Christian Science Board of Directors of First Church of Christ v. Evans

GARIBALDI, J.,

dissenting.

I dissent from the majority’s conclusion that the name “Christian Science Church” is entitled to no protection under trademark law. I find that there is adequate, substantial, and credible evidence to support the trial court’s finding that “Christian Science Church” is a protectible trademark because *317it is a descriptive term that signifies a church’s affiliation with the Mother Church.1 I would enjoin defendants from using the name “Independent Christian Science Church of Plainfield, New Jersey” because it creates a likelihood that the public will confuse defendants’ church with plaintiffs’ church. I would, however, allow defendants to use the name “Plainfield Community Church — An Independent Church Practicing Christian Science” because this name sufficiently differentiates defendants’ church from the Mother Church.2

The finding that “Christian Science Church” is a protected trademark term does not, as the majority, suggests, allow plaintiffs to “appropriate, from the public domain, the common descriptive name of a religion and somehow gain an exclusive right to its use.” See Ante at 306. Plaintiffs concede that “Christian Science,” used as the name of a religion, is generic and “can be used by anyone in that sense.” Anyone can use the term “Christian Science” to refer to his or her religion. But not everyone should be permitted to use “Christian Science Church” to name his or her church.

I

Although this case concerns religious organizations, it is a trademark case. It has long been recognized that principles of *318trademark law applicable to commercial enterprises are equally applicable to cases involving churches and other religious and charitable organizations. See Purcell v. Summers, 145 F.2d 979, 985 (4th Cir.1944); National Board of Young Women’s Christian Ass’n v. Young Women’s Christian Ass’n, 335 F.Supp. 615, 621 (D.S.C.1971); Carnes v. Smith, 236 Ga. 30, 222 S.E.2d 322, 329, cert, denied 429 U.S. 868, 97 S.Ct. 180, 50 L.Ed.2d 148 (1976); Oklahoma Dist. Council v. New Hope Assembly of God, 597 A.2d 1211, 1215 (Sup.Ct.Okl.1979).

The primary issue in this case is whether the term “Christian Science Church” is generic or descriptive. Generic terms “embrace an entire class of products or services, not all of which necessarily emanate from the same source.” 3 R. Callman, Unfair Competition, Trademarks & Monopolies § 18.03 at 7 (4th ed. 1983) (hereinafter Callman). A descriptive term, on the other hand, relates information about the characteristics, ingredients, qualities, purpose, or function of a product. Application of Abcor Development Corp., 588 F.2d 811, 813 (CCPA 1978); Norm Thompson Outfitters, Inc. v. General Motors Corp., 448 F.2d 1293, 1295 (9th Cir.1971). It has generally been said that a generic term can never be protected, while a descriptive term can be protected if it has acquired “secondary meaning” — i.e., the primary significance of the term is the producer rather than the product. See, e.g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976).

Courts have applied a confusing array of tests and standards to determine whether a term is generic or descriptive. One test considers whether the proposed mark is an adjective or a noun. See Callman, supra, ¶ 18.03 at 9 (“The typical descriptive term is an adjective, rather than a noun.”). A second test looks to whether the product is its own “genus” or a member of a “species.” See Abercrombie & Fitch Co. v. Hunting World, Inc., supra, 537 F.2d at 9 (“A generic term is one that refers, or has come to be understood as referring to the genus of which the particular product is a species.”). This approach has been severely criticized and was a catalyst for the 1984 amend*319ment to the Lanham Act. See S.Rep. No. 627, 98th Cong. 2d Sess. 9 (1984) reprinted in 1984 U.S.Code Cong. & Ad.News, 5718, 5726 (hereinafter S.Rep.) (“The factual analysis of whether a product is its own genus or a member of a species is highly confusing. Therefore, the proposed text clarifies the statute to make it clear that the test ... should not be used in future trademark proceedings”). Another test is whether there exists an alternative name for the product. See Primal Feeling Center, Inc. v. Janov, 201 U.S.P.Q. 44, 50 (TTAB 1978) (“Primal Therapy” held to be generic because court found it impossible to talk about this method of therapy without using the name “Primal Therapy.”).

