United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Argued April 11, 2008 Decided May 6, 2008
No. 07-7092
ESTATE OF FRANCISCO COLL-MONGE,
BY FRANCISCO D. COLL, ADMINISTRATOR, ET AL.,
APPELLANTS
v.
INNER PEACE MOVEMENT ET AL.,
APPELLEES
Appeal from the United States District Court
for the District of Columbia
(No. 01cv00271)
Walter D. Ames argued the cause for the appellants.
John D. Mason argued the cause for the appellees. Andrew
Butz was on brief. Joshua D. Sarnoff and Richard S. Ugelow
entered appearances.
Before: HENDERSON, TATEL and KAVANAUGH, Circuit
Judges.
Opinion for the court filed by Circuit Judge HENDERSON.
KAREN LECRAFT HENDERSON, Circuit Judge: The
appellants, the Estate of Coll-Monge and two for-profit
corporations owned by testator Francisco Coll, (collectively the
2
Estate), brought this action for trademark infringement and
related claims against two non-profit corporations that Coll
founded—Inner Peace Movement, Inc. (IPM) and Peace
Community Church (PCC) (jointly the Non-Profits). The Estate
alleged that it is the sole registered owner of five marks Coll
registered with the United States Patent and Trademark Office
(USPTO). The Non-Profits—which use the marks—countered
that they are the sole owners and that, when Coll registered the
marks, he did so in his representative capacity on their behalf.
The district court granted summary judgment to the Non-Profits
on the trademark claims, concluding that on the undisputed facts
they, as the sole users of the marks from the beginning, are also
the sole owners and that Coll registered the marks on their
behalf. In reaching its decision, the court held the “related
companies” doctrine—under which registration of a mark used
by a related company inures to the benefit of the owner—
inapplicable to a non-profit corporation. We conclude that the
district court erred in its “related companies” holding and that
there remain disputed issues of fact regarding both the doctrine’s
applicability here and the capacity in which Coll registered the
marks with the USPTO. Accordingly, we reverse the district
court’s summary judgment on the Estate’s trademark claims and
affirm the denial of the Estates’s partial summary judgment
motion. On the other hand, we affirm the district court’s
assessment against the Estate of the cost of mailing “remedial
notices” pursuant to a temporary restraining order it issued
before entering summary judgment.
I.
The following facts are undisputed. Coll co-founded IPM in
January 1964 and PCC in October 1965 to promote his “Inner
Peace Movement” self-actualization program.1 Coll was
1
According to IPM’s by-laws, the “Inner Peace Movement is
dedicated to the principle that each man’s religion must be a way of
3
president of each of the Non-Profits as well as on the board of
directors of each. Coll also founded three for-profit
corporations: (1) Americana Leadership College, Inc.,
incorporated in 1976, which assisted the Non-Profits with
promotion, administration and financing; (2) Alley Copyrights,
Inc., incorporated in 1977, which published, stored, distributed
and registered with the U.S. Copyright Office educational
materials used by the Non-Profits; and (3) Employee Services
Personnel, Inc., incorporated in 1984, which did accounting
work for the Non-Profits. All three for-profit corporations are
owned by a parent holding company, Wayshowers, Inc., of
which Coll was the sole shareholder.
Between 1992 and 1995, Coll registered with the USPTO the
five service marks2 at issue: the words “Inner Peace Movement,”
life in today’s world” and “provides leadership and suggestions for the
development of inner spiritual guidance and the unfolding of each
person’s spiritual gifts (I Cor. 12:4-11) that bring new faith, balance
and freedom from fear to each individual.” IPM’s Rev. 1st Am.
Answer & Countercls. tab C, at 1.
2
Under the Lanham Act, which governs federal trademark
registration and rights, the marks at issue are technically “service
marks” rather than “trademarks” because they are used in connection
with services rather than goods. See 15 U.S.C. § 1127 (defining
“trademark” as “any word, name, symbol, or device, or any
combination thereof” a person uses or intends to use “to identify and
distinguish his or her goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the goods,
even if that source is unknown” and defining “service mark” as “any
word, name, symbol, or device, or any combination thereof” a person
uses or intends to use “to identify and distinguish the services of one
person, including a unique service, from the services of others and to
indicate the source of the services, even if that source is unknown”).
