Church of Godv.The Church of God

Trademark Trial and Appeal Board

Jan 9, 2001

No. 91098057 (T.T.A.B. Jan. 9, 2001)

1/9/01
Hearing: Paper No. 64
August 16, 2000 HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Church of God
v.
The Church of God
_____
Opposition No. 98,057
to application Serial No. 74/428,670
filed on August 24, 1993
_____
Mark S. Graham and Robert O. Fox of Luedeka, Neely & Graham,
P.C. for Church of God.
James Francis Browne for The Church of God.
______
Before Simms, Wendel and Bottorff, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
The Church of God (applicant) has filed an application
to register the mark THE CHURCH OF GOD for “conducting
religious and ministerial services.”1
1 Serial No. 74/428,670, filed August 24, 1993. The application
as originally filed set forth first use dates of July 24, 1993
but was subsequently amended to set forth dates of June 13, 1903.
A disclaimer was entered of the word CHURCH. The application was
also amended to one seeking registration under Section 2(f) and
the claim of distinctiveness made thereunder was ultimately
accepted by the Office.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 98,057
2
Church of God (opposer) has filed an opposition to
registration of the mark on the ground of priority and
likelihood of confusion, and also on the ground of fraud on
the Trademark Office by applicant’s execution of a
declaration in connection with its application which failed
to disclose opposer’s rights to the mark CHURCH OF GOD.2
Opposer alleges that since a date long before any date of
actual or constructive first use by applicant, opposer has
continuously used the mark CHURCH OF GOD in connection with
its religious, evangelistic and ministerial services; that
applicant’s mark THE CHURCH OF GOD is confusingly similar to
opposer’s mark and is being used for the same or related
services; that applicant has not used the terminology “The
Church of God” as a mark in commerce in connection with any
goods or services prior to August 24, 1993; and that use by
applicant of its mark is likely to cause confusion or
mistake on the part of the public who might reasonably
believe that applicant’s services are associated with, or
sponsored by, opposer.
2 Although opposer pleaded fraud on the Office as a separate
ground in its notice of opposition, in its brief opposer failed
to make any arguments with respect to fraud based on statements
made in applicant’s original declaration. When questioned at
oral hearing, opposer stated that this claim had not been
withdrawn. In view of opposer’s failure, however, to pursue this
claim in its brief, we consider the claim withdrawn. Opposer’s
arguments with respect to fraudulent statements made in
connection with applicant’s claim of distinctiveness under
Section 2(f) have not been considered in that fraud based on
these circumstances was not pleaded.
Opposition No. 98,057
3
Applicant, in its answer, denies the salient
allegations of the notice of opposition.
The Record
The record consists of the file of the involved
application; opposer’s trial testimony depositions, with
accompanying exhibits, of Dr. Lamar Vest, General Overseer
of opposer from 1990-1994, and Dr. Charles W. Conn, General
Overseer from 1966-1970 and designated historian of opposer
since 1952; and applicant’s trial testimony deposition of
Robert J. Pruitt, General Overseer of applicant.3 Opposer
also submitted the testimonial depositions upon written
questions, with accompanying exhibits, of eleven pastors and
one administrator associated with opposer and a notice of
reliance upon, inter alia, assembly minutes, or portions
thereof, from 1906 to 1996; official publications of
opposer; books concerning the history of opposer and its
churches in various states; newspaper clippings about
opposer; and the discovery depositions taken of Robert J.
Pruitt in both Opposition No. 94,1804 and the present
opposition. (Exhibits 58–247).
3 Opposer made many objections during the taking of the Pruitt
testimony and has requested in its brief that all testimony
elicited as a result of improper or leading questions be
excluded. While not totally excluding this rather large
proportion of the testimony, we have taken opposer’s objections
into consideration in determining the weight to be given to the
testimony.
4 In Opposition No. 94,180 applicant opposed the registration by
Church of God of Prophecy of a flag design mark for its
evangelistic and ministerial services. Opposer was not a party
Opposition No. 98,057
4
Both parties filed briefs and both participated in an
oral hearing.
