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GIDEONS INTERN., INC. v. GIDEON 300 MINISTRIES

July 23, 1999

THE GIDEONS INTERNATIONAL, INC.
v.
GIDEON 300 MINISTRIES, INC.



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:

I. FINDINGS OF FACT

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, P-3.

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, ¶ 2.

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, ¶ 5.

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. Id.

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:

Id., p. 111.

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 Record. Id.

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
  unique source.

Dranoff-Perlstein Associates v. Sklar, 967 F.2d 852, 858 (3d Cir. 1992) (quoting 1 McCarthy's Trademarks and Unfair Competition § 11:9, at 455-56 (2d ed. 1984) (quoting Charcoal Steak of Charlotte House, Inc. v. Staley, 263 N.C. 199, 139 S.E.2d 185 (1964))). Gideon 300 did not oppose such motion, which was granted after oral argument on the motion at the beginning of the trial on May 3, 1999. May 3 Tr., 2:4-5:22 (Docket No. 35).

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 and law.

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. Id., 97:20-21.

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,
    correct?

A. I know they put Bibles in hotels.

  Q. Well, you've known of them all your life, haven't
    you?
  A. I wouldn't say all my life, but a good majority of
    it, yes.
  Q. Well, in your deposition you said you've known
    about them all your life, do you remember saying
    that?
  A. I don't recall, but I would say I've known them
    pretty much all of — you know, a great portion of
    my life. When I went into a hotel and I saw the
    Bible, every Gideon, I saw the Gideon Bible there.
    I wouldn't say being one or two years old that

    being part of my life, that I would have known that
    they're — known them all my life.
  Q. All right. Well, I'm not quibbling with you in
    that regard, Mr. Jenkins. You did agree in your
    deposition —

A. Okay.

Q. — that they were very well known, correct?

A. Yes.

  Q. And you also said that there's no doubt about ...

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