All these approaches fail because they attempt to apply mechanistic tests without properly analyzing the underlying facts and circumstances of each case. As one court cautioned, there is a

decided tendency in trademark cases to argue about the legal labels rather than the underlying analytical inquiries those labels are designed to trigger. The labels themselves are merely springboards for analysis, not a substitute for it. The point is a basic one, but bears repeating, for it is all too often forgotten when the law is reduced to a few conclusory classifications: such abstract categories are analytical touchstones for a much more sophisticated inquiry. Moreover, the precise wording of the verbal summary is necessarily tied to the factual context which spawned the verbal formula, and thus will not be particularly salient in a myriad of factual settings.
[Walt-West Enterprises, Inc. v. Gannett Co., Inc., 695 F.2d 1050, 1057 (7th Cir.1982).]

I believe that the majority’s reliance on In re Bailey Meter Co., 102 F.2d 843 (CCPA 1939), see Ante at 306-307, embodies the type of mechanistic approach criticized by the Seventh Circuit in Walt-West. The Bailey court found that “Boiler Meter” was a generic term for meters used in connection with boilers. But a court could just as easily construe “Boiler Meter” as a term describing the type of meter at issue. Cf. Callman, supra, § 18.03 at 9 (the term “blue automobile” can be viewed as a generic term for all automobiles that are blue or as a descriptive term relating the color of particular cars). The Bailey court’s reliance on manipulate semantic distinctions *320serves only to obscure the fundamental issue in trademark law — what is the primary significance of the term in the minds of potential consumers?

The “primary significance” test was first enunciated by Judge Learned Hand in Bayer Co., Inc. v. United Drug Co., 272 F. 505, 509 (2d Cir.1921): “The single question, as I view it, in all these cases, is merely one of fact: What do the buyers understand by the word whose use the parties are contending?” While Bayer was a trademark cancellation case, the “public perception” test has been applied in noncancellation cases as well. See, e.g., Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 116, 118, 59 S.Ct. 109, 112, 113, 83 L.Ed. 73, 77, 78 (1938) (“Shredded Wheat” classified as generic because it “is the term by which the biscuit in pillow-shaped form is generally known by the public”; for “Shredded Wheat” to be protected, plaintiff “must show that the primary significance of the term in the minds of the consuming public is not the product but the producer”); Application of Abcor Dev. Corp., supra, 588 F.2d at 814 (emphasis in original) (“descriptiveness of a mark ... is to be determined from the standpoint of the average prospective purchaser ”); Application of Andes Candies, Inc., 478 F.2d 1264, 1266 (CCPA 1973) (quoting Application of Automatic Radio Mfg. Co., 404 F.2d 1391, 1396 (CCPA 1969)) (“one must find out how people in the trade and the purchasers use the terms with respect to the involved goods in order to determine whether or not they are descriptive”); see also Callman, supra, § 18.04 at 13 (footnotes omitted) (“Whether a particular word is understood as descriptive will be determined by the reaction of those to whom the trademark is directed in the marketplace. If a considerable portion of the purchasing public considers the word descriptive, then it is so....”).

This focus on the meaning of the term to the public must underlie any true determination of whether a mark is generic and therefore unprotectible. The issue of genericness can arise in many contexts and should logically be governed by a consist*321ent approach, whether it is raised affirmatively to challenge a mark or defensively to defeat a charge of infringement.

The primary significance of a term depends upon the use to which that term is put. A term may be generic when applied to one product and descriptive, suggestive, or arbitrary when applied to another product. Abercrombie & Fitch Co. v. Hunting World, Inc., supra, 537 F.2d at 9 n. 6 (“To take a familiar example ‘Ivory’ would be generic when used to describe a product made from the tusks of elephants but arbitrary as applied to soap”). Therefore, the majority’s conclusion that “Christian Science” is generic when used to refer to the religion founded by Mary Baker Eddy,3 does not answer the question whether “Christian Science” is generic or descriptive when used to name a church.