Although the lineage of applicant as a church is deeply
intertwined with the priority dispute in this case, we find
the record establishes the following facts with respect to
the history of the churches involved. In June 13, 1903 A.
J. Tomlinson joined with the small band called the Holiness
Church to form the group which became known as the Church of
God.5 In 1907 at its second General Assembly this
organization officially adopted Church of God as its name.6
In 1923, as a result of a schism in the church, A. J.
Tomlinson and his followers separated from the original
group, but both churches continued to use the same name.
While applicant contends that it was the Tomlinson group
in that case. The Board dismissed the opposition in a decision
issued May 18, 2000.
5 In the church history written by Dr. Charles Conn, Like a
Mighty Army (1996 ed.)(Opposer’s Exhibit 1), we find the
following account of the beginnings of the church:
On June 13, 1903, he [Tomlinson] cast his lot with the
small band, and later wrote concerning his tardy decision
to join them:
... I learned more about the organization at this
time, and when I understood fully they meant to stand for
the whole Bible rightfully divided and to take the New
Testament as their only rule of faith and practice, it
appealed to me, and I became very much interested at once.
... I then said, this means that it is the Church of
God. To this, they assented. Then, I ventured to ask if
they would be willing to receive me into the church with
the understanding that it is the Church of God of the
Bible. They were willing ... . [citing Tomlinson,
Answering the Call of God ].
6 See Minutes of Second General Assembly, January 11, 1907:
Name of Church. Decision was made harmoniously. “Church of
God” 1 Cor. 1:2 2 Cor. 1:1. (Opposer’s Exhibit 59).
Opposition No. 98,057
5
that went forward as the representative of the original
standards of the church and that it was the other group
(opposer herein) that had deviated therefrom, opposer views
the separation in the opposite manner.
In any event, in 1953, as the result of continued
litigation between the two groups over the common use of the
name Church of God, the Tomlinson group was required by
court decree to adopt the name Church of God of Prophecy for
use in connection with all secular matters. This name
continues to be used by this group to the present time.
Specific holdings made by the Tennessee Supreme Court in
Church of God v. Tomlinson Church of God, 247 S.W. 2d 63
(Tenn Sup. Ct. 1952) and the subsequent decree issued by the
Chancery Court of Bradley County at Cleveland, Tennessee in
1953 will be discussed more fully, infra.
Then in 1990 a faction within the Church of God of
Prophecy became discontented with practices considered to be
deviations from the established principles of theocratic
government of the church and from the proper strict
interpretation of certain of the teachings of the church.
In July 1993 this faction separated from the Church of God
of Prophecy and set up its own organization, which it called
THE CHURCH OF GOD (applicant herein). Applicant considers
itself to be the continuation of the Church of God of
Prophecy before it deviated from “the doctrine and governs”
Opposition No. 98,057
6
in 1990, and, in fact, to be the true continuation of the
organization founded by A. J. Tomlinson in 1903.
The Opposition
The issue of likelihood of confusion is readily
resolved. The marks are nearly identical; the only
difference is the use of the article THE by applicant as an
explicit part of its mark. The religious and ministerial
services offered by opposer under CHURCH OF GOD and
applicant under THE CHURCH OF GOD are, for our purposes,
legally identical. Applicant has failed to proffer any
evidence or make any argument refuting the likelihood of
confusion.
Applicant’s arguments are in terms of priority and
rightful ownership of the mark THE CHURCH OF GOD. Applicant
contends that it has established its date of first use of
the mark THE CHURCH OF GOD as June 13, 1903. Applicant
states that opposer and applicant “shared the same church
under A. J. Tomlinson from 1903 until the 1920’s.” (Brief
p. 5). Since the split in the 1920’s, however, applicant
maintains that opposer has called itself various names,
including the “General Assembly of the Church of God” and
“Church of God” in connection with a geographical term, as
well as the “Church of God.” Applicant asserts that, on the
other hand, it is part of the branch which has continuously
to used the name “The Church of God.” Even after the
Opposition No. 98,057
7
Tennessee court decree under which the Tomlinson church was
required to designate itself as “Church of God of Prophecy”
for secular matters, applicant maintains that the church
continued to refer to itself internally as “The Church of
God.” Applicant further contends that after the dispute
with the Church of God of Prophecy in 1990, it was applicant
that continued as the true church founded by A. J.
