Case: 19-20544 Document: 00515671636 Page: 1 Date Filed: 12/14/2020
United States Court of Appeals
for the Fifth Circuit
United States Court of Appeals
Fifth Circuit
FILED
December 14, 2020
No. 19-20544 Lyle W. Cayce
Clerk
The Unified Buddhist Church of Vietnam, also known as
Giao Hoi Phat Giao Viet Nam Thong Nhat,
Plaintiff—Appellant,
versus
Unified Buddhist Church of Vietnam - Giao Hoi Phat
Giao Viet Nam Thong Nhat, doing business as Van Phong II
Vien Hoa Dao; Dang Pham, also known as Thich Giac Dang;
Steven Dieu; Que Phuong Bui; Phuong Que Bui,
Incorporated,
Defendants—Appellees.
Appeal from the United States District Court
for the Southern District of Texas
USDC No. 4:17-CV-1433
Before Owen, Chief Judge, and Dennis and Haynes, Circuit Judges.
Per Curiam:*
*
Pursuant to 5th Circuit Rule 47.5, the court has determined that this
opinion should not be published and is not precedent except under the limited
circumstances set forth in 5th Circuit Rule 47.5.4.
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We address the trademark violation and accounting allegations
brought by a church that calls itself the Unified Buddhist Church of Vietnam
(the “Unified Church”) against a Texas nonprofit with disputed connections
to that church, an entity that calls itself Unified Buddhist Church of Vietnam
– Giao Hoi Phat Giao Viet Nam Thong Nhat (“UBCV Texas”). The
subjects of their dispute are (1) UBCV Texas’s use of marks also used by the
Unified Church and (2) a California property that UBCV Texas purchased
for a temple, allegedly with the Unified Church’s assistance, and later sold,
allegedly without the Unified Church’s consent.
The Unified Church sued UBCV Texas, Thich Giac Dang, and
Steven Dieu (collectively, “Defendants”) 1 in federal district court, asserting
various trademark claims and requesting an accounting relating to the
California property. The district court granted summary judgment in
Defendants’ favor, concluding that the Unified Church’s asserted marks had
not acquired a secondary meaning and that an accounting was inappropriate
in this case. We AFFIRM.
I. Background
The Unified Church states that it is an unincorporated organization
founded in Vietnam in 1964 that has attracted members and generated
branches worldwide. It is also known as UBCV and Giao Hoi Phat Giao Viet
Nam Thong Nhat. UBCV Texas is a Texas Buddhist church that was
founded in 1992 and registered in 2014 as a nonprofit Texas corporation.
Dang organized UBCV Texas, and Dieu is its attorney and registered agent.
1
The Unified Church did not bring any trademark claims against Defendants Que
Phuong Bui or Phuong Que Bui, Incorporated, and does not challenge the district court’s
dismissal of its claims against those defendants.
2
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The precise relationship between the Unified Church and UBCV
Texas is disputed. The Unified Church claims that it founded UBCV Texas
and appointed its directors, including Dang as president. The Unified
Church further alleges that it helped UBCV Texas purchase real property in
California, which UBCV Texas subsequently sold without the Unified
Church’s authorization. UBCV Texas disputes these allegations and asserts
that it is not legally connected to the Unified Church in any way.
In 2017, the Unified Church brought suit against Defendants, alleging,
as relevant here, a variety of state and federal trademark claims: false
designation of origin, unfair competition, trademark infringement, dilution,
and unjust enrichment. In particular, the Unified Church claimed that
UBCV Texas used three asserted marks belonging to the Unified Church:
1. “UBCV”;
2. “Unified Buddhist Church of Vietnam”; and
3. “Unified Buddhist Church of Vietnam - Giao Hoi Phat Giao
Vietnam Thong Nhat d/b/a Van Phong II Vien Hoa Dao”
(with and without the additional designation “Texas”)
The Unified Church also sought an accounting in connection with UBCV
Texas’s purchase and sale of the California property. The district granted
summary judgment in favor of Defendants on the Unified Church’s
trademark claims and denied the Unified Church’s request for an accounting.
