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Holy Spirit Association for Unification of World Christianity v. World Peaceand Unification Sanctuary, Inc.

United States District Court, M.D. Pennsylvania

July 22, 2019

HOLY SPIRIT ASSOCIATION FOR THE UNIFICATION OF WORLD CHRISTIANITY Plaintiff,
v.
WORLD PEACE AND UNIFICATION SANCTUARY, INC. Defendant.

          MEMORANDUM OPINION

          Robert D. Marlani United States District Judge.

         I. Introduction and Procedural history

         In this 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.

         Plaintiffs 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).

         Plaintiff 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).[1]

         In its 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).

         Plaintiffs third cause of action alleges that the Defendant's actions as described herein constitute unfair competition under the common law.

         Finally, 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).

         Defendant 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 ¶ 8).

         However, 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).

         Throughout 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).

         The Defendant also denies in its Answer that the TWELVE GATES Mark is "distinctive and famous." (Id. at ¶ 35).

         Defendant 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).

         Following 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.

         Defendant 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."

         Thereafter, 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).

         The 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).

         Count 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).

         Count 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).

         Count 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).

         As 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 ¶¶ 84-85).

         In 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).

         II. Standard of Review .

         A 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 868 (2009).

         "While 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.

         "Although 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. 679).

         III. ...


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