Tomlinson. According to the testimony of Rev. Pruitt,
applicant simply re-organized under the original name and
continued the original spiritual entity. (Pruitt discovery
deposition in Opp. 98,057, p. 119).
Applicant argues that not only has opposer failed to
successfully challenge applicant’s first use date of June
13, 1903 but opposer has also failed to establish rights in
the mark CHURCH OF GOD. Applicant insists that opposer has
no claim of exclusive rights to CHURCH OF GOD in itself, in
view of its usages throughout the years of various forms
which merely incorporate these three words. Applicant
points particularly to the many present-day variations used
by opposer which include geographic indicators, e.g., Oak
Park Church of God, Riverhills Church of God. Applicant
goes so far as to argue that opposer lacks standing in this
opposition because it has no rights in the mark CHURCH OF
GOD.
Opposition No. 98,057
8
Looking to the record before us, we find that opposer
has clearly shown that the name Church of God was officially
adopted during the Second Assembly of opposer in 1907.
Opposer claims no earlier date of use of the name as a mark,
although both opposer and applicant claim roots in the
church which was founded in June 1903. Opposer has also
fully documented its continuous use of the mark CHURCH OF
GOD since 1907 by evidence including copies of the official
minutes of the general assemblies held since that time
(Exhibits 58-123), representative examples of its official
publication “Church of God Evangel” covering the years 1910
to 1997 (Exhibits 133-152) and of its youth journal “The
Lighted Pathway” covering the years 1937 to 1990 (Exhibits
160-171), and testimony of use of the mark in connection
with radio and television broadcasts. By the testimonial
depositions upon written questions of eleven pastors and one
administrator opposer has also introduced evidence of the
public use of signs bearing the CHURCH OF GOD as part of
individual church names across the country for periods up to
fifty years. Moreover, although these usages of the CHURCH
OF GOD are frequently in connection with a particular
geographic location, we do not consider the addition of a
geographic identifier to in any way diminish or detract from
opposer’s use of the mark CHURCH OF GOD in itself. Opposer
has demonstrated that it has consistently used CHURCH OF GOD
Opposition No. 98,057
9
as a service mark throughout the country, as well as the
world, both with and without geographic indicators, since
1907. There is no question as to this use or as to
opposer’s standing to bring this opposition.7
Applicant, by the testimony of Rev. Pruitt and the
exhibits identified therein, has only shown use of the mark
THE CHURCH OF GOD in its own accord since its
“reorganization” as a separate church on July 24, 1993.
Applicant claims, however, and Rev. Pruitt has testified to
the effect that this entity is the true continuation of the
church founded by A.J. Tomlinson in 1903. Rev. Pruitt has
testified that applicant felt the divine mandate that its
new church be called THE CHURCH OF GOD. Thus, applicant
argues, as this spiritual continuation it should be entitled
to rely upon use of THE CHURCH OF GOD since 1903.
While we have the testimony of Rev. Pruitt that A.J.
Tomlinson gave the name “The Church of God” to the church at
the time of joining with the Holiness Church in 1903, as
well as the previously noted account given by Dr. Conn in
his history of the church, we find this evidence
insufficient to establish that THE CHURCH OF GOD was
actually used and held out to the public as a service mark
7 As pointed out at the oral hearing, applicant has failed to
plead the affirmative defenses of either non-use or abandonment
by opposer of its mark in view of the attachment of a geographic
identifier thereto and accordingly such defenses have been given
Opposition No. 98,057
10
as early as this date. From the evidence produced by
opposer, it was not until 1907 that the name was officially
adopted by the organization as an identifier of its
religious activities.
Applicant points to the forty declarations which were
submitted in connection with its claim of distinctiveness in
its application as evidence of use of the mark since 1903.8
While the application and the declarations submitted in
connection therewith are automatically part of the record,
these declarations are not evidence in this proceeding of
the truth of the statements made therein. Proof in the
inter partes case must be established by competent evidence
introduced at trial. See British Seagull Ltd. v. Brunswick
Corp., 28 USPQ2d 1197 (TTAB 1993), aff’d, Brunswick Corp. v.