The Unified Church timely appealed.
II. Jurisdiction & Standard of Review
Because this case involves federal trademark claims under the Lanham
Act, the district court had original jurisdiction over those claims pursuant to
28 U.S.C. §§ 1331 and 1338 and supplemental jurisdiction over the remaining
claims pursuant to 28 U.S.C. § 1367(a). We have jurisdiction under 28
U.S.C. § 1291 to review the district court’s final judgment.
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We review a district court’s grant of summary judgment de novo.
Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 233 (5th Cir. 2010).
Summary judgment is appropriate when “there is no genuine dispute as to
any material fact and the movant is entitled to judgment as a matter of law.”
Fed. R. Civ. P. 56. Although whether a mark has developed a secondary
meaning is usually a question of fact, summary judgment is appropriate if the
record fails to raise a fact question, thus compelling the conclusion that the
moving party is entitled to judgment as a matter of law. See Amazing Spaces,
608 F.3d at 234. In making that determination, we must construe all the
evidence in the light most favorable to the nonmoving party. See id.
III. Discussion
At issue on appeal are (1) a set of trademark claims that turn on
whether the Unified Church’s asserted marks have acquired secondary
meaning and (2) a request for an accounting. We affirm the district court’s
grant of summary judgment in favor of Defendants on both issues. 2
A. Trademark Claims
Under the Lanham Act, an entity can pursue certain claims in
protection of a “trademark” 3—“any word, name, symbol, or device” that a
2
UBCV Texas also contends that we should affirm because the Unified Church
did not raise the seven-factor test for secondary meaning before the district court and
because the Unified Church did not present summary judgment evidence in a form that
would be admissible at trial. As we conclude that summary judgment was appropriate under
the seven-factor secondary meaning test even considering the Unified Church’s submitted
materials, we do not address UBCV Texas’s other arguments.
3
Although the Unified Church’s asserted marks might be more accurately
described as “service marks,” “the legal requirements for both trademarks and service
marks are essentially the same.” J. THOMAS MCCARTHY, 1 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 3.1 (5th ed. 2017 & Supp. 2020); see also
15 U.S.C. § 1127 (defining a “service mark” as a mark used “to identify and distinguish the
services of one person . . . from the services of others”).
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person uses or intends to use “to identify and distinguish his or her goods . . .
from those manufactured or sold by others and to indicate the source of the
goods,” 15 U.S.C. § 1127—so long as the mark “may be distinguished from
the goods of others,” 15 U.S.C. § 1052. The Unified Church raised three
claims under Section 43 of the Lanham Act: false designation of origin, 15
U.S.C. § 1125(a); unfair competition, id.; and dilution, id. § 1125(c). It also
raised equivalent Texas state-law claims, which involve the same threshold
issues as the federal claims and do not require separate discussion. See
Amazing Spaces, 608 F.3d at 235 n.7.
At trial, to sustain all of its trademark claims, the Unified Church
would have to prove that its asserted marks are legally protectable, so we
must assess whether it has raised a disputed issue of material fact on this
point. Viacom Int’l, Inc. v. IJR Capital Invs., L.L.C., 891 F.3d 178, 185 (5th
Cir. 2018). As described above, the Unified Church’s claims against
Defendants rely on three asserted marks: “UBCV”; “Unified Buddhist
Church of Vietnam”; and “Unified Buddhist Church of Vietnam - Giao Hoi
Phat Giao Vietnam Thong Nhat d/b/a Van Phong II Vien Hoa Dao” (with
and without the additional designation “Texas”). The Unified Church has
not received a certificate of registration for these marks from the United
States Patent and Trademark Office.