The Lanham Act generally treats service marks and trademarks the
same. See 15 U.S.C. § 1053 (“Subject to the provisions relating to the
4
the words “Peace Community Church,” the “IPM”
word/emblem, PCC’s “Dove and Olive Branch” emblem and a
“Circle of Love” emblem. On December 15, 1999, Coll died,
leaving his estate to his son, Francisco David Coll.
In February 2001 the Estate of Coll-Monge, joined by
Americana Leadership College, Inc. and Alley Copyrights, Inc.,
filed this action against the Non-Profits, three named
individuals3 and 20 “John Does,” setting out seven claims,
including Counts I and II which allege trademark infringement
under, respectively, the Lanham Act, 15 U.S.C. §§ 1051 et seq.,
and the common law.4 In their amended answers, IPM and PCC
asserted various counterclaims alleging, inter alia, fraudulent
trademark registration, trademark infringement and deceptive
trade practices in violation of the Lanham Act and sought
cancellation and rectification of Coll’s trademark registrations.5
registration of trademarks, so far as they are applicable, service marks
shall be registrable, in the same manner and with the same effect as are
trademarks, and when registered they shall be entitled to the protection
provided in this chapter in the case of trademarks. Applications and
procedure under this section shall conform as nearly as practicable to
those prescribed for the registration of trademarks.”).
3
These are Patricia Alexander, Coll’s administrative assistant;
Cherie Buchanan, Coll’s secretary/bookkeeper; and IPM Officer Peter
Georgas, who is affiliated with the Americana Leadership College
Conference Center in Glendale, Arizona.
4
The complaint also alleged counts of unfair competition (both
common law and statutory), copyright infringement, misappropriation
of trade secrets and conversion.
5
The answers also alleged counterclaims for violation of D.C.
Code § 29-514 (now D.C. Code § 29-301.14) (requiring that annual
board meetings comply with by-laws), unlawful trade practices in
violation of D.C. Code § 28-3904, common law unfair competition,
5
On June 21, 2001, the Non-Profits applied for a temporary
restraining order (TRO) to prohibit the Estate from misleading
IPM’s board members and others by soliciting them to attend an
annual board of directors meeting for the “Inner Peace
Movement®” in Osceola, Iowa on July 4, 2001, the same date
that IPM’s annual board meeting was in fact to be held in San
Antonio, Texas. See, e.g., JA 106-07. The Non-Profits alleged
that the Estate’s use of the name “Inner Peace Movement” was
intended to divert attendees from IPM’s official board meeting.
On June 27, 2001 the district court issued a TRO restraining
“the plaintiffs and their officers, agents, servants, employees and
all persons in active concert or participation with any of the
foregoing” until July 9, 2001 from
advertising, promoting, noticing or conducting an annual
meeting of the board of directors of Inner Peace
Movement, Inc., and/or the Inner Peace Movement®,
and/or IPM International, Inc., and/or the plaintiff
corporations or any similar or related entity at any time.
TRO 2. The TRO further enjoined the same parties for the same
time period from contacting any member of IPM’s board of
directors about the Osceola meeting and required them to remove
website notices of the meeting and to provide the names of “all
persons . . . contacted by writing, electronic mail or otherwise,
about annual meetings of Inner Peace Movement® or IPM
International Inc. so that Inner Peace Movement, Inc. may send
remedial notices.” Id. at 3. The TRO directed that the cost of
the mailings be borne by the Estate. Id.
In an order filed March 25, 2004, the district court granted
summary judgment to the Non-Profits on all seven counts of the
complaint and denied the Estate’s motion for partial summary
judgment on the trademark claims and counterclaims as to the
unjust enrichment and conversion.
6
marks “Inner Peace Movement” and “Peace Community
Church.” The court concluded that Coll had not been the owner
of the subject trademarks because (1) there was “no evidence that
Dr. Coll used the IPM and PCC trademarks for his own
pecuniary interest independent of the two organizations,” (2) the
“related companies” doctrine did not apply to a non-profit
corporation and (3) Coll “intended to register the trademarks in
his representative capacity and did not intend them for his
individual benefit.” Summ. J. Order 2-3. The court denied the
individual defendants’ motions for summary judgment on the
claims against them, leaving intact those claims and the
counterclaims asserted by the Non-Profits. Subsequently, the
court granted the Estate’s motions to dismiss the claims against
the three individual defendants and the 20 John Does and the
Non-Profits’ motion to dismiss their counterclaims.
Accordingly, on May 7, 2007, the court entered final judgment
in favor of the Non-Profits.
