EFF labels MORMON "generic": could this challenge extend to SCIENTOLOGIST and other similar marks? 26 Feb 16
The Electronic Frontier Foundation (EFF) has sent a letter to The Church of Jesus Christ of Latter-Day Saints (LDS Church) that claims the term MORMON is “generic” due to it being the only way to describe people who follow or are part of that religious community. If one trademark of a religious organisation is being accused of genericism, we ask commentators whether other similar religious marks, such as SCIENTOLOGIST, could also be at risk.
The LDS Church has been embroiled in debate over its marks before, for instance when it tried to stop another entity from filing a trademark for the term MORMON MATCH. In this instance, a claim was made by Intellectual Reserve Inc (IRI), a nonprofit corporation that holds and manages the LDS Church's IP, including copyrights and trademarks, that the name of the Mormon Mental Health Association (MMHA) was in violation of its trademark rights in the terms MORMON and MORMON.ORG. This claim was denied by the association and it drafted in the EFF to assist in a response.
Vera Ranieri, a staff attorney on the EFF’s IP team, subsequently called for the claim to be withdrawn in a letter sent to IRI, and in doing so she made a number of assertions about its enforcement of the MORMON mark. She claimed that the MMHA uses the term ‘Mormon’ to “accurately describe the population it seeks to serve”, meaning that “IRI has no legal basis to challenge that use”. This argument is based on two points.
Firstly that the term ‘Mormon’ “has an established original, descriptive, primary meaning”, specifically to “describe those who follow Mormonism or are members of the Mormon community”. That means, she argues, that “MMHA does not use the term ‘Mormon’ as a mark, but instead to refer to and describe the community it serves [and] there is no other term that MMHA can employ that would convey the same meaning”.
Ranieri tells World Trademark Review the marks the LDS Church holds are “relatively limited,” adding: “At one point the LDS Church sought protection for the term ‘Mormon’ in a broader category. That attempt was denied by the Trademark Office and subsequently abandoned by the LDS Church. Whether or not the LDS Church can maintain its limited marks in ‘Mormon’ (for ‘genealogy services’ and ‘Educational services, namely providing classes, conferences, and institutes in the fields of history and religion’) and ‘Mormon.org’ is separate from the question of whether they can enforce those marks more broadly to those who wish to accurately describe the community they serve.”
The second argument may be the most jarring for the LDS Church. Ranieri simply states that “the term [Mormon] is generic”, adding that it “is popularly understood to refer to a way of life that is common to many and owned by none”. Of course, accusations of a trademark being generic is no laughing matter for any rights holder. When contacted by World Trademark Review about whether the LDS Church has any response to the letter, Church spokesman Lyman Kirkland replied: “We were surprised to receive the letter from the Electronic Frontier Foundation. We’ve had amicable conversations with counsel from the Mormon Mental Health Association. MORMON is a registered trademark used by The Church of Jesus Christ of Latter-day Saints. Like all organisations, the Church has an interest preserving our registered trademark and we want to avoid confusion regarding any entity's implied affiliation with the Church.”
The claim that the term MORMON is generic raises the question of whether other religious marks could be accused of the same. A 2015 paper entitled ‘Religions as Brands: New Perspectives on the Marketization of Religion and Spirituality’ talked about the registration of religious marks, noting: “If religious brands followed legal brand practices, names such as [...] ‘Catholicism’, ‘Roman Catholic’, ‘Islam’ would be registered as trademarks. For most world religions, these names are considered generic names that cannot be registered as trademarks. For new religions such as Scientology, the situation is quite different.”
Hence The Church of Scientology boasts a number of registered trademarks (there is even an entire Wikipedia article on the subject), including marks for SCIENTOLOGIST, the term used to describe members of The Church of Scientology. So could the charge of genericism be levelled at that? Not necessarily, Ranieri responds: “I am not a religious scholar, but I note that the Mormon community's use of the term may be a distinguishing factor from, say, those affiliated with the Church of Scientology. That is, the term ‘Mormon’ hasn't been uniquely applied to solely identify the LDS Church as a source of goods or services. Its use has been much broader than that, as recognised by the Trademark Office when it rejected the LDS Church's attempt to register the term ‘Mormon’ for a broader category than it received, and when it distinguished cases the LDS Church was relying on to argue names of religions can be trademarked.”
Douglas Wolf, a partner at Wolf Greenfield, weighs in by noting the relatively young age of the Church Of Scientology (which was founded in 1953) places it in a different situation than more established religions. “Other religions are so old that protecting the brand is not possible since the words and phrases have been lost to the public domain. Capturing (or recapturing) exclusivity is impossible for those terms,” he says. “Related to this is the size of the religions and the diffuse nature of the practice. The Mormon religion is based and focused in Salt Lake City under a single body. Scientology is similarly focused. I suppose Roman Catholics have the Vatican home base, but the sheer numbers of followers and thousands of years of practice probably precludes any possibility of bringing it under one ownership.”
World Trademark Review contacted a relevant person at The Church of Scientology, and we await their response.
In the meantime, the Mormon Mental Health Association has settled its dispute with the LDS Church, so it appears that this particular dispute is over. However, the debate over religious marks and at what point they become generic will likely rear its head again.
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