Although registration affords marks a presumption of validity, see 15
U.S.C. §§ 1057(b), 1115(a), unregistered marks of the sort at issue here can
nonetheless be protectable if their holder can demonstrate both ownership
and distinctiveness, see Viacom, 891 F.3d at 186–87. Defendants do not
specifically challenge the Unified Church’s ownership of the asserted marks,
and we assume without deciding that the Unified Church’s apparent
distribution of documents containing its marks is sufficient to survive
summary judgment on that requirement. See id. at 186 (noting that an
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ownership right “is established by use” and “accrues when goods bearing
the mark are placed on the market” (quotations omitted)).
Even assuming ownership, however, the Unified Church has failed to
raise a fact issue on distinctiveness. “The general rule regarding
distinctiveness is clear: An identifying mark is distinctive and capable of
being protected if it either (1) is inherently distinctive or (2) has acquired
distinctiveness through secondary meaning.” Two Pesos, Inc. v. Taco Cabana,
Inc., 505 U.S. 763, 769 (1992). The Unified Church does not argue that the
marks are inherently distinctive, and so we need only evaluate whether they
have acquired secondary meaning. That question is resolved with reference
to seven factors:
(1) the length and manner of use of the mark,
(2) the volume of sales,
(3) the amount and manner of advertising,
(4) the nature of use of the mark in newspapers and magazines,
(5) consumer-survey evidence,
(6) direct consumer testimony, and
(7) the defendant’s intent in copying the mark.
See Viacom, 891 F.3d at 190. Although no factor is dispositive, see id., the
fifth—consumer survey evidence—is perhaps the most important: we have
“consistently expressed a preference for an objective survey of the public’s
perception of the mark at issue,” Amazing Spaces, 608 F.3d at 248 (quotation
omitted). We address each factor in turn.
As the district court correctly determined, only the first factor—the
length and manner of use of the Unified Church’s asserted marks—has
evidence weighing in favor of the marks having developed protectable
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secondary meaning. The Unified Church has presented evidence that, for
over thirty years, it used the phrases “UBCV,” “Unified Buddhist Church
of Vietnam,” and “Giao Hoi Phat Vietnam Thong Nhat.” 4 That length of
use weighs in favor of the conclusion that the marks may have developed a
secondary meaning.
The Unified Church cites no evidence on the second factor, volume
of sales—only unsupported allegations from its complaint regarding its
fundraising activities. Thus, it has failed to raise a fact question on this factor
and the factor therefore weighs against finding secondary meaning.
Similarly, the Unified Church cites no evidence of advertising, the
third factor. To be sure, the Unified Church did submit a brochure published
in conjunction with the International Buddhist Information Bureau for a
“Commemoration Ceremony,” but it presented no clear evidence as to
whom that document was distributed. The Unified Church also attached to
its complaint a document apparently published in the Saigon Times that may
advertise an event, but the Unified Church has not explained its significance
and we cannot discern its purpose from the face of the document—indeed, it
is in Vietnamese and there is no English translation in the record. See
generally United States v. Valdivia, 680 F.3d 33, 45 (1st Cir. 2012) (holding
that foreign-language documents presented to federal courts must typically
be translated to English in order to be considered by the court). Additionally,
the Unified Church provided miscellaneous badges, pins, and similar
materials, but did not present evidence demonstrating their significance.
Without evidence demonstrating that the Unified Church used any of these
materials to actually advertise itself, we conclude that the Unified Church
4
This last phrase is sometimes stylized as “Giao Hoi Phat Viet Nam Thong Nhat.”
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has failed to raise a fact issue (or prove anything) supporting this factor, and
so this factor weighs against finding secondary meaning.
Nor does the Unified Church present sufficient summary judgment
evidence regarding the use of its asserted marks in newspapers and
magazines, the fourth factor. The Unified Church submitted three news
articles discussing the 2008 death of its former leader Thich Huyen Quang.