The Estate filed a notice of appeal on June 6, 2007.
II.
The Estate appeals two of the district court’s rulings: (1) the
March 25, 2004 order granting the Non-Profits summary
judgment and denying the Estate summary judgment on the
Estate’s trademark claims (Counts I and II) and (2) the portion
of the June 27, 2001 TRO requiring that the Estate bear the cost
of sending remedial notices to those persons the Estate had
contacted about its Osceola, Iowa “Inner Peace Movement”
board of directors’ meeting.
A. Summary Judgment on Trademark Claims
“We review the district court’s grant of summary judgment
de novo, applying the same standards as the district court and
drawing all inferences from the evidence in favor of the
non-movant.” Wilburn v. Robinson, 480 F.3d 1140, 1148 (D.C.
Cir. 2007) (citations omitted). “We may affirm only if there is
7
no genuine issue as to any material fact and the moving party is
entitled to judgment as a matter of law.” Id. (citation omitted).
Applying this standard here, we agree with the Estate that the
district court erred in concluding that as a matter of law the Non-
Profits owned the marks at issue and that Coll intended to
register the marks on their behalf. We address first the
underlying issue of ownership through use. See In re ECCS,
Inc., 94 F.3d 1578, 1579 (Fed. Cir. 1996) (“most fundamental
aspect of United States trademark law” is “that trademark
ownership and attendant rights are acquired in the marketplace
by use and that the statute, popularly known as the Lanham Act,
aside from modern ‘intent to use’ law not here involved,
provides only for registration of existing marks”); see also 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 19:3 (4th ed. 2005) (“Although a federal
registration will give the owner of a mark important legal rights
and benefits, the registration does not create the trademark. . . .
[T]he absence or cancellation of a registration does not invalidate
the trademark. It is the use of the mark to identify a single
source which creates exclusive trademark rights.”) (footnote
omitted).
Ordinarily, a party establishes ownership of a mark by being
the first to use the mark in commerce. See Allard Enters., Inc.
v. Advanced Programming Res., Inc., 146 F.3d 350, 358 (6th Cir.
1998) (“ ‘[T]he exclusive right to a trademark belongs to one
who first uses it in connection with specified goods.’ ” (quoting
Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir.
1975) (alteration added))); Ford Motor Co. v. Summit Motor
Prods., Inc., 930 F.2d 277, 292 (3d Cir.) (“With respect to
ownership of unregistered marks, the first party to adopt a
trademark can assert ownership rights, provided it continuously
uses it [sic] in commerce.”), cert. denied, 502 U.S. 939 (1991).
Alternatively, the Lanham Act permits an applicant to establish
ownership under the “related companies” doctrine by showing
that it controlled the first user of the mark. See Secular Orgs. for
8
Sobriety, Inc. v. Ullrich, 213 F.3d 1125, 1130 (9th Cir. 2000)
(“[T]o prevail on its trademark claim, [plaintiff] must
demonstrate that it was the first user of the disputed marks or, in
the alternative, that if [defendant organization] was using the
marks first, it was doing so as a related entity and the benefits of
any such use should therefore inure to [plaintiff].”). “Under the
doctrine of ‘related companies,’ the first use of a mark by a
person ‘controlled by the registrant or applicant for registration
of the mark’ shall inure to the benefit of the controlling entity.”
Id. at 1131 (quoting 15 U.S.C. § 1055). In this case, it is
undisputed that the Non-Profits were the “first users” of the
marks at issue but the Estate contends that Coll controlled the
Non-Profits’ use of the marks, which use therefore inured to his
benefit. The district court rejected this argument, reasoning that
“[b]ecause the defendants are non-profit organizations with no
owners and their actions are controlled solely by their Board of
Directors, no one person has control over any actions of the
defendants, much less control over the uses of the trademark.”
Summ. J. Order 3. We conclude the court erred in holding that
a non-profit corporation cannot be a related company whose use
of the trademark is controlled by a mark’s registrant.
The related companies doctrine is embodied in section 5 of
the Lanham Act, which provides:
Where a registered mark or a mark sought to be
registered is or may be used legitimately by related
companies, such use shall inure to the benefit of the
registrant or applicant for registration, and such use shall
not affect the validity of such mark or of its registration,
provided such mark is not used in such manner as to
deceive the public. If first use of a mark by a person is
controlled by the registrant or applicant for registration
of the mark with respect to the nature and quality of the
goods or services, such first use shall inure to the benefit
of the registrant or applicant, as the case may be.
