U.S. Conf. of Catholic Bishops v. Media Research

• Citation: 432 F.Supp.2d 616
• Decision Date: 12 May 2006
• Docket Number: No. CIV.A.1:05 693.,CIV.A.1:05 693.
• Parties: UNITED STATES CONFERENCE OF CATHOLIC BISHOPS, Plaintiff, v. MEDIA RESEARCH CENTER, Defendant.
• Court: U.S. District Court — Eastern District of Virginia

432 F.Supp.2d 616

UNITED STATES CONFERENCE OF CATHOLIC BISHOPS, Plaintiff, v. MEDIA RESEARCH CENTER, Defendant.

No. CIV.A.1:05 693.

United States District Court, E.D. Virginia, Alexandria Division.

May 12, 2006.

COPYRIGHT MATERIAL OMITTED

G. Franklin Rothwell, Steven Lieberman, Anne M. Sterba, Rothwell, Figg, Ernst & Manbeck, P.C. (Washington, D.C.), Richard C. Sullivan, Jr., Reed Smith LLP (Falls Church, Virginia), Counsel for Plaintiff United States Conference of Catholic Bishops.

Steven J. Wadyka, Jr., Janet Shih Hajek, Kevin B. Bedell, Greenberg Traurig, LLP (McLean, Virginia), Counsel for Defendant Media Research Center.

MEMORANDUM ORDER

LEE, District Judge.

THIS MATTER is before the Court on Defendant Media Research Center's (hereinafter "MRC") Motion for Summary Judgment. This case concerns the claim of the United States Conference of Catholic Bishops (hereinafter "USCCB") that MRC infringed on Plaintiff's trademark by utilizing a mark confusingly similar to the mark that Plaintiff uses to identify Plaintiff's news service. The issue before the Court is whether to grant Defendant's Motion for Summary Judgment where Plaintiff's supposed trademark is merely descriptive and therefore not eligible for protection under the Lanham Act without having acquired secondary meaning, and where Plaintiff has not shown a likelihood of confusion between the two marks. Plaintiff is an organization comprised of all of the active Catholic bishops in the United States. For over eighty years, Plaintiff has run a news service under the name Catholic News Service which reports on matters of interest to the Catholic church. On March 2, 2001, Plaintiff filed for a registration for the mark "Catholic News Service" as a descriptive mark, and Plaintiff's registration was issued on October 8, 2002. Plaintiff occasionally uses "CNS" as an abbreviation for "Catholic News Service" in its news stories or publications.

Defendant MRC is a non-profit corporation which launched its own general news wire reporting on matters of general interest in 1998. Defendant originally used the name "Conservative News Service," and came up with the name "CNSNews.com" to brand its product to reflect its website URL. After the United States Patent and Trade Office (hereinafter "USPTO") denied MRC's application for a trademark on "Conservative News Service," MRC created the name "Cybercast News Service" so that it could maintain the website URL that it owned at the time. In February 2000, a client of Catholic News Service informed Catholic News Service that another entity was using the initials "CNS," and since that time, Plaintiff has been aware of Defendant's use of these initials. MRC sought, and was granted, a federal registration for its trademark, "CNSNews.com-Cybercast News Service (with design)." MRC's news service operates exclusively through the internet at the web address "www.cnsnews.com," and its stated goal is to provide accurate, balanced, and timely news, appealing to a broad base of leadership across the political spectrum. MRC brands its news service as "CNSNews.com" and uses at least that identifier to identify its products and services. Plaintiff filed this suit in 2005 claiming that Defendant's use of "CNS" could confuse customers and cause a loss of business for Plaintiff. The Court now grants Defendant's Motion for Summary Judgment because Plaintiff's trademark is merely descriptive and thus not protected under the Lanham Act without evidence of secondary meaning, and Plaintiff cannot show a likelihood of confusion between Plaintiff's and Defendant's marks.

I. BACKGROUND

This case concerns the claim of the USCCB that Defendant MRC infringed upon Plaintiff's trademark by using a confusingly similar mark when Defendant abbreviated its name to "CNS," "CNS News," and "CNSNews.com."

