Holy Spirit Ass'n for Unification of World Christianity v. World Peace & Unification Sanctuary, Inc.
| Decision Date | 22 July 2019 |
| Docket Number | 3:18-CV-1508 |
| Parties | HOLY SPIRIT ASSOCIATION FOR THE UNIFICATION OF WORLD CHRISTIANITY Plaintiff, v. WORLD PEACE AND UNIFICATION SANCTUARY, INC. Defendant. |
| Court | U.S. District Court — Middle District of Pennsylvania |
(JUDGE MARIANI)
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.
Plaintiff's 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 Plaintiff's prior rights, and with full knowledge that Sanctuary Church has no right, license, or authority to use Plaintiff's Mark or any confusingly similar variant thereof." (Id. at ¶ 54). HSA-UWC further alleges that Defendant's "unauthorized use of Plaintiff's 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 Plaintiff's 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 theDefendant'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 Plaintiff's 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).
Plaintiff's 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 Plaintiff's 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 andin 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 Plaintiff's 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 Plaintiff's 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 religiousteachings 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 Plaintiff's first, second, third and fourth causes of action. (See generally, Answer, Doc. 13, ¶¶ 51-77).
Following its Answer to the allegations of Plaintiff's 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 Plaintiff's 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...
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