Ananda Marga Universal Relief Team of India v. Foundation Amurt

• Decision Date: 11 May 2016
• Docket Number: 91161067,91125116
• Parties: Ananda Marga Universal Relief Team of India Ananda Marga Universal Relief Team, Inc. v. Foundation Amurt (Switzerland)
• Court: Trademark Trial and Appeal Board

Ananda Marga Universal Relief Team of India Ananda Marga Universal Relief Team, Inc. v. Foundation Amurt (Switzerland)

Nos. 91125116, 91161067

United States Patent and Trademark Office, Trademark Trial and Appeal Board

May 11, 2016

This Opinion is Not a Precedent of the TTAB

David M. Kelly, Linda K. McLeod of Kelly IP, LLP for Ananda Marga Universal Relief Team of India and Ananda Marga Universal Relief Team, Inc.

Robert E. Bushnell of R.E. Bushnell & Law Firm for Foundation Amurt (Switzerland)

Before Cataldo, Mermelstein and Heasley, Administrative Trademark Judges.

By the Board:

Applicant Foundation Amurt (Switzerland), a nonprofit corporation based in Switzerland, has filed two applications to register the word and design mark

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on the Principal Register for use in connection with the following goods and services:

• charitable fund raising in International Class 36,

• educational services, namely, conducting general education classes, seminars, conferences and workshops in the field of charitable services, including international disaster relief management and operations to children, woman and poor people; and providing educational classes to children, woman and poor people, and distributing educational materials in connection therewith, in International Class 41,

• charitable services, namely, providing temporary accommodation, food, clothing, medicines and medicinal materials to children, women and poor people, in International Class 42, ^[1] and

• Computer goods in International Class 9.^[2]

Opposers Ananda Marga Universal Relief Team of India, ("AMURT India") and Ananda Marga Universal Relief Team, Inc., a nonprofit incorporated in Colorado ("AMURT Colorado") oppose both applications, claiming prior rights in the United States in inter alia the following word and design service mark:

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For the reasons that follow, the oppositions are sustained.

I. The Parties' Pleadings

In January 2002 and June 2004, Opposers filed Notices of Opposition to the two applications. As grounds for opposition, Opposers claimed prior rights in the United States in the trade names and marks AMURT and ANANDA MARGA UNIVERSAL RELIEF TEAM, and the word and design mark

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Opposers claimed that registration of the applied-for mark would likely cause confusion under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), and dilution of the distinctiveness of its marks under Trademark Act Section 43(c), 15 U.S.C Section 1125(c). Applicant, in its answers, denied the salient allegations of the notices of opposition and asserted various affirmative defenses.

The oppositions were consolidated in a September 21, 2004 order ^[3] designating Opposition No. 91125116 as the "parent" case, in which all papers were to be filed. All references in this opinion are to the TTABVUE record in Opposition No. 91125116 unless otherwise indicated. The consolidated proceeding was suspended from September 2004 until July 2009 due to the parties' settlement negotiations and parallel civil litigation in a Swiss court. When proceedings resumed, Opposers filed amended Notices of Opposition that amplified upon their claims of likelihood of confusion and withdrew their claim of dilution.^[4] Applicant once again denied the salient allegations and reasserted its affirmative defenses.^[5]

II. Background

The parties are nonprofit charitable organizations that provide humanitarian services, such as disaster relief, food, shelter, and education, to those in need throughout the world. They share a common background. In 1955, P.R. Sarkar founded Ananda Marga, a spiritual meditation organization based in India.^[6] The term "Ananda Marga, " from Indian Sanskrit, means "path of bliss."^[7] The principal tenets of the Ananda Marga organization are to seek self-realization through meditation and to provide selfless service to those in need.^[8] In keeping with the second tenet, the organization began in 1970 to provide disaster relief services under the name "Ananda Marga Universal Relief Team, " or AMURT.^[9]

Followers of the founder, P.R. Sarkar, formed the Opposer and Applicant organizations. Opposer AMURT Colorado, formed as an unincorporated association Opposition No. 91161067 in the United States in 1973, was incorporated in Colorado in 1985, ^[10] and has, according to Opposers' witnesses, provided relief services under its trade names and marks, both in the U.S. and abroad, since its inception.^[11] Opposer AMURT India was formed in 1970 by P.R. Sarkar to provide disaster response on Indian soil.^[12]

Applicant, Foundation AMURT (Switzerland) was founded in 1985 by Bhola Sah, an early adherent of P.R. Sarkar, ^[13] and has, over the ensuing years, provided disaster relief and other humanitarian services in numerous impoverished countries outside the U.S. In the years following P.R. Sarkar's death in 1990, ^[14] the parties cooperated with one another, but by 2002, a schism developed and their paths diverged. Applicant sought greater independence from Opposer AMURT India, ^[15] and began to use and register AMURT marks in various countries in its own name, disregarding Opposers' demand that it cease and desist from this practice.^[16]

This proceeding is one part of the parties' larger global dispute.