9
15 U.S.C. § 1055. The Lanham Act defines a “related company”
as “any person whose use of a mark is controlled by the owner
of the mark with respect to the nature and quality of the goods or
services on or in connection with which the mark is used.” Id.
§ 1127. The statute does not expressly require formal corporate
control, as the district court suggested. Instead, the statute
requires control over only the “use of a mark . . . with respect to
the nature and quality of the goods or services,” id., which may
include not only corporate control but also licensing agreements
and other types of oversight. See, e.g. Turner v. HMH Pub. Co.,
380 F.2d 224, 229 (5th Cir. 1967) (concluding under 15 U.S.C.
§ 1055 plaintiff as licensor “introduced ample evidence to show
that [it] fully controlled and dictated the nature and quality of the
goods and services used in connection with the trade and service
marks by the several [independently owned] licensees”); see also
Carpenter v. Marini, 2006 WL 2349586, at *6 (D. Conn. July 11,
2006) (“In certain cases, an individual may control the nature
and quality of the goods or services in connection with which a
mark is used even if he or she does not own the company that is
using the marks.”); 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 18:51 (4th ed. 2005)
(term “related” “is not limited to control of a company in
general” but “simply refers to control over the ‘nature and
quality of the goods and services in connection with which the
mark is used.’ ” (quoting Roberts, The New Trademark Manual
20 (1947)); id. (although “superficial reading of the Lanham Act
‘related company’ provisions might lead one to the conclusion
that the ‘companies’ (meaning ‘any person’) must be ‘related’ by
some form of stock ownership, such as are parent and subsidiary
corporations,” . . . “[i]n fact, during the legislative hearings, the
Department of Justice wanted to limit the language to 100
percent controlled subsidiaries, and this was rejected.” (citing
Shinderman, Trademark Licensing: A Saga of Fantasy and Fact,
14 Law & Contemp. Probs. 248 (1949); Taggart, Trademarks
and Related Companies: A New Concept in Statutory Trademark
10
Law,” 14 Law & Contemp. Probs. 234, 241 (1949))). The Estate
has offered sufficient evidence of such control to survive
summary judgment.
In a 2001 declaration, Coll’s ex-wife stated that she had been
“in association” with Coll from 1962 to 1985 and that, “[w]hile
there was a Board of Directors, [her] late husband was always in
complete control of [IPM] and its use of the mark, INNER
PEACE MOVEMENT.” Coll Decl. ¶ 2. In addition, in his 2001
declaration, quondam IPM president Robert Conrad averred that
he had been involved in the IPM program since July 1973 and
that Coll “shut[] down the Board of Directors,” kept IPM
“dormant for 4-5 years: from July 1979 to July of 1983 or 1984”
and founded the “INNER PEACE MOVEMENT Association . . .
to replace [IPM] during its period of dormancy.” Conrad Decl.
¶¶ 3, 6. Conrad further stated that Coll “controlled the use of the
INNER PEACE MOVEMENT mark and merchandizing through
multiple distribution channels.” Id. ¶ 6. According to Conrad,
Coll’s control “extended even to . . . giving specific permission
for each traveling leader and lecturer as to their use of the mark
in merchandizing their lectures and courses.” Id. ¶ 11. Finally,
letters that Coll wrote to the USPTO in response to requests for
“clarification” of his trademark registration applications indicate
that he controlled the content of the materials the Non-Profits
used under the disputed marks. See, e.g., JA 41 (“The applicant,
Dr. Francisco Coll, is the Founder and Director of the PEACE
COMMUNITY CHURCH. There exists a verbal understanding
between the applicant and the Peace Community Church that any
and all materials (being, books, tapes, letterhead, envelops [sic],
brochures, etc.), be reviewed and approved by the applicant prior
to use by the Peace Community Church, which mark is the logo
for said corporation.”); id. at 51 (“The applicant as Founder of
the, the [sic] Inner Peace Movement, determines the materials
the Corporation consistently uses.”); id. at 55 (“The applicant as
President & Founder of the Peace Community Church
determines the materials the Corporation consistently uses.”).
