Universal Church, Inc. v. Toellner

Universal Church, Inc. v. Toellner

Opinion

 [*68]  SUMMARY ORDER

UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED that the judgment of the District Court is AFFIRMED.

The Universal Church, Inc. ("Universal Church") appeals from a September 20, 2017 order of the District Court (Buchwald,  [*69]  J.) granting summary judgment in favor of appellees (collectively, "Universal Life Church"). We assume the parties' familiarity with the underlying facts and the record of prior proceedings, to which we refer only as necessary to explain our decision to affirm.

] The standards for our de novo review of the District Court's grant of summary judgment are well established. See Nick's Garage, Inc. v. Progressive Cas. Ins. Co., 875 F.3d 107, 113 (2d Cir. 2017); Nora Bevs., Inc. v. Perrier Group of Am. Inc., 164 F.3d 736, 745 (2d Cir. 1998). In granting [**2]  summary judgment on Universal Church's trademark infringement claim and cancelling its trademark registrations, the District Court concluded that the trademarks "Universal Church" and "The Universal Church" are generic. ] A term is generic if it "refers to the genus of which the particular product is a species." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S. Ct. 658, 83 L. Ed. 2d 582 (1985) (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976)). In determining whether a term is generic, moreover, "the relevant purchasing public is not the population at large, but prospective purchasers of the product." Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999). Here, the District Court concluded that the relevant public is all those who seek and provide religious worship services, and Universal Church does not challenge this conclusion on appeal.

In this case, Universal Life Church met its burden of showing that the term "Universal Church" is generic in the context of "evangelistic and ministerial services, namely, conducting religious worship services," and that the term "The Universal Church" is generic in the context of "religious counseling and ministerial services," the classes for which the trademarks are registered. App'x 55, 63. Specifically, Universal Life Church introduced admissible evidence in the form of an expert report and testimony that "the longstanding [**3]  common use of the phrase 'Universal Church' in various contexts demonstrates without question that the phrase has been in generic usage over two millennia to describe the Church as a whole throughout the world." App'x 610, 659-61 (deposition testimony). It also introduced the following definition of "universal" from the Oxford English Dictionary: "Designating the whole Christian Church or all Christians collectively . . . Freq. in universal church." App'x 572 (emphasis in original); see Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 810 (2d Cir. 1999) ] ("Though not conclusive, dictionary definitions of a word to denote a category of products are significant evidence of genericness because they reflect the public's perception of a word's meaning and its contemporary usage.").

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