The “primary significance” test makes it unnecessary to engage in “secondary meaning” analysis. Traditionally, courts have said that a descriptive term is protected only if the primary significance of the term in the minds of the public is the producer rather than the product. See, e.g., Abercrombie & Fitch Co. v. Hunting World, Inc., supra, 537 F.2d at 9. Since the public perception test for classifying a term as descriptive or generic focuses upon the primary significance of the term, no separate secondary meaning analysis is needed.

II

Whether a mark is generic or descriptive is a question of fact. Anheuser-Busch, Inc. v. Stroh Brewery Co., 750 F.2d 631, 635 (8th Cir.1984); WSM, Inc. v. Hilton, 724 F.2d 1320, 1326 (8th Cir.1984); Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 n. 12 (5th Cir.1980), cert, denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981); Salton, Inc. v. Cornwall Corp., 477 F.Supp. 975, 986 (D.N.J.1979); Callman, supra, § 18.03 at 10 n. 40 (Cumm.Supp.1986). I therefore give great deference to the findings made by the trial court. Such findings are considered *322binding on appeal when supported by adequate, substantial, and credible evidence.- Only when factual findings are “so manifestly unsupported by or inconsistent with the competent, relevant and reasonably credible evidence as to offend the interests of justice” should we disturb the findings on appeal. Rova Farms Resort, Inc. v. Investors Ins. Co., 65 N.J. 474, 484 (1974) (quoting Fagliarone v. Twp. of N. Bergen, 78 N.J.Super. 154, 155 (App.Div.), certif. denied, 40 N.J. 221 (1963)).

The trial court’s finding that for approximately the last 100 years the primary significance of the term “Christian Science Church” has been to signify a church affiliated with the Mother Church is amply supported by the evidence in this case. During the eight day trial plaintiffs introduced extensive evidence in the form of testimony from five witnesses. One of these witnesses, Professor Wilson, the Collord Professor of Religion at Princeton University, testified that the Christian Science Church is “quite extraordinary” in its “highly associative nature, i.e., the strong links between the Mother Church, its affiliated churches, service organizations and publication[s].” He further testified that “the predominant, prevailing, almost exclusive” usage of “Christian Science Church” is to refer to “the Mother Church in Boston, branch churches affiliated with it, and [its] other organizations as well.” Professor Wilson’s testimony was confirmed by extensive documentary evidence introduced by plaintiffs, including dictionary listings, magazines, newspapers, and government publications, all indicating that the term “Christian Science Church” is widely recognized as referring to churches affiliated with the Mother Church.

There was also evidence to indicate that the term “Christian Science” has affiliative significance when used to describe other activities engaged in by plaintiffs. Plaintiffs own registered trademarks that incorporate the phrase “Christian Science” for the following publications: The Christian Science Monitor, The Christian Science Journal, Christian Science Quarterly, Christian Science Sentinel, and The Herald of Christian Science. Plaintiffs also own federally registered trademarks in *323the term “Christian Science” for library services — namely, providing and maintaining reading rooms where religious writings, publications, and recordings are available. Even the Appellate Division would afford protection to the Mother Church for the use of the term “Christian Science Reading Room,” recognizing that the term is descriptive and has acquired a secondary meaning. 199 N.J.Super. at 171. Under Section 7(b) of the Lanham Act each of plaintiffs’ certificates of registration is

prima facie evidence of the validity of the registration, registrant’s ownership of the mark, and of registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate....
[15 U.S.C.A. § 1057(b).]

The validity of these marks is not disputed. In addition, plaintiffs introduced evidence of numerous additional “Christian Science” organizations and entities known to the public to be affiliated with the Mother Church: Christian Science Committees on Publication, the Christian Science Board of Education, the Christian Science Board of Leadership, and Christian Science Armed Forces. These uses of the term “Christian Science” support the trial court’s finding that its primary significance is source identification with the Mother Church.