British Seagull Ltd. 35 F.3d 1527, 32 USPQ2d 1120(Fed. Cir.
1994). Accordingly, no consideration has been given to
these declarations.
Even if we were to accept the date of June 13, 1903 as
the date of first use of THE CHURCH OF GOD as a service mark
for the religious group formed by A.J. Tomlinson, applicant
must still establish continuous use of the mark since that
no consideration. The only issue at this point is one of
standing, which opposer has fully satisfied.
8 In each of these declarations, the statement is made that “THE
CHURCH OF GOD ... has, since June 13, 1903, and continues up to
this day to conduct religious and ministerial services using the
name CHURCH OF GOD to identify and distinguish its religious and
ministerial services ...”.
Opposition No. 98,057
11
date up until its adoption by the group headed by Rev.
Pruitt in 1993, or that applicant stands in privity with the
original Tomlinson church.
Since it is acknowledged by applicant that both
applicant and opposer shared the same church until the
schism in the 1920’s, opposer’s evidence of use of the mark
CHURCH OF GOD is applicable to both groups during this
period. Moreover, we find the evidence convincing that
after the split in the 1920’s both groups continued to use
the CHURCH OF GOD.9 In fact, it was this common use which
lead to the litigation that we find to be decisive of
applicant’s claim of priority herein.
From the decision issued by the Supreme Court of
Tennessee in Church of God v. Tomlinson Church of God,
supra, it is apparent that use by the Tomlinson group of the
name “Church of God” had been the subject of prior
litigation and of an injunction issued in 1929, and
repronounced in 1939, barring use by the Tomlinson group of
the name without “such suitable prefix or suffix to avoid
confusion.” Thus it was that the name Tomlinson Church of
God was adopted. In the decision issued in 1952, in which
the Church of God (complainant) was seeking reparation for
9 As this point, we note that while the article “the” was
frequently used in connection with the name, there was no
evidence that “THE” was considered to be part of the official
name or service mark of either church group.
Opposition No. 98,057
12
repeated violations of the injunction including the
appropriation by the Tomlinson Church of God of money and
other property of complainant and the solicitation and
acceptance of funds intended for complainant on the false
representation that they were the true Church of God, the
court found the prior decree to be the law of the case. The
Court went on to state as follows:
Responding to the complainants’ contention that
defendants are liable in damages for the unlawful use
of the trade name, “Church of God,” we hold as follows.
The right of the complainant to the exclusive use of
the name “Church of God” is a closed question. It
cannot be relitigated. The right, however, to sue the
defendant for the unlawful use of the name as an
infringement upon a “trademark” or “tradename” cannot
be maintained. “Trademarks” or “Tradenames” are
thought of only in connection with commercial
activities, the buying or selling of articles of
merchandise wherein such articles have a special value
due to the use of a trademark. ...
It is very obvious that the law which gives
protection to a tradename has no application to the
instant case since neither the complainant nor the
defendant is dealing with any article of merchandise
that is the subject of barter and sale. However, the
name, “Church of God,” has a certain value as a
tradename as where a rival organization uses it to the
financial disadvantage of one who is entitled to its
exclusive use. In the instant case the measure of
damages would be all such monies and property as the
defendants received in the way of ‘contributions and
remittances’ and which are shown to have resulted from
the unlawful use of said name. So that whether the
actions be for damages or for money had and received
the result is practically the same.
247 S.W. 2d at 68-69.
In view of these statements with respect to trademark
infringement, applicant argues that the Tennessee court
Opposition No. 98,057
13
disavowed any applicability of its decision to trademark
rights, making the decision of little weight in the present
proceeding. We are in agreement with opposer, however, that
the decision is highly relevant. Applicant is presently
claiming to be a continuation of the chain running from the
original church founded by A.J. Tomlinson in 1903 through
the Church of God of Prophecy to the present-day church of
applicant. In the Tennessee decision, as cited above, the
court clearly set forth the exclusive right of opposer to
use the name Church of God. Although the court stated that
opposer was not entitled to sue the Tomlinson Church of God
for trademark infringement, the court clearly was
considering these rights in terms of opposer’s using the
mark in connection with merchandise, not in terms of use as
a service mark for religious activities. The fact that the
defendant was found accountable for monies obtained by the
unlawful use of the name Church of God shows recognition by
the court of the value of the name at the very least as a
trade name to opposer, if not also as a service mark.