11
These documents put into dispute whether or not Coll controlled
the use of the Non-Profits’ marks from the marks’ first use and
therefore preclude summary judgment on the ownership issue.6
The district court also erroneously found on the evidence
before it that Coll necessarily registered the marks in a
representative capacity on behalf of the Non-Profits. It is not
dispositive, as the court believed, that “[w]hen Dr. Coll
registered the trademarks in 1993, he signed the applications as
‘founder’ and/or ‘president’ of IPM and PCC.” Summ. J. Order
2. The application forms themselves contain indicia that Coll
intended to register the marks in his individual capacity. In
them, Coll identified himself—“Dr. Francisco Coll”—as the
“Applicant” and checked the box next to “Individual” rather than
“Corporation.” See, e.g., JA 30 (IPM service mark application),
33 (PCC service mark application). In light of the contradictory
inferences to be drawn from the applications, summary judgment
was inappropriate.
B. TRO Costs
The Estate also contends the district court erred in requiring
that the Estate pay the cost of mailing the remedial notices
mandated by the TRO. In deciding whether to grant preliminary
injunctive relief, the district court “must consider whether: (1)
the party seeking the injunction has a substantial likelihood of
success on the merits; (2) the party seeking the injunction will be
irreparably injured if relief is withheld; (3) an injunction will not
substantially harm other parties; and (4) an injunction would
further the public interest.” CSX Transp., Inc. v. Williams, 406
F.3d 667, 670 (D.C. Cir. 2005). “The test is a flexible one. ‘If
6
In 1998, the IPM Board amended its by-laws to provide: “The
Founder Dr. Francisco Coll shall have an absolute and overriding
power of veto on any decision made by the Executive Committee at
all times and in all circumstances.” JA 62; see also JA 59 (meeting
minutes).
12
the arguments for one factor are particularly strong, an injunction
may issue even if the arguments in other areas are rather weak.’ ”
Id. (quoting CityFed Fin. Corp. v. Office of Thrift Supervision,
58 F.3d 738, 747 (D.C. Cir. 1995)). “We review the district
court’s weighing of the four factors under the abuse of discretion
standard . . . .” Id. We find no abuse of discretion here.
The TRO did not involve the trademark infringement counts
but rather the Non-Profits’ counterclaim for deceptive trade
practices under section 43(a) of the Lanham Act. Applying the
four injunction factors, the district court concluded that (1) the
Non-Profits had shown a likelihood of success on the merits
because promoting the Osceola, Iowa congress as including a
meeting of the board of directors of “Inner Peace Movement®”
was “likely to be a violation of the Lanham Act, 15 U.S.C.
§ 1125(a),” (2) “immediate and irreparable harm will be incurred
if [the Estate] or those in active concert with them continue to
interfere with the annual meeting of the board of directors of
Inner Peace Movement, Inc.,” (3) the Estate would not be
harmed by issuance of the TRO and (4) injunctive relief was in
the public interest. TRO 1-2. In making these determinations,
the court did not abuse its discretion. The potential for harm to
IPM in the absence of the TRO—the disruption of corporate
business resulting from confusion over the site of the official
IPM board meeting—was both significant and irreparable.
Further, the Non-Profits’ likelihood of success on their deceptive
trade practices counterclaim was substantial. Section 43(a) of
the Lanham Act imposes civil liability on any person who “uses
in commerce any word, term, name, symbol, or device, or any
combination thereof . . . which . . . is likely to cause confusion,
or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or
as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person.” 15 U.S.C.
§ 1125(a)(1)(A). The Estate’s conduct in promoting the
competing “Inner Peace Movement” board meeting at least
13
arguably met the statutory criteria. Finally, the Estate was not
likely to be harmed by the TRO—except to the extent it was
prevented from deceiving persons into attending its own meeting
rather than IPM’s—and the public interest was served because
the deception was mitigated. Because the district court did not
abuse its discretion in issuing the TRO, we reject the Estate’s
challenge to the award of costs thereunder.
Because there remain disputed issues of fact regarding
whether Coll controlled the trademarks under the related
companies doctrine and in what capacity he registered the marks,
neither the Estate nor the Non-Profits are entitled to summary
judgment under Federal Rule of Civil Procedure 56. We
therefore reverse the district court’s March 25, 2004 order
insofar as it granted summary judgment to the Non-Profits on the
Estate’s two trademark claims (Counts I and II). For the same
reason, we affirm the order’s denial of the Estate’s partial
summary judgment motion on the two trademark claims. We
further affirm the district court’s June 27, 2001 temporary
restraining order imposing costs on the Estate because the district
court did not abuse its discretion therein. Finally, we remand to
the district court for further proceedings.
So ordered.