Godly trademark feud knocks on federal court's doors for the second time
An intense quarrel over the name Assemblies of God and its Spanish counterpart, Asambleas de Dios (collectively, the marks), has landed in the US District Court for the District of Puerto Rico, in a case transferred from a sister court in the Western District of Missouri.
This case is actually a sequel of a previous lawsuit filed in 2002 by the same plaintiff, the General Council of the Assemblies of God (GCAG), against the same defendants, Fraternidad Internacional Asambleas de Dios Autónomas Hispanas Inc, and its founder, Tomás Rodriguez-Pagán, in the District of Puerto Rico. Like the original lawsuit, this new episode of the dispute advances allegations of unfair competition and trademark infringement under both federal and state law in connection with “conducting religious worship and prayer services; and providing evangelistic ministerial and missionary services” and related printed publications.
In this new action, the GCAG also included allegations of breach of contract, associated to the alleged breach of the settlement agreement entered by the parties in 2005 to put an end to their first confrontation in court. The GCAG alleged that, under the 2005 agreement, the defendants had recognised the plaintiff’s rights over the marks and agreed not to use the marks by themselves or in any other manner that could create confusion as to the origin and source of the corresponding services and related goods.
Besides the alleged continuous unauthorised use of the marks, the plaintiff took issue with the defendants' filing of a petition to cancel the GCAG’s registration of the marks with the Trademark Trial and Appeal Board. This, according to the plaintiff, was a patent violation of the 2005 agreement.
Although it may sound odd that religious entities might be immersed in this type of controversies, it is not something that is unheard of. Whether the parties will find an ethereal way out of this dispute, or whether earthly justice will have to intercede, is yet to be seen.
Germán Corcino-Medina, Ferraiuoli LLC, Puerto Rico
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