Without any explanation, the majority of the Appellate Division rejected the trial court’s finding on these points. Instead, it merely concluded, without pointing to any evidence, that the term “Christian Science,” when used in the name of defendants’ church, is generic because plaintiffs failed to show that the primary significance of the term in the mind of the public is the producer (Mother Church) and not the product (the religion). 199 N.J.Super. at 171. A major fallacy in the Appellate Division’s opinion, as well as this Court’s majority opinion, is the failure to recognize that a term may be a dual-mark and still be protectible. In addition to clarifying the test for genericness, the 1984 Lanham Act amendments and accompanying Senate Report addressed particular concerns raised by “dual-marks”— marks that may serve to identify both the product and the producer. It is this very potential for dual identification that necessitates an inquiry into the primary function of a mark *324(there would be no “primary” function if there were only one function). The mere fact that a mark has come to identify a product does not mean it is not entitled to protection. It is especially likely, when a product is unique, that its trademark will indicate the product as well as the producer. “But this is not conclusive of whether the mark is generic. The salient question is the primary significance of the term to the consumer. If the term indicates a product of a single producer to the consumer, it is a valid trademark.” S.Rep., supra, 1984 U.S. Code Cong. & Ad.News at 5722.

In sum, there is more than adequate evidence to establish that the public’s understanding of the term “Christian Science Church” for the last hundred years has been to identify a particular church organization with the Mother Church, and its affiliated churches, publications, and service organizations. This conclusion is supported by direct evidence of the affiliative use of the term “Christian Science” by the public to identify plaintiffs, churches, publications, reading rooms, and other organizations and the indirect documentary evidence submitted by the plaintiffs.

The fact that “Christian Science Church” is not the “official” name of the Mother Church has no effect on whether the term is protected. Unofficial names are protected if their primary purpose is source-denoting. See, e.g., Volkswagenwerk, AG, v. Smith, 471 F.Supp. 385 (D.N.M.1979) (the registered marks “Bug,” “Beetle,” and “VW” were protectible marks even though the “official” name of plaintiffs car was “Volkswagen”); Metropolitan Opera Ass’n Inc. v. Metropolitan Artists, Inc., 27 Misc.2d 572, 212 N.Y.S.2d 435 (Sup.Ct.1961) (the term “The Met” was protectible even though the “official” name of plaintiff organization was “Metropolitan Opera Association”).

III

Having determined that “Christian Science Church” is protected under trademark law, I would next inquire whether the *325name of defendants’ church is sufficiently similar to that of plaintiffs’ Church to cause a danger of confusion. It is not necessary that plaintiffs prove actual confusion; it is necessary only that they prove a likelihood of confusion. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984); United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 142 (3rd Cir.1981); Scarves By Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1175 (2d Cir.1976). Again, likelihood of confusion is a factual question. Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112, 115 (2d Cir.1984); John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 973 (11th Cir.1983); Better Business Bureau of Metropolitan Houston, Inc. v. Medical Directors, Inc., 681 F.2d 397, 400 (5th Cir.1982). And, again, I conclude that there is sufficient evidence to support the trial court’s finding that defendants’ use of the words “Christian Science Church” in the name of their church creates the danger that the public will confuse their church with plaintiffs’ Church.

The phrase “of Plainfield, New Jersey” merely denotes the location of the Church and does nothing to indicate that defendants are unaffiliated with plaintiffs. The word “Independent” may go unnoticed or unused by those referring to the church. Moreover, the term is an ambiguous one that does not clearly indicate that defendants have no connection with plaintiffs. Other courts have held that addition of the word “independent” or similar modifying term to a protected name is insufficient to avoid a likelihood of confusion. See Carnes v. Smith, supra, 236 Ga. 30, 222 S.E.2d 322 (former branch of The United Methodist Church whose name had been “Noahs Ark Methodist Church” enjoined from using name “Noah’s Ark Methodist Church (Independent)); Lutheran Free Church v. Lutheran Free Church (Not Merged), 237 Minn. 332, 141 N.W.2d 827 (1966) (addition of the parenthetical “(Not Merged)” to protected name of church insufficient to avoid likelihood of confusion); Talbot v. Independent Order of Owls, 220 F. 660 (8th Cir.1915) *326(defendants enjoined from using name “Independent Order of Arks”).

