the organization to its
identity in the public's mind. Id. Because so much of its work
is performed in churches, The Gideons is legitimately concerned
about other groups, such as Gideon 300, bearing the GIDEON name
and there being a reasonable basis for confusion, especially at
churches which may be involved with each organization. Id.
21. The Court also notes that The Gideons has a strict policy
against publicity and advertising. Ex. P-2, pp. 117-20; Burden
Test., May 3 Tr., 50:14-51:11. Notwithstanding this policy, the
activities of The Gideons' members for the last century in
distributing Bibles on the massive scale referenced above had
resulted in a significant amount of unsolicited press coverage
regarding The Gideons and its activities. Ex. P-7; Ex. D-6, ¶ 10;
Burden Test., May 3 Tr., 51:17-52:21. Various newspaper articles
and other publications regarding or mentioning The Gideons'
activities were presented at trial. Id. These articles, which
are only a representative sampling of such articles in the files
of the Association, are from such well-known publications as USA
Today, The Boston Globe, Christianity Today, National Catholic
Reporter, Chicago Tribune, The Daily Oklahoman, The Dallas
Morning News, The Arizona Republic, the Knight-Ritter and
Associated Press wire services, as well as smaller newspapers
and periodicals such as Mandarin (FL) News, The North Platte
(NB) Telegraph, The Alton (MO) Telegraph, Fundamentalist
Journal, The Duluth News-Tribune, Twin Falls (ID) Time-News,
Amarillo (TX) Globe-News, and The Greensboro (NC) News and
22. The "Gideon" and "Gideons" names are also associated in
popular culture with the Association due to the widespread scope
of the Association's work. Burden Test., May 3 Tr., 54:25-58:8;
Ex. D-6, ¶ 11. For example, the Beatles' song "Rocky Raccoon"
refers to a Gideon Bible, as does a character in the musical
"Guys and Dolls." Id.
23. Gideon Bibles have also been used in movie productions.
Presented at trial was correspondence regarding The Gideons'
approval of the use of a Gideon Bible as a part of the recent
motion picture "Mission: Impossible," starring Tom Cruise, John
Voigt and others. Burden Test., May 3 Tr., 55:9-57:19; Ex. D-6, ¶
11; Ex. P-8. The Gideons has also declined the use of its name
and Bibles in films that are not in keeping with its mission.
Id. Two letters to production companies who have requested such
permission were entered into evidence, including the proposed use
of a Gideon Bible in an upcoming motion picture starring Arnold
Schwarzenegger. Id. Mr. Burden also testified that to his
knowledge the Gideon name had never been used in a movie without
The Gideons' permission. Id., 57:17-19.
24. The Gideons' activities have even been the subject of such
well-known cartoon features as "BC" and the "Wizard of Id,"
copies of which were also entered into evidence. Ex. P-8; Ex.
D-6, ¶ 11; Burden Test., May 3 Tr., 57:22-58:3.
25. The Gideons have enjoyed the respect of national and
international leaders and many American presidents have publicly
accepted dignitary Gideon Bibles as described and depicted in the
book Sowers of the Word, and as testified to by Mr. Burden. Ex.
P-1; Ex. D-6, ¶ 12; Burden Test., May 3 Tr., 58:11-21.
26. As an example of the long-standing and high regard many
leaders have had for The Gideons and its activities, The Gideons
introduced into evidence a copy of a telegram from General
Douglas MacArthur received by The Gideons in April 1950, in which
General MacArthur solicits the assistance of The Gideons in
providing copies of Scripture for Japanese citizens in connection
with the democratization of the Japanese nation. Burden Test.,
May 3 Tr., 58:21-59:16; Ex. P-9; Ex. D-6, ¶ 12.
27. Gideon Testaments have even traveled in outer space, and
were carried and read from by members of the Apollo 8 lunar
mission in 1968 when they circled the moon, which the astronauts
mentioned in national interviews upon their return. Ex. P-1, pp.
90, 116-17; Ex. D-6, ¶ 12.
28. According to the accounts in The Gideons' publications,
many persons have improved their lives through exposure to
Scripture enabled by The Gideons' activities. Ex D-6, ¶ 13; Exs.
P-4I-4N, 5A-5D, 6A-6C.