Moreover, the Tennessee Supreme Court decision was not
the end of the matter. In the following year, by the decree
of the Chancery Court of Bradley County at Cleveland,
Tennessee, it was ordered that the Church of God of Prophecy
was to be the official name for the former Tomlinson Church
of God in “all matters, transactions and dealings relating
Opposition No. 98,057
14
to said organization in its secular affairs.” The court
specifically ordered the elimination of the words Tomlinson
Church of God and substitution of the words Church of God of
Prophecy in all real estate conveyances, church signs,
telephone directory listings, publications or postcards,
advertisements or news stories, radio broadcasts, and
stationery or other printed matters. Thus, for all public
purposes, the name of the Tomlinson church was the Church of
God of Prophecy.
Applicant contends that while the Tomlinson Church of
God used the court-ordered title for all secular and
external affairs, the name The Church of God was continued
to be used internally and thus the continuum was not broken.
Applicant has failed, however, to produce documentary
evidence in support of this contention. Although applicant
points to the copy of the design patent which was made of
record in the application as evidence of continued use of
the name The Church of God, this is to no avail. In the
first place, as pointed out supra, documents that are merely
part of the application and have not been introduced during
trial cannot be relied upon as evidence. Second, even if
considered, the design patent appears to have been assigned
to The Church of God in 1939, a time prior to the official
change in name of the Tomlinson church and a time in which
Opposition No. 98,057
15
the Tomlinson church was known to have been violating the
earlier injunction.
Furthermore, while the Church of God of Prophecy may
have been the spiritual continuation of the church founded
by A. J. Tomlinson in 1903 and may have used the original
name internally, the legal name for this church after the
decree of 1953 was not Church of God (or The Church of God),
but rather the Church of God of Prophecy. By order of the
court, this was the name which was used externally10 after
this date and thus this was the name which had the capacity
of functioning as a mark for the religious services offered
by the church. This holds true even up until the present
date.
We find no basis for applicant’s claim of continuous
use of the name The Church of God, in the sense of a service
mark to which the public was exposed, from 1953 until 1993.
While applicant has shown that the group which split off
from the Church of God of Prophecy in the 1990’s adopted the
name and mark THE CHURCH OF GOD in July 1993, there in no
evidence of continuous legal use of this mark from 1903
until this time. Rev. Pruitt in his testimony has stated
that applicant is not a continuation of the legal entity
10 By dictionary definition “secular” encompasses all things
“worldly or temporal”, as opposed to “spiritual or eternal.”
Thus the injunction covers all activities of the church,
including any service mark registration, despite the arguments of
Opposition No. 98,057
16
known as the Church of God of Prophecy, but rather a
spiritual continuation of the Church of God of Prophecy
before it went astray. (Pruitt discovery deposition, p.
120-21). Whether or not this status may be sufficient to
avoid the injunction which binds the Church of God of
Prophecy, it defeats applicant’s claim of continuous use by
applicant and its predecessors of the CHURCH OF GOD as a
service mark. On the other hand, if applicant is the legal
continuation of the true Church of God of Prophecy, then
applicant is bound by the injunction and has no legal right
to use the mark that it is attempting to register.
Accordingly, we find that applicant has failed to
establish that it is in privity with the church founded by
A.J. Tomlinson in 1903 with respect to the use of the mark
THE CHURCH OF GOD. Opposer has established its priority
with first use in 1907 of the mark CHURCH OF GOD and
continuous use thereafter. Applicant is restricted to a
first use date of July 24, 1993. Inasmuch as likelihood of
confusion is inevitable, opposer prevails.
Decision: The opposition is sustained.
applicant’s attorney to the contrary at oral hearing. See
Webster’s Third International Dictionary (1993).