Those articles describe Quang’s association with the “Unified Buddhist
Church of Vietnam,” and two of the articles use the acronym “UBCV” as
shorthand for the church. The Unified Church also points to “the numerous
public letters from world leaders and official recognition by prominent
government bodies,” many of which use one or more of the asserted marks.
These articles and letters, however, are each over ten years old and contain
little information about the public’s perception (rather than the journalists’
or political leaders’ perceptions) of the asserted marks. Consequently, the
Unified Church has failed to raise a fact issue on this factor, and it weighs
against finding secondary meaning.
The Unified Church presents no evidence on the fifth factor,
consumer survey evidence—“the most direct and persuasive way of
establishing secondary meaning.” Amazing Spaces, 608 F.3d at 248.
Although the Unified Church is correct that evidence of this kind is “not
required,” Nola Spice Designs, L.L.C. v. Haydel Enters., 783 F.3d 527, 546
(5th Cir. 2015), “in a borderline case where it is not at all obvious that a
designation has been used as a mark, survey evidence may be necessary to
prove trademark perception,” Amazing Spaces, 608 F.3d at 249 (brackets and
quotation omitted). The Unified Church submitted no consumer surveys of
any kind, and so this factor weighs against finding secondary meaning.
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The same is true with the sixth factor, direct consumer testimony
regarding the asserted marks. Because the Unified Church presents no
evidence on this factor, it weighs against finding secondary meaning.
Finally, the Unified Church cites no evidence that Defendants
intended to copy its marks. The Unified Church argues that the “main crux”
of its complaint is that “Dang stole [t]he Unified Church’s local branch” and
then “used its name and storied history” to raise donations. The Unified
Church does not, however, support those arguments with any record
evidence. Rather, the Unified Church relies solely on unsupported
allegations from its complaint concerning Dang’s alleged intent to make off
with UBCV Texas and appropriate the proceeds from the California
property. Without evidence supporting those allegations, this factor weighs
against finding secondary meaning.
We are therefore left with only one factor weighing in favor of
secondary meaning (continued use). The Unified Church’s allegedly lengthy
use of these marks would not be enough, however, for a reasonable jury to
find in its favor regarding secondary meaning given the lack of sufficient
evidence supporting any other factors. See Vision Ctr. v. Opticks, Inc., 596
F.2d 111, 119 & n.22 (5th Cir. 1979) (noting that “courts have summarily
rejected claims of secondary meaning predicated solely upon continued use
of the mark for many years” (quotation omitted)).
To sum up, there is insufficient summary judgment evidence to
support a finding at trial that the terms “UBCV,” “Unified Buddhist Church
of Vietnam,” or “Unified Buddhist Church of Vietnam - Giao Hoi Phat Giao
Vietnam Thong Nhat d/b/a Van Phong II Vien Hoa Dao” have developed a
secondary meaning such that the public thinks only of the Unified Church
when it sees them. Because a reasonable jury could not, on this record,
conclude that the asserted marks developed a secondary meaning, the district
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court correctly granted summary judgment in favor of UBCV Texas on the
Unified Church’s trademark claims.
B. Accounting Claim
The Unified Church also seeks an equitable accounting in connection
with Defendants’ purchase of the California property. Whether as a remedy
or as a standalone claim, a party seeking an accounting must demonstrate that
the facts and accounts are “so complex that adequate relief may not be
obtained at law.” See Hutchings v. Chevron USA, Inc., 862 S.W.2d 752, 762
(Tex. App.—El Paso 1993, writ denied). Thus, an equitable accounting is
not available, for example, when the proponent has not explained why
standard discovery procedures would be inadequate to provide it with
information necessary to obtain adequate relief. Id.
The Unified Church has not explained—below or on appeal—why
normal discovery procedures or other relief at law would be inadequate. See
id. at 762. Accordingly, the district court properly granted summary
judgment in favor of Defendants on the Unified Church’s request for an
accounting.
IV. Conclusion
The district court’s grant of summary judgment in favor of
Defendants is AFFIRMED.
10