Universal Life Church Monastery Storehouse v. Am. Marriage Ministries
| Docket Number | 2022-1744 |
| Decision Date | 22 November 2023 |
| Parties | UNIVERSAL LIFE CHURCH MONASTERY STOREHOUSE, Appellant v. AMERICAN MARRIAGE MINISTRIES, Appellee |
| Court | U.S. Court of Appeals — Federal Circuit |
This disposition is nonprecedential.
Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 91237315.
MIKE MATESKY, II, Matesky Law PLLC, Seattle, WA, argued for appellant.
BENJAMIN JAMES HODGES, Foster Garvey PC, Seattle, WA, argued for appellee. Also represented by KELLY ANN MENNEMEIER, NANCY V. STEPHENS.
Before CHEN, CUNNINGHAM, and STARK, Circuit Judges.
Universal Life Church Monastery Storehouse (ULC Monastery) filed a trademark application seeking registration of the standard character mark GET ORDAINED for two classes of services: (1) online retail store services; and (2) ecclesiastical services. American Marriage Ministries (AMM), in response filed a notice of opposition to ULC Monastery's application at the Trademark Trial and Appeal Board (Board) asserting that, among other things, the application should be denied because the mark is merely descriptive and fails to function as a mark as to both classes of services. The Board issued a final decision sustaining AMM's opposition on both grounds as to both classes of services, even though AMM's briefing focused solely on attacking the applied-for mark in connection with ecclesiastical services and did not present any argument with respect to online retail store services. The Board's decision did not acknowledge or address ULC Monastery's argument that AMM by ignoring in its briefing its grounds for opposition as to ULC Monastery's online retail store services, waived any challenge to these services. ULC Monastery then filed this appeal, contesting the Board's decision only as to the online retail store services.
After our court heard oral argument, ULC Monastery and AMM entered into a settlement agreement with respect to a collateral litigation. ECF No. 51, at 2. The parties then jointly moved for entry of an order (i) reversing and vacating the Board's decision sustaining AMM's opposition to registration for online retail store services, or, in the alternative, (ii) remanding to the Board for the purpose of considering a stipulated motion to amend the application to remove ecclesiastical services and to vacate the Board's decision sustaining the opposition with respect to ULC Monastery's online retail store services. Id. The parties, however, fail to establish any "equitable entitlement to the extraordinary remedy of vacatur." U.S. Bancorp Mortg. Co. v. Bonner Mall P'ship, 513 U.S. 18, 26 (1994). Nor have the parties shown why the circumstances surrounding this appeal necessitate an automatic remand.
After considering the parties' joint motion and ULC Monastery's appeal, we conclude the proper course is to deny the parties' joint motion and vacate the Board's decision for reasons identified in ULC Monastery's appeal: the Board's failure to explain why AMM's silence on online retail store services did not constitute waiver.[1] Because the Board did not furnish a reasoned explanation for departing from its established practice of deeming unargued claims waived, we vacate the Board's decision and remand for further proceedings consistent with this opinion.
ULC Monastery uses the mark GET ORDAINED on websites that provide ecclesiastical services for ordaining individuals as ministers and websites that provide online retail store services for selling clothing, anointing oils, and other ministerial products. ULC Monastery's multi-class trademark application sought registration of the mark GET ORDAINED in two classes of services: (1) online retail store services in International Class 35 and (2) ecclesiastical services in International Class 45.[2] Opposition Decision, 2022 WL 500926, at *1.
AMM filed a Notice of Opposition, asserting claims that the mark GET ORDAINED was generic, was merely descriptive, and failed to function as a mark for both sets of applied-for services. Id. ULC Monastery's answer denied these assertions. Id. AMM and ULC Monastery then fully briefed the case. Opposition No. 91/237,315, 88 TTABVUE (AMM's Main Br.); Opposition No. 91/237,315, 95 TTABVUE (ULC Monastery's Main Br.); Opposition No. 91/237,315, 97 TTABVUE (AMM's Rebuttal Br.).
