United States District Court, M.D. Pennsylvania
HOLY SPIRIT ASSOCIATION FOR THE UNIFICATION OF WORLD CHRISTIANITY Plaintiff,
WORLD PEACE AND UNIFICATION SANCTUARY, INC. Defendant.
D. Marlani United States District Judge.
Introduction and Procedural history
case, Plaintiff, Holy Spirit Association For The Unification
of World Christianity ("HSA-UWC") has brought suit
against Defendant, World Peace and Unification Sanctuary,
Inc. ("Sanctuary Church") for violating provisions
of the Lanham Act, 15 U.S.C. § 1114, et seq.
(Doc. 1). The Lanham Act provides that "[a]ny person who
shall, without the consent of the registrant - (a) use in
commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark in connection with the sale,
offering for sale, distribution, or advertising of any goods
or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive...
shall be liable in a civil action by the registrant for the
remedies hereinafter provided." 15 U.S.C. §
1114(1). Plaintiff has brought four causes of action under
the Lanham Act.
first cause of action alleges that HSA-UWC "possesses
valid and enforceable rights in the TWELVE GATES Mark in
connection with all of the goods and services at issue in
this case by virtue of their extensive use, registration,
promotion, and advertisement of the TWELVE GATES Mark, and
has possessed such rights at all times material hereto."
(Doc. 1, ¶ 52). Count One further alleges that the
"Defendant's Marks create the same or similar
commercial impression as the TWELVE GATES Mark as evidenced
by, among other things, their similar appearance to the
TWELVE GATES Mark and Defendant's use of Defendant's
Marks in connection with religious services which are
competitive with Plaintiff's religious services."
(Id. at ¶ 53).
HSA-UWC alleges that Defendant Sanctuary Church's conduct
in its use of the TWELVE GATES Mark is "willful,
deliberate, in bad faith and undertaken with knowledge of
Plaintiffs prior rights, and with full knowledge that
Sanctuary Church has no right, license, or authority to use
Plaintiffs Mark or any confusingly similar variant
thereof." (Id. at ¶ 54). HSA-UWC further
alleges that Defendant's "unauthorized use of
Plaintiffs Mark is likely to cause confusion, or to cause
mistake, or to deceive as to sponsorship, affiliation,
connection, or association of Defendant or Defendant's
commercial activities with Plaintiff or Plaintiffs commercial
activities, or as to the origin, sponsorship or approval of
Defendant's services or commercial activities by
Plaintiff." (id. at ¶ 55). Plaintiff
alleges that the Defendant's actions as alleged
constitute "willful violation of Plaintiff's TWELVE
GATES Mark in violation of the Lanham Act, 15 U.S.C. §
1114." (id. at ¶ 56).
second cause of action brought under the Lanham Act, 15
U.S.C. § 1125(c), Plaintiff asserts that as a result of
its "extensive advertisement and promotion of its
religious services and outreach, the TWELVE GATES Mark has
become famous in the United States and throughout the
world." (Doc. 1, ¶ 59). Plaintiff thus alleges that
Defendant Sanctuary Church commenced its unlawful use of the
TWELVE GATES Mark after the TWELVE GATES Mark had become
famous and, as a consequence, Plaintiff HSA-UWC asserts that
"[r]elevant consumers are likely to make an association
between Defendant's Marks and the TWELVE GATES
Mark"; that the Defendant's Marks "are likely
to impair the distinctiveness of Plaintiff's TWELVE GATES
Mark"; that Defendant's Marks "are likely to
blur and/or tarnish the positive associations with Plaintiffs
TWELVE GATES Mark"; and that accordingly the
Defendant's actions "constitute trademark dilution
in violation of the Lanham Act, Section 43(c), 15 U.S.C.
1125(c)." (Id. at ¶¶ 61-64).
third cause of action alleges that the Defendant's
actions as described herein constitute unfair competition
under the common law.
the fourth cause of action, "False Suggestion of
Connection, under the Lanham Act, 15 U.S.C. §
1052(a)", again asserts that the TWELVE GATES Mark is
"famous in the United States and throughout the
world" and that Defendant's Marks "create the
same or similar commercial impression as, or is a close
approximation of, the TWELVE GATES Mark and falsely suggests
a connection with HSA-UWC" when Plaintiff HSA-UWC is not
connected with the Sanctuary Church. (Doc. 1, ¶¶
71-73). Accordingly, Plaintiff alleges that "[d]ue to
the fame of Plaintiff and the TWELVE GATES Mark, when
Defendant's Marks are used in commerce, a connection with
Plaintiff is presumed by the consuming public" and thus
"Defendant's use of Defendant's Marks are likely
to create a false sense of connection to Plaintiff in
violation of Section 2(a) of the Lanham Act, 15 U.S.C. §
1052(a)", thereby causing irreparable injury to
Plaintiff. (Id. at ¶¶ 74-76).