I would, however, allow defendants to use the name “Plain-field Community Church — An Independent Church Practicing Christian Science.” Here, the primary name of the church is “Plainfield Community Church” and the remainder of the title is merely an explanatory phrase describing the church. The phrase “Christian Science” is used to refer to the religion rather than name the Church. I believe that defendants’ proposed name is sufficiently distinct from the name of plaintiffs’ church to avoid a danger of confusion in the minds of the public.

IV

The result I reach today finds support in Jandron v. Zuendel, 139 F.Supp. 887 (N.D.Ohio 1955). In that case, the Mother Church sought to enjoin members of the Third Church of Christ, Scientist, in Akron, Ohio from using the term “Church of Christ, Scientist,” “Christian Science Church,” or any misleading variation of these words in their name. The court concluded that the term “ ‘Christian Science Church’ has one meaning, i.e. that it is a bona fide church of the Christian Science denomination related to The Mother Church.” Id. at 889. The court stressed that the injunction was necessary to “prevent defendants from appropriating to themselves the good will and identity which, in the public mind, attach to the term ‘Church of Christ, Scientist,’ or ‘Christian Science Church.’ ” Id. at 889.

The Jandron court relied primarily on Purcell v. Summers, 145 F.2d 979 (4th Cir.1944), wherein defendants broke away from the Methodist Episcopal Church, South, and set up a “rival” church with the same name. The court enjoined defendants from using this name because of the confusion it might cause in the minds of the public. Purcell involved the use of an identical name, but I think it is clear from the court’s *327concern with the danger of confusion that it would have enjoined defendants’ use of a different name if it were similar enough to plaintiffs’ name to mislead the public. The court recognized that some uses of the words “Methodist” and “Episcopal” might be generic. Id. at 988. The court stressed, however, that “defendants are not proposing to use either of these words in a new name so different from the old that no confusion could result.” Id.

The majority’s reliance on McDaniel v. Mirza Ahmad Sahrab, 27 N.Y.S.2d 525 (Sup.Ct.), aff’d without published opinion, 262 A.D. 838, 29 N.Y.S.2d 509 (1941), New Thought Church v. Chapin, 159 A.D. 723, 144 N.Y.S. 1026 (1913), Board of Provincial Elders of the Moravian Church v. Jones, 273 N.C. 174, 159 S.E.2d 545 (1968), and Rosicrucian Fellowship v. Rosicrucian Fellowship Non-Sectarian Church, 39 Cal.2d 121, 245 P.2d 481 (1952), cert, denied, 345 U.S. 938, 73 S.Ct. 828, 97 L.Ed. 1365 (1953) is misplaced.

In McDaniel, plaintiffs sought to enjoin defendants from using the term “Baha’i” in connection with their meetings, lectures, classes, social gatherings, and other activities. There is no indication in the court’s opinion that plaintiffs showed that any particular application of the word “Baha’i” had affiliative significance. In essence, plaintiffs attempted to secure an exclusive right to use the name of their religion, and the court correctly ruled that they could not do so. McDaniel is thus inapposite because in the present case plaintiffs are not trying to prevent all uses of the words “Christian Science”; they are merely seeking to protect the name of their church. In National Spiritual Assembly of the Baha’is Under the Hereditary Guardianship Inc. v. National Spiritual Assembly of the Baha’is 150 U.S.P.Q. 346 (N.D.Ill.1966), the Baha’i organization did try to enjoin a specific use of the term “Baha’i” that had affiliative significance. The court held that the name “National Assembly of the Baha’is” was protected.