In its main brief, AMM raised genericness, mere descriptiveness, and failure-to-function arguments that did not explicitly refer to ULC Monastery's online retail store services. For its mere descriptiveness claims, AMM posited that the phrase "get ordained" "immediately conveys the availability of the service of ordination" and that "competitors routinely and extensively use 'get ordained' in conjunction with their own ordination services." AMM's Main Br., 88 TTABVUE 34-35. Turning to failure-to-function, AMM asserted that ULC Monastery's use of GET ORDAINED cannot be separated from other source-identifying elements in ULC Monastery's logo. Id. at 40-41.
In response, ULC Monastery explained that AMM's brief failed to raise any argument against the mark in connection with ULC Monastery's online retail store services. ULC Monastery's Main Br., 95 TTABVUE 13, 21 ().
AMM's rebuttal brief did not address ULC Monastery's argument that AMM had failed to carry its burden with respect to its Class 35-specific claims. Instead, AMM repeated its earlier arguments tethered to ordination services. See AMM's Rebuttal Br., 97 TTABVUE 7-13 (). AMM then relied on its previous failure-to-function arguments that GET ORDAINED cannot be a standalone indicator and presented a failure-to-function theory that GET ORDAINED merely "convey[s] an informational message about services that allow a person to 'get ordained.'" Id. at 14-16.
The Board sustained AMM's opposition to registration of ULC Monastery's mark with respect to both ULC Monastery's online retail store services in Class 35 and ecclesiastical services in Class 45. Opposition Decision, 2022 WL 500926, at *1. The Board found GET ORDAINED unreg-istrable for being merely descriptive and for failing to function as a mark. Id. The Board did not reach AMM's genericness claims. Id.
As to mere descriptiveness, the Board found that the mark GET ORDAINED is highly descriptive of both ULC Monastery's ecclesiastical services and online retail store services and therefore ULC Monastery had a "commensurately high" burden for showing acquired distinctiveness. Id. at *13 (internal quotation marks omitted). Finding that ULC Monastery failed to meet this burden for showing acquired distinctiveness, the Board sustained AMM's claims that ULC Monastery's mark is merely descriptive. Id. at *16.
As to failure-to-function, the Board found that GET ORDAINED failed to function as a mark for ULC Monastery's online retail store services and ecclesiastical services because, "consumers will perceive the words 'get ordained' as conveying their ordinary meaning"-namely, "to obtain ministerial or priestly authority, to become invested with ministerial or priestly authority, or more simply, to become a minister." Id. at *8, 10.
In this appeal, ULC Monastery does not contest the Board's findings with respect to its Class 45 services. Rather, ULC Monastery's appeal is limited to challenging the Board's determination that ULC Monastery's mark is merely descriptive and fails to function as a mark for its Class 35 services. Appellant's Br. 2-3. We have jurisdiction over ULC Monastery's appeal under 15 U.S.C. § 1071(a)(1) and 28 U.S.C. § 1295(a)(4)(B).
ULC Monastery argues that under the Board's procedures, the Board should have deemed waived AMM's claims that GET ORDAINED is merely descriptive of or fails to function as a mark for ULC Monastery's online retail store services. Appellant's Br. 14-18. We review the Board's failure to consider waiver under the Administrative Procedure Act (APA). The APA requires us to set aside Board actions that are "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law." 5 U.S.C. § 706(2)(A); see Dickinson v. Zurko, 527 U.S. 150, 152 (1999); On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1084-85 (Fed. Cir. 2000). When the Board "departs from [its] established precedent without a reasoned explanation, its decision will be vacated as arbitrary and capricious." Fred Beverages, Inc. v. Fred's Cap. Mgmt. Co., 605 F.3d 963, 967 (Fed. Cir. 2010). The "reasoned explanation" requirement "ordinarily demand[s] that [the Board] display awareness that it is changing position." F.C.C. v. Fox Television Stations, Inc., 556 U.S. 502, 515 (2009). The Board may not depart from its prior procedures "sub silen-tio." Id.; see also Dillmon v. Nat'l Transp. Safety Bd., 588 F.3d 1085, 1089 (D.C. Cir. 2009) . We "look[] only to the reasons given by the [Board]." Fred Beverages, 605 F.3d at 967.
We start with the Board's practices regarding waiver. Our review confirms-and the parties do not dispute-that the Board has an established waiver practice for inter partes proceedings. The T.B.M.P., which describes "current practice and procedure" for Board proceedings, provides...
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