Urantia Foundation v. Maaherra
| Decision Date | 27 February 1995 |
| Docket Number | Civ. No. 91-0325 PHX WKU. |
| Citation | 895 F. Supp. 1338 |
| Parties | URANTIA FOUNDATION, Plaintiff, v. Kristen MAAHERRA, Defendant. |
| Court | U.S. District Court — District of Arizona |
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L. Dale Owens and Scott A. Wharton, of Booth, Wade & Campbell, Atlanta, GA, for plaintiff and counter-defendant, Urantia Foundation.
Joseph D. Lewis, of Cleary & Komen, Washington, DC, for defendant and counterclaimant, Kristen Maaherra.
MEMORANDUM AND ORDER ON PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT ON TRADEMARK ISSUES
This cause is before me on the plaintiff's motion for partial summary judgment pursuant to Rule 56(d) of the Federal Rules of Civil Procedure. The plaintiff, Urantia Foundation, alleges that the defendant, Kristen Maaherra, has infringed two of its registered trademarks. The defendant denies the allegation of infringement and contends that the plaintiff's marks are generic and were obtained fraudulently. Upon review of the record, I find that the plaintiff's motion shall be granted in part and denied in part.
The Urantia Foundation was created in 1950 with an objective of educating the peoples of the world in an attempt to increase and enhance their comfort, happiness, and well being. The plaintiff employs various means to accomplish this goal, one of which is the sale of The URANTIA Book1 and related publications. In 1971, the plaintiff registered "URANTIA" and the symbol of three blue concentric circles as trademarks2 for books manufactured, printed, or distributed by the Urantia Foundation. (Pl.'s Compl. at Exs. C, D.) In 1979, the plaintiff expanded its trademark protection to include printed publications in general. Id. at E, F.
The defendant has been an avid reader of The URANTIA Book since 1969, and "over the years, she has given away many study aids for the book." (Def.'s Statement of Facts in Opp'n to Pl.'s Mot. for Partial Summ.J on Trademark Issues ¶ 29.) hereinafter Def.'s Facts. In 1990, the defendant prepared a study aid that included the text of The URANTIA Book. (Def.'s Facts ¶ 31.) Thereafter, the defendant distributed the aforementioned study aid to various individuals free of charge. Id. ¶ 32.
In September, 1990, the Urantia Foundation was notified that an unidentified source was distributing computer disks that contained the entire text of The URANTIA Book. (Second Aff. of Wharton Ex. A, ¶ 16.) In November, 1990, the plaintiff discovered a second set of computer disks that not only contained the entire text of The URANTIA Book but bore the plaintiff's trademarks: "URANTIA" and the symbol of three blue concentric circles. Id. ¶ 22. In January, 1991, the plaintiff surmised that the defendant was the source of the computer disks and, shortly thereafter, filed the instant action against her. The defendant admits she had full knowledge of the plaintiff's use and registration of its trademarks when she distributed the computer disks but denies that her actions constitute infringement. ((Revised) Def.'s Substitute 2nd Am. Answer and Countercl. for Cancellation of Federal Trademark Registrations at 4, ¶¶ 24-25.) hereinafter Def.'s Answer.
A motion for summary judgment is properly granted if the pleadings and evidence submitted in support of the motion show that "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); Calnetics Corp. v. Volkswagen of Am., Inc., 532 F.2d 674, 683 n. 11 (9th Cir.), cert. denied, 429 U.S. 940, 97 S.Ct. 355, 50 L.Ed.2d 309 (1976). The moving party has the burden of demonstrating the absence of a genuine issue of material fact. Blair Foods, Inc. v. Ranchers Cotton Oil, 610 F.2d 665, 668 (9th Cir.1980). A genuine issue of material fact exists when there is sufficient evidence favoring the party opposing the motion for a jury to return a verdict for that party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986); First Nat. Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 288-89, 88 S.Ct. 1575, 1592-93, 20 L.Ed.2d 569 (1968). If the moving party meets its initial burden, then the burden shifts to the opposing party to produce evidence of the existence of a genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In deciding a motion for summary judgment, all evidence is considered in a light most favorable to the party opposing the motion. Blair Foods, 610 F.2d at 668 (citations omitted). "If the evidence is merely colorable or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50, 106 S.Ct. at 2510-11 (citations omitted).