Sanctuary Church has filed an Answer with Affirmative
Defenses and has also set forth counterclaims. (Doc. 13).
Defendant, in its Answer to Plaintiffs Complaint, admits
"that the Tongil symbol is used by the Unification
Church and all those who follow the teachings of Rev. Sun
Myung Moon worldwide in the conducting of religious
ceremonies and rituals, and that the Tongil symbol was
created by Reverend Sun Myung Moon." (id. at
¶ 4). The Defendant Sanctuary Church further states that
the "Tongil symbol is a religious symbol having deep
meaning for all followers of Rev. Sun Myung Moon throughout
the world, including members of Sanctuary, and is used on all
wedding rings, gravesite monuments and other personal items,
in addition to being used during worship services and in
theological texts." (Id.). Defendant again
admits that it uses the Tongil symbol "as a daily part
of the religious practice of its supporters and in its
Sanctuary's worship services." (Id. at
Defendant Sanctuary Church in its Answer to the Plaintiffs
Complaint asserts that the Tongil symbol is a "religious
symbol" and "was created to be used by members of
the Unification Church worldwide, and not as 'the
distinctive trademark of HSA-UWC as alleged by Plaintiffs, as
it is not a 'trademark' and was not created for
exclusive use by HSA-UWC." (Id. at ¶ 27).
its Answer, Defendant denies that the "TWELVE GATES Mark
or Tongil symbol is a valid trademark or service mark owned
by Plaintiff." (See e.g., Id. at ¶¶
28, 30). With respect to the Plaintiffs assertion in its
Complaint that the TWELVE GATES Mark is the subject of a
valid and subsisting United States trademark registration,
serial number 77, 626, 340, which was registered by Plaintiff
on June 30, 2009, Sanctuary Church responds by denying that
"the alleged 'TWELVE GATES Mark' is a valid
trademark or service mark owned by Plaintiff, and submits
that the Tongil symbol is a sacred religious symbol that is
free to be used by all followers of the teachings of Rev. Sun
Myung Moon." (Id. at ¶ 32).
Defendant also denies in its Answer that the TWELVE GATES
Mark is "distinctive and famous." (Id. at
Sanctuary Church does admit that "it has used the Tongil
symbol as part of its religious rituals, ceremonies, and
ministries since 2013 as followers of the religious teachings
of Reverend Sun Myung Moon, including use in connection with
religious services, newsletters, its website, and in videos
posted on YouTube and Vimeo." (Id. at ¶
40). Sanctuary Church denies the allegations of Plaintiffs
first, second, third and fourth causes of action. (See
generally, Answer, Doc. 13, ¶¶ 51-77).
its Answer to the allegations of Plaintiffs Complaint, the
Sanctuary Church also asserts a number of Affirmative
Defenses (see Doc. 13, at 34-37) which the Court
will not set forth at length here.
Sanctuary Church then sets forth Counterclaims against
HSA-UWC. (Counterclaims, Doc. 13, at 38-59). Paragraphs five,
six, and seven are set forth under the heading "Factual
Background." Paragraphs eight through twelve contain the
Defendant/Counterclaim Plaintiffs allegations regarding the
appointment of Sean Moon by the Rev. Sun Myung Moon as his
"legitimate heir and successor in order to continue the
Unification Church's religious work worldwide."
Paragraphs 13 through 20 of the Sanctuary Church's
counterclaims are set forth under the subtitle "Hak Ja
Han Moon's Takeover as Successor", and paragraphs 21
through 28 proceed under the subtitle "Hak Ja Han
Moon's changes of Rev. Moon's Theology."
Paragraphs 29 and 30 of Sanctuary Church's counterclaims
proceed under the subtitle "Sean Moon's Creation of
Sanctuary" and paragraphs 31 though 50 are set forth
under the heading "Use of the Tongil Symbol by
Sanctuary." Paragraphs 46 through 54 of Sanctuary
Church's counterclaims against HSA- UWC proceed under the
heading "Meaning of 'Cheon II Guk' and its Use
by the Unification Church and Sanctuary."
