Tuesday, April 07, 2009

TTAB Finds Religious Habit Not Registrable: Lacks Distinctiveness, Inherent or Acquired.

Two feuding religious organizations faced off before the TTAB in the latest of a "series of battles" between them, this dispute involving the registrability of the religious habit design shown immediately below, for "clothing, namely [a] ceremonial habit worn by distinguished religious representatives in certain ceremonies" and for "promoting public awareness of the need for healthy and religions families in the United States." The Board found the habit design neither inherently distinctive nor possessed of acquired distinctiveness, and so it sustained the opposition. Mary Queen of the Third Millennium, Inc. v. The Foundation for a Christian Civilization, Inc., Opposition No. 91157073 (March 25, 2009) [not precedential].

The Board first addressed the issue of standing. Applicant claimed that Opposer does not use the "mark" in question, but merely provides financial and administrative support to the Heralds of the Gospel, an organization whose members do use the Habit. Opposer responded by asserting that it is a related party to the Heralds and that it "represents the interests of its members, namely individuals who are authorized to wear the Habit." The Board agreed with Opposer, ruling that Opposer has standing because it represents the legal interests of the Heralds and is affiliated with the Heralds who actually use the habit. "It is not necessary that opposer has actually used the mark in some fashion, nor even contemplate doing so."

Having cleared the standing hurdle, Opposer may rely on "any legal ground that negates applicant's right to the registration it seeks."

Applicant described its mark as "the design of the attire, namely, a scapular containing a cross centered on the front worn atop a habit and worn with a metal and beaded belt containing a cross." As in its recent Chippendales decision, the Board found that the mark at issue, like the restaurant decor in Two Pesos, "is a form of trade dress that may be inherently distinctive for the services."

The Habit

The Board then applied the Seabrook factors to determine whether the design is inherently distinctive. It found that the Habit "is not unusual in that it falls within the general realm of habits worn by other religious groups," and that it is a mere refinement of an existing ornamentation, "given that habits are routinely worn by religious members, and applicant merely added its own touches to an ordinary brown habit."

In view of the pedestrian nature of the Habit, and the ubiquitous nature of such garb in religious or quasi-religious situations, we are not persuaded that the Habit was, at the time of adoption and first use, an inherently distinctive design that achieved instant recognition as a service mark denoting origin of applicant’s services. Individuals do not expect that religious garb functions as a mark to designate source or origin. That is to say, it is not reasonable to assume that individuals are predisposed toward equating religious garb such as the Habit with any source, let alone a single source.

Turning to the issue of acquired distinctiveness, the Board pointed out that because the design is "relatively ordinary," Applicant bears a "heavy burden to prove it has acquired distinctiveness." In this untypical trademark case, Applicant neither used the design on hang tags or labels, not did it advertise or promote the design as a source indicator. Not a single sale of goods or services appeared in the record.

The Board found that Applicant's Section 2(f) evidence fell "far short" of the goal.

Much of the use has been private, and the public displays of the Habit have been minimal, both in quality and quantity. The Habit is used in one way and one way only: it is worn by applicant's members. However, the mere wearing of the Habit, mostly in private situations, does not magically transform the Habit into a source indicator for applicant's goods and services.

The testimony of three of Applicant's supporters regarding the Habit was "extremely unrepresentative." Given Applicant's "lofty goals," the relevant consuming public must include more than Applicant's members and supporters.

Moreover, Opposer's use of the same design "has been significantly more public in nature than applicant's own use of the Habit." This usage "rebuts applicant's contention of substantially exclusive use, and acts to defeat applicant's claim of acquired distinctiveness."

In sum, "[a]lthough the Habit may signify other recognizable purposes, such as obedience and commitment, the Habit does not serve as a source indicator for applicant’s goods and services."

The Board therefore sustained the opposition.

TTABlog note: In a final comment, the Board questioned whether there were any "goods in trade" in class 25, since "[i]ncidental items that an applicant uses in conducting its business, as opposed to items sold or transported in commerce for use by others, are not 'goods in trade.'" The Board also questioned whether the Habit functions as a mark, which would require that it be used "in a manner that would be perceived by the relevant public as identifying and distinguishing the source of the services recited in the application." These issues may be addressed if this decision is reversed on appeal and the case is remanded to the PTO.

TTABlog BTW: See loyal reader Keith Danish's article, "Likelihood Of Schism? Religion And Trademarks," in the March 2009 issue of Intellectual Property Today.

Text Copyright John L. Welch 2009.


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