29. Most dictionaries even have a separate definition under the
word "Gideon" that references the Association. In this regard,
The Gideons filed a Motion for Judicial Notice of Adjudicative
Fact, requesting the Court to take judicial notice of the fact
"[t]hat the names and marks `Gideon' and `Gideons' have developed
a secondary meaning, namely, that they refer to members of The
Gideons and to The Gideons organization." (Docket No. 29). In
support of such motion The Gideons attached seven dictionary
definitions which refer to The Gideons, arguing that the names
and marks "Gideon" and "Gideons" are so strong that the
dictionary definition specifically refers to the plaintiff, and
citing the Third Circuit's approving citation of Professor
McCarthy's definition of secondary meaning:
When a particular business has used words publici
juris for so long or so exclusively or when it has
promoted its product to such an extent that the words
do not register their literal meaning on the public
mind but are instantly associated with one
enterprise, such words have attained a secondary
meaning. That is to say, a secondary meaning exists
when in addition to their literal, dictionary
meaning, words connote to the public a product from a
30. The Court finds the foregoing facts clearly establish, as
discussed further below, that The Gideons' names and marks are
extremely strong, well-known and famous marks as a matter of fact
D. The Defendant and its Activities
1. Gideon 300, a Pennsylvania corporation with its offices in
Willow Grove, Pennsylvania 19090, is a Christian ministry that
engages in the following activities, among others: raising funds
for its activities, Exs. P-20-P-23, D-1, D-2, D-3, D-5
(newsletters, appeals for funds and other promotional literature
of the defendant); feeding homeless persons, Jenkins Test., May 3
Tr., 95:1-8; witnessing, id.; sponsoring and presenting prayer
meetings, revival meetings, conferences and concerts, id.,
102:15-103:1, at which brochures and flyers identifying Gideon
300 are distributed, id., 103:2-16; sponsoring a "Read the
Bible in a Year" program, id., 100:22-101:10; Ex. P-20, P. 5;
and distributing religious tracts, id., 101:19-21. Gideon 300
also sponsors a dance outreach program, a foster care support
program and a program to collect and distribute blankets to
homeless persons. Id., 103:24-104:11.
2. Gideon 300 is also, like The Gideons, a Christian ministry,
Jenkins Test., May 3 Tr., 94:19-96:4, and according to its
Articles of Incorporation,
The express purpose of the Corporation is to preach,
spread and promote the Gospel of Jesus Christ of
Nazareth by proclaiming the Word of God, the Holy
Bible, both Old Testament and New Testament, in every
media and means known to or to be known to man, for
the eternal healing, deliverance and prosperity of
all who will or may believe in Jesus of Nazareth. . ..
Ex. P-18, p. 3; Jenkins Test., May 3 Tr., 95:18-96:4. Gideon
300's By-Laws similarly begin as follows: "Foremost in the
operation of this corporation and its bylaws is the word of God
as taught in Old and New Testaments of the Holy Bible." Jenkins
Test., May 3 Tr., 96:17-21. While Mr. Jenkins attempted to
distinguish his organization's Christian ministry from that of
The Gideons, he eventually admitted the obvious — that part of
Gideon 300's mission is to share the Gospel of Jesus Christ.
3. In connection with its activities, Gideon 300 distributes on
an annual basis approximately 15,000 pieces of literature with
the names Gideon 300 and/or Gideon 300 Ministries thereon.
Jenkins Test., May 3 Tr., 103:14-23. Gideon 300 has also
advertised on the radio. Id., 114:19-20. It has also been
featured in a Philadelphia television news feature, id.,
114:9-18, and written up in Main Line Life, a local newspaper,
id., 114:21-23; Exs. P-24, D-7, D-13.
E. Defendant's Prior Knowledge of the Plaintiff
1. Mr. Jenkins admitted that he did not conduct any search
concerning the name Gideon or Gideon 300 before he made the
decision to use it, Jenkins Test., May 3 Tr., 116:9-15, but he
was nonetheless well aware of The Gideons and its name and
activities before selecting the name Gideon 300 Ministries:
Q. Well, your view, Mr. Jenkins, of the Gideons has
come about from long exposure to the Gideons,
A. I know they put Bibles in hotels.
Q. Well, you've known of them all your life, haven't
A. I wouldn't say all my life, but a good majority of
Q. Well, in your deposition you said you've known
about them all your life, do you remember saying
Q. All right. Well, I'm not quibbling with you in
that regard, Mr. Jenkins. You did agree in your
Q. — that they were very well known, correct?
Q. And you also said that there's no doubt about ...