Sanctuary Church, the Defendant/Counter-Plaintiff, sets forth
four causes the action. The first count seeks cancellation of
the registered trademark issued to Counter-Defendant HSA-UWC
on the basis that the "Tongil symbol is used not only by
Counter-Plaintiffs, but all individuals across the globe who
follow the teachings of the late Reverend Sun Myung
Moon"; that the Tongil symbol "is not a trademark
or service mark but is instead a 'universal symbol'
or generic religious symbol central to the worship and
religious ceremonies of followers of Reverend Sun Myung
Moon." (Counterclaims, Doc. 13, ¶¶ 58-59).
Count One further asserts that the Tongil symbol is a
"universal symbol and functions in an ornamental and/or
descriptive manner, but does not function as a trademark or
service mark, making it unregistrable before the U.S.
Trademark Office." (id. at ¶ 60).
Sanctuary Church alleges that "its free exercise of
religion will be infringed if Counter-Defendant is permitted
to maintain and enforce its trademark registration for the
Tongil symbol against Counter-Plaintiff, Sanctuary
Church." (Id. at ¶ 61). Sanctuary Church
as Counter-Plaintiff asserts that the Tongil symbol is a
"generic religious symbol that is used by all followers
of the teachings of Rev. Sun Myung Moon" such that if
HSA-UWC is permitted exclusive right to use the Tongil
symbol, Sanctuary Church's right to the free exercise of
religion under the First Amendment will be violated.
(Id. at ¶ 62).
Counter-Plaintiff Sanctuary Church thus requests this Court
order the U.S. Patent and Trade Office to cancel trademark
Reg. No. 3646838 on the ground that it is a "universal
symbol" i.e., a "generic religious symbol to which
no party should have an exclusive right to use", and for
the reason that it does not "function as a trademark or
service mark" and instead it is a "universal
religious symbol similar to a Cross or Star of David."
(Id. at ¶ 63).
II, entitled "Declaratory Judgment of Non-Infringement
and Declaratory Judgment of No. Unfair Competition", is
assertedly brought under 15 U.S.C. §§1114 and 1125.
Here, the Sanctuary Church again alleges that the Tongil
symbol or the TWELVE GATES Mark, as it is referred to by the
Counterclaim-Defendant HSA-UWC, is a "universal
symbol" or a "generic religious symbol" which
the Sanctuary Church asserts "does not function as a
trademark or service mark and is not protectable or
enforceable as such." Sanctuary Church asserts that
HSA-UWC "does not own a valid and enforceable federal
trademark registration for the Tongil symbol" and
"does not own valid and enforceable unregistered
trademark rights in the Tongil symbol." (Counterclaims,
Doc. 13, ¶ 66). Sanctuary Church thus seeks judgment
from this Court declaring that its use of the Tongil symbol
in connection with its religious activities does not
constitute trademark infringement or unfair competition and
further seeks a judgment from this Court declaring that the
First Amendment prevents any finding of liability on the part
of Sanctuary Church and precluding the
Plaintiff/Counterclaim-Defendant HSA-UWC from entitlement to
injunctive relief or monetary damages for trademark
infringement or unfair competition under the Lanham Act.
(See Id. at ¶¶ 67-69). Alternatively, the
Sanctuary Church asserts that, should this Court find that
the Tongil symbol serves as a trademark, the Court enter a
judgment that Counter-Defendant HSA-UWC "is not the true
owner of any trademark rights in the Tongil symbol by virtue
of Sean Moon's inheritance of all Unification Church
intellectual property as the only true and rightful successor
to the Rev. Sun Myung Moon." It further seeks in the
alternative, should this Court find that the Tongil symbol
serves as a trademark, a judgment that it is an authorized
licensee of the trademark and is therefore free to use the
Tongil symbol. (Id. at ¶¶ 70-71).
III, "Declaratory Judgment of No. Dilution" brought
pursuant to 15 U.S.C. § 1125(c), generally asserts that
the Tongil mark is not a "famous mark" and that
Sanctuary Church has not engaged in trademark dilution. (See
generally, Id. at ¶¶ 72-78).
IV, entitled "Declaratory Judgment of Non-Infringement
of 'Cheon II Guk' and Declaratory Judgment that
'Cheon II Guk' is Generic and Fails to Function as
Trademark", asserts that the
Plaintiff/Counterclaim-Defendant HSA-UWC has applied to
register the term "Cheon II Guk" as a trademark
before the U.S. Patent and Trademark Office in an attempt to
secure exclusive rights to that term. (Counterclaims, Doc.