The plaintiff brings this action pursuant to the Trademark Act of 1946.3 Section 1114 of the Act requires that the plaintiff in a trademark infringement action show that the defendant (1) without consent, (2) used in commerce, (3) a reproduction, copy or colorable imitation of the plaintiff's registered mark in connection with a sale or distribution of goods or services, and (4) that such a use is likely to cause confusion. See 15 U.S.C. § 1114(1)(a) (1988); Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir.1993); Kelley Blue Book v. Car-Smarts, Inc., 802 F.Supp. 278, 284 (C.D.Cal. 1992). Ms. Maaherra admits that she did not have the plaintiff's consent to reproduce exact copies of the plaintiff's marks on her computer disks before she distributed the disks throughout the United States. (Def.'s Answer at 3-4, ¶¶ 13, 25-27.) Therefore, to prevail on its claim of trademark infringement, the plaintiff must overcome only two obstacles. The plaintiff must prove that it has a valid mark entitled to protection and that the defendant's use of the mark is likely to cause confusion in the minds of the public.
The defendant admits that the plaintiff has obtained trademark registration certificates for both "URANTIA" and the symbol of three blue concentric circles. (Def.'s Answer at 3, ¶ 10.) "Federal registration of a trademark endows it with a strong presumption of validity." Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 1254 (9th Cir. 1982) (citing Miss Universe, Inc. v. Patricelli, 408 F.2d 506, 509 (2d Cir.1969)); accord Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 196, 105 S.Ct. 658, 662-63, 83 L.Ed.2d 582 (1985) (citation omitted); see 15 U.S.C. § 1057(b) (1988). In addition to being prima facie evidence of the registered mark's validity, the certificates of registration are prima facie evidence of the registrant's ownership of the mark and the registrant's exclusive right to use the mark. Pacific Telesis Group v. International Telesis Communications, 795 F.Supp. 979, 982 (C.D.Cal.1991), aff'd, 994 F.2d 1364 (9th Cir. 1993). The defendant attempts to rebut this presumption by claiming that the plaintiff's trademarks are generic and were obtained fraudulently. The plaintiff responds by arguing that its trademarks are incontestable.
The plaintiff claims that "since the Foundation's marks all have been registered and continuously used for more than five years ... they have become incontestable." (Br. in Support of Pl.'s Mot. for Partial Summ. J. on Trademark Issues at 4.) hereinafter Pl.'s Br.. However, before a registered mark may be deemed incontestable "an affidavit shall be filed with the Commissioner within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration." 15 U.S.C. § 1065(3) (1988). No such affidavit is in the record.
Moreover, whether the plaintiff's marks have acquired incontestable status is relatively unimportant. The defendant alleges the defenses of genericness, fraud, and "no likelihood of confusion." Each of these allegations, if proven, overcomes a mark's incontestable status. See 15 U.S.C. § 1065(4) (1988) (); 15 U.S.C. § 1115(b)(1) (1988) (); Gruner, 991 F.2d at 1078 ().
The defendant claims that the plaintiff engaged in "fraudulent activities in obtaining federal trademark registrations of the concentric circles symbol and the names Urantia and Urantian." (Def.'s Answer at 5, ¶ 4.) The alleged fraudulent activities include the plaintiff's failure to disclose to the United States Patent and Trademark Office the possible religious significance of the plaintiff's marks. Id. at 20-21. However, "nothing in the Constitution prohibits a religious organization from owning property — and a trademark is a property right." National Bd. of YWCA v. YWCA of Charleston, 335 F.Supp. 615, 625 (D.S.C.1971).
In support of her claim, the defendant offers numerous broad and unsubstantiated allegations but only one piece of evidence, a letter from a Trademark Examiner. See (Def.'s Facts at App. 1A.) The letter addresses the inconsistencies in the plaintiff's application to register a mark identified by Serial No. 398,004. The trademarks at issue are identified by Serial Nos. 157,177; 157,234; 372,049; and 372,050. See (Pl.'s Compl. at Exs. C-F.) Therefore, any statements made by the plaintiff that prompted the letter or were in response to the letter is not shown to have been a deliberate attempt to mislead the Patent and Trademark Office into registering the trademarks at issue. See Robi v. Five Platters, Inc., 918 F.2d 1439, 1444 (9th Cir.1990) (); Official Airline Guides, Inc. v. Churchfield Publications, Inc., 756 F.Supp....
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...689 n. 5 (5th Cir.1992) ("If it is determined that the mark is generic, it can never become incontestable."); Urantia Found. v. Maaherra, 895 F.Supp. 1338, 1342 (D.Ariz.1995). The United States Patent and Trademark Office (PTO) will not register a mark which it determines is generic. The PT......
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