*328The decision in New Thought seems to have been based, at least in part, on the court’s assumption that a combination of generic words cannot be protected:

It is conceded that it cannot successfully claim a monopoly of the words “new thought,” or the word “church,” but it claims the right to monopolize the combination of these words. This claim seems to us untenable. The words are all generic in character and of common use and are neither peculiar, distinctive, nor descriptive. [159 A.D. at 724, 144 N.Y.S. at 1027.]

This assumption is clearly against the weight of authority. See, e.g., In re National Data Corp., 753 F.2d 1056 (Fed.Cir. 1985) (the term “The Cash Management Exchange” must be considered as a whole); Specialty Brands, Inc. v. Coffee Bean Distribs., 748 F.2d 669 (Fed.Cir.1984) (the term “Spice Islands” as applied to tea must be considered as a whole).

In Board of Elders, the Supreme Court of North Carolina reversed a lower court order temporarily enjoining defendants from using the term “Moravian” in the name of their church. The court based its decision on a finding that plaintiff had failed to prove a danger of imminent irreparable injury sufficient to outweigh the burden a temporary injunction would place on defendants. 273 N.C at 182-83, 159 S.E.2d at 552. The court emphasized that it did not reach the ultimate question of whether the term “Moravian” was protected by trademark law:

It also cannot be determined upon this record whether the word “Moravian,” used in connection with a church, is a generic, descriptive term primarily signifying acceptance of certain doctrines, sacramental ceremonies and theological beliefs, or is a word which primarily signifies an affiliation with the plaintiff and its associated groups.
*********
The defendants should not be enjoined from their use of “Moravian” in the name of their church until the matter is finally heard and the exclusive right of the plaintiff, and its affiliated groups, to use it is established by evidence. [Id. at 185, 159 S.E.2d at 553-54.]

Finally, Rosicrucian Fellowship was not a trademark case. That case concerned primarily the allocation of property rights between two “rival” groups practicing the “Rosicrucian Philosophy.” The trial court issued an order, inter alia, enjoining *329defendant organization from using the name “Rosicrucian Fellowship.” The California District Court of Appeals reversed on the ground that defendant was entitled to use the name under the terms of a contract between it and the widow of the organization’s founder. 220 P.2d 66, 76 (Cal.App.1950). The Supreme Court of California affirmed without any discussion of trademark law. 39 Cal.2d 121, 245 P.2d 481 (1952). Since trademark law played no- part in the court’s decision, Rosicrucian Fellowship is not applicable to the present case.

Y

Granting protection to the name “Christian Science Church” would not violate defendants’ first amendment rights. Defendants are free to practice their religion and can use the term “Christian Science” in any way that does not infringe on plaintiffs’ mark. Trademark infringement is not protected by the Constitution. See Purcell v. Summers, supra, 145 F.2d at 987; Jandron v. Zuendel, supra, 139. F.Supp. at 889.

For the reasons stated above, I would reverse the judgment of the Appellate Division and reinstate the order entered by the trial court.

Justice O’HERN joins in this opinion.

For affirmance —Chief Justice WILENTZ, and Justices CLIFFORD, HANDLER, POLLOCK and STEIN — 5.

For reversal — Justices O’HERN and GARIBALDI — 2.

The trial court explicitly rejected defendants’ argument that "Christian Science Church” is a generic term. See 191 N.J.Super. 411, 425 (Ch.Div.1983). The majority is therefore incorrect when it asserts that the court simply assumed that "Christian Science Church” is a protectible trademark. See Ante at 302.

The trial court enjoined defendants’ use of any name or designation that includes any of the following terms or phrases: "Church of Christ, Scientist"; "Christ Scientist”; “Christian Science Church"; and "Christian Science." Defendants do not appeal the restraint on the terms "Church of Christ, Scientist” or “Christ Scientist.” 199 N.J.Super. 160, 164 (App.Div.1985). I would hold that the use of the word “Christian Science Church” is a protectible trademark. Whether the use of the term "Christian Science" in a particular church name is prohibited depends upon whether that particular name is likely to mislead the public into believing the church is affiliated with the Mother Church.

I do not express any opinion on this issue.