13, ¶¶ 80-81). Thus, Sanctuary Church seeks a
judgment from this Court declaring that Sanctuary
Church's use of the term "Cheon II Guk" in
connection with its religious activities does not constitute
trademark infringement in the "generic phrase 'Cheon
II Guk'" and also that a finding of infringement
that would entitle HSA-UWC to relief would be an
unconstitutional violation of Sanctuary Church's First
Amendment rights to the free exercise of religion.
(Id. at ¶ 83).
additional alternatives, Sanctuary Church requests that this
Court, should it find that "Cheon II Guk" serves as
a trademark, enter a judgment that the
Plaintiff/Counter-Defendant HSA-UWC is not the true owner of
any trademark rights in the term "Cheon II Guk" by
virtue of Sean Moon's inheritance of all Unification
Church intellectual property "as the only true and
rightful successor to the Rev. Sun Myung Moon." It is
further requested that, should the Court determine that the
term "Cheon II Guk" serves as a trademark, the
Court enter a judgment that Sanctuary Church is an authorized
licensee of the trademark and therefore is free to use that
term without fear of liability. (Id. at ¶¶
response to Sanctuary Church's Counterclaims, HSA-UWC,
the Plaintiff/Counterclaim-Defendant, has filed a
"Motion to Dismiss Defendant's Counterclaims and
Strike Certain Affirmative Defenses and Allegations."
(Doc. 23). HSA-UWC moves to dismiss Defendant's
Counterclaims I and II for failure to state claims upon which
relief can be granted pursuant to Fed.R.Civ.P. 12(b)(6) and
to stay Defendant's counterclaims in Count IV pending
determination in the proceedings before the Trademark Trial
and Appeal Board ("TTAB") or, in the alternative,
dismiss that counterclaim. (Id. at ¶¶ 3,
5). In addition, Plaintiff has moved to strike
Defendant's Third through Fourteenth, Seventeenth, and
Twenty-Sixth Affirmative Defenses, asserting that the
affirmative defenses "either lack any legal merit and
are precluded as a matter of law or should be stricken as
immaterial or impertinent pursuant to Fed.R.Civ.P. Rule
12(f)." (Id. at ¶ 4).
Standard of Review .
complaint must be dismissed under Federal Rule Civil
Procedure 12(b)(6) if it does not allege "enough facts
to state a claim to relief that is plausible on its
face." Bell Atl. Corp. v. Twombly, 550 U.S.
544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). The
plaintiff must aver "factual content that allows the
court to draw the reasonable inference that the defendant is
liable for the misconduct alleged." Ashcroft v.
Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949, 173 L.Ed.2d
a complaint attacked by a Rule 12(b)(6) motion to dismiss
does not need detailed factual allegations, a plaintiff's
obligation to provide the grounds of his entitlement to
relief requires more than labels and conclusions, and a
formulaic recitation of the elements of a cause of action
will not do." Twombly, 550 U.S. at 555
(internal citations, alterations, and quotations marks
omitted). In other words, "[t]actual allegations must be
enough to raise a right to relief above the speculative
level." Covington v. Int'l Ass'n of Approved
Basketball Officials, 710 F.3d 114, 118 (3d Cir. 2013)
(internal citations and quotation marks omitted). A court
"take[s] as true all the factual allegations in the
Complaint and the reasonable inferences that can be drawn
from those facts, but... disregard[s] legal conclusions and
threadbare recitals of the elements of a cause of action,
supported by mere conclusory statements." Ethypharm
S.A. France v. Abbott Labs., 707 F.3d 223, 231 n.14 (3d
Cir. 2013) (internal citation, alteration, and quotation
marks omitted). Thus, "the presumption of truth attaches
only to those allegations for which there is sufficient
'factual matter' to render them 'plausible on
[their] face.'" Schuchardt v. President of the
U.S., 839 F.3d 336, 347 (3d Cir. 2016) (alteration in
original) (quoting Iqbal, 556 U.S. at 679).
"Conclusory assertions of fact and legal conclusions are
not entitled to the same presumption." Id.
the plausibility standard 'does not impose a probability
requirement,' it does require a pleading to show
'more than a sheer possibility that a defendant has acted
unlawfully.'" Connelly v. Lane Constr.
Corp., 809 F.3d 780, 786 (3d Cir. 2016) (internal
citation omitted) (first quoting Twombly, 550 U.S.
at 556; then quoting Iqbal, 556 U.S. at 678).
"The plausibility determination is 'a
context-specific task that requires the reviewing court to
draw on its judicial experience and common sense.'"
Id. at 786-87 (quoting Iqbal, 556 U.S.