Plaintiff's Organization

Plaintiff USCCB is comprised of all of the active Catholic bishops in the United States, and Plaintiff conducts much of its activity through committees. For over eighty years, the USCCB has run a news service on issues of interest to the Catholic church. In 1989, Plaintiff changed the name of its news service from "National Catholic News Service" to "Catholic News Service." Plaintiff occasionally used the abbreviation "CNS." Catholic News Service primarily provides news stories to clients and sells publishing rights in USCCB content. Plaintiff sells its content to other publications, primarily Catholic diocesan newspapers, and maintains a web site at www.catholicnews.com. Nearly all of Catholic News Service's clients are United States Catholic diocesan newspapers, Catholic broadcasters, and Catholic foreign news organizations, although Plaintiff has had secular news institutions such as ABC News, CBS News, Newsweek, The New York Times, Reuters, Time Magazine, U.S. News and World Report, and The Washington Post as clients. The largest part of the Catholic News Service's funding, however, comes from diocesan publications. Plaintiff does only minimal advertising, confined to Catholic trade publications, for its news service, although USCCB has attended several secular conventions for journalists. Plaintiff's news organization identifies itself both as "Catholic News Service" and as "CNS."

While Plaintiff's style book indicates that Catholic News Service writers should use "CNS" only as a second reference after "Catholic News Service," the style book also indicates that datelines should appear as: "WASHINGTON (CNS)." Plaintiff, however, lists itself in directories as "Catholic News Service," not as "CNS," and its web page bears the title "Catholic News Service" in large bold letters across the top, with secondary references to "CNS" in smaller type throughout the web page. Primarily, Plaintiff receives press passes issued to reporters working for "Catholic News Service," although Plaintiff claims there have been six press passes identifying the news service only as "CNS." Plaintiff's publications contain both a byline and a dateline. Plaintiff's policy is to use "CNS" in the dateline and "Catholic News Service" in the byline.

On March 2, 2001, Plaintiff obtained Registration Number 2,630,640 for the mark "Catholic News Service ('news service' disclaimed)" as a descriptive mark for "printed materials, namely newsletters, periodicals and brochures, containing information about current affairs, including news, features, and photographs, from a Catholic perspective" and "distribution of news, features, and photographs of current events from a Catholic perspective, via a global computer information network, postal service and print publications." This registration was issued on October 8, 2002. Plaintiff has not done any research, nor performed any surveys or studies indicating the degree to which consumers recognize "CNS" as identifying Plaintiff's organization.

Third Party Uses of "CNS"

Defendant points to thirty-five thirdparty uses of "CNS," at least four of which are news services. Catholic News Service has not objected to the vast majority of these uses. The news organizations using "CNS" publish stories on religion and on the topics cited by Plaintiff as examples of topics covered both by Catholic News Service and CNSNews.com-Cybercast News Service. Such topics include the Earth Summit, stem-cell research, and the prescription drug RU-486. For example, the Capital News Service of the University of Maryland's College of Journalism uses "CNS" prominently on its web site, albeit not in its bylines or datelines. Capital News Service has published stories about human cloning, stem-cell research, and even actions taken by Plaintiff USCCB.

Additionally, City News Service in California, Copley News Service, Capital News Service, and CNS News 22 all use "CNS" in connection with their distribution of news. These entities have published articles on topics also covered by Catholic News Service. Such topics include litigation regarding child molestation claims against Catholic priests; the Terri Schiavo affair; same-sex marriage; RU-486, the so-called "morning after pill;" and the human response to natural disasters. Plaintiff has never objected to these entities using "CNS."

The Cardinal Newman Society is an organization dedicated to renewing and strengthening Catholic identity at Catholic colleges and universities. Although not primarily a news service, Cardinal Newman Society has abbreviated its name to "CNS" in the past and has issued news alerts and press releases on topics covered by Catholic News Service. This includes reports on the Terri Schiavo affair.

Charisma News Service is an internet news wire service specializing in Christian religious topics. Charisma News Service has abbreviated its name to "CNS" in the past. Plaintiff requested that Charisma News Service stop using "CNS" and, although Plaintiff claims that Charisma News Service stopped using "CNS" upon Plaintiff's request, Plaintiff has made no effort to determine whether Charisma News Service subsequently used "CNS." Altogether, there have been thirty-two applications for federal trademarks that include "CNS," most of which have matured into registrations.

Defendant's Organization

In 1998, Defendant launched its own general news wire reporting on matters of general interest. MRC initially called its service "Conservative News Service." MRC came up with the name "CNSNews.com" primarily as a function of branding its product to reflect its website URL. After the USPTO denied MRC's application for a trademark on "Conservative News Service," MRC came up with "Cybercast News Service" so that it could maintain the URL that it owned at the time. The name was selected from staff submissions of possible new names, and MRC began using that name in June 2000.

Plaintiff was aware of MRC's use of "CNSNews.com" as of February 2000 when Chris Gunty, a client of Catholic News Service, informed Catholic News Service that there was another entity using the initials "CNS."...