III. Standing

Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023, 1025 (Fed. Cir. 1999) (the threshold for determining standing is whether a plaintiff's belief in damage has a reasonable basis in fact and reflects a real interest in the case).

Opposer AMURT Colorado claims ownership and prior use of the AMURT trade names and trademarks in commerce in the United States. Opposer AMURT India has no offices in the United States, ^[17] but was given worldwide control over the AMURT trademarks and trade names in 2002, according to Opposers, ^[18] so that AMURT Colorado's use of the marks inures to its benefit. 15 U.S.C. § 1055. AMURT India supports AMURT Colorado's efforts to register the AMURT logo in the United States.^[19]

Opposers have made of record^[20] Opposer AMURT Colorado's Application Serial No. 76179691 and file history for the word and design mark:

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filed on December 11, 2000 for use in connection with:

• charitable fundraising; provision of cash grants and low-interest loans to people suffering from poverty, deprivation or natural or man-made disasters in International Class 36,

• disseminating educational materials to people suffering from poverty, deprivation or natural or man-made disasters" in International Class 41, and

• providing charitable services in the form of food, water, health care, shelter, informational materials, and agricultural supplies to people suffering from poverty, deprivation or natural or man-made disasters in International Class 42.

In Office actions dated August 5-6, 2002, action on AMURT Colorado's application was suspended pending disposition of Applicant's subject Application No. 76229324. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185, 189 (CCPA 1982) (Proof that a trademark application was suspended because of a registrant's registration is sufficient to establish standing.)

Opposers use this mark in communications with donors and prospective donors, who they claim are likely to be confused by Applicant's registration and use of a very similar mark for the same sort of humanitarian services.^[21] Thus, Opposers clearly have a personal stake in the outcome of this proceeding. See UVeritech, Inc. v. Amax Lighting, Inc., 115 U.S.P.Q.2d 1242, 1245 (TTAB 2015).

IV. The Record

The trial record includes the following testimony and evidence:

A. Opposers' evidence.

1. Notice of reliance on printed publications and wire service articles available to the general public.^[22]

2. Notice of reliance on USPTO TESS/TARR printouts and file histories for Application Serial Nos. 76179691 and 75542671.^[23]

3. Deposition testimony of Martin Adams, with exhibits.^[24]

4. Deposition testimony of Peter Sage, with exhibits.^[25]

5. Rebuttal deposition testimony of Peter Sage, with exhibits.^[26]

6. Exhibits from cross-examination of Bhola Sah.^[27]

B. Applicant's evidence.

1. Deposition testimony of Krishna Puranmalka, with exhibits.^[28]

2. Deposition testimony of Wilfried Mende, with exhibits.^[29]

3. Deposition testimony of Bhola Sah, vols. I and II, with exhibits.^[30]

V. Preliminary Issues

A. Opposers' Objections

As a preliminary matter, Opposers object to all testimony and exhibits that Applicant, a foreign-based organization, has adduced pertaining to its use or registration of its applied-for mark outside the United States.^[31] Such extraterritorial use, Opposers insist, is irrelevant to establishing trademark rights in the United States. See e.g., Person's Co. Ltd. v. Christman, 900 F.2d 1565, 14 U.S.P.Q.2d 1477 (Fed. Cir. 1990). This objection relates more to the probative value of Applicant's evidence than its admissibility, so this evidence has been considered, and its probative value vel non will be addressed substantively in the course of this decision. Similarly, Opposers object to Applicant's introduction of the Swiss court decision from the civil litigation that occasioned the suspension of these proceedings.^[32] The decision by the Swiss Commercial Court for the Canton of Zurich found, in essence, that Foundation AMURT (Switzerland) was independent from AMURT India, and that AMURT India, in consequence, could not enjoin or control Foundation AMURT (Switzerland)'s use of the AMURT and ANANDA MARGA UNIVERSAL RELIEF TEAM marks in Switzerland.^[33] Applicant's director, Bhola Sah, testified that he agreed with this outcome.^[34]...