IP Law Daily Church.’s trademark suit against rival fails for insufficient evidence of secondary meaning
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Tuesday, December 15, 2020

Church.’s trademark suit against rival fails for insufficient evidence of secondary meaning

By Deirdre Kennedy, J.D

Lengthy use by the Unified Buddhist Church of Vietnam of its unregistered marks was not enough, by itself, to raise a triable issue as to the marks’ protectability.

A church that calls itself the Unified Buddhist Church of Vietnam (the "Unified Church") failed to show that its asserted trademarks had acquired secondary meaning and therefore could not go forward with infringement claims against a Texas nonprofit with disputed connections to that church, an entity that calls itself Unified Buddhist Church of Vietnam – Giao Hoi Phat Giao Viet Nam Thong Nhat ("UBCV Texas"). According to the U.S. Court of Appeals in New Orleans, the only evidence supporting the contention that the unregistered marks had acquired distinctiveness was the length and manner of use of the Unified Church’s asserted marks. This would not be enough, however, for a reasonable jury to find in its favor, given the lack of sufficient evidence regarding sales success, advertising expenditures, and other factors relating to secondary meaning (The Unified Buddhist Church of Vietnam v. Unified Buddhist Church of Vietnam - Giao Hoi Phat Giao Viet Nam Thong Nhat, December 14, 2020, per curiam).

The Unified Church stated that it is an unincorporated organization founded in Vietnam in 1964 that has attracted members and generated branches worldwide. It is also known as UBCV and Giao Hoi Phat Giao Viet Nam Thong Nhat. UBCV Texas is a Texas Buddhist church that was founded in 1992 and registered in 2014 as a nonprofit Texas corporation. Dang organized UBCV Texas, and Dieu is its attorney and registered agent. The Unified Church claims that it founded UBCV Texas and appointed its directors, including Dang as president. The Unified Church further alleges that it helped UBCV Texas purchase real property in California, which UBCV Texas subsequently sold without the Unified Church’s authorization. UBCV Texas disputes these allegations and asserts that it is not legally connected to the Unified Church in any way.

In addition to asserting trademark infringement claims, the Unified Church sought an accounting in connection with UBCV Texas’s purchase and sale of the California property. The district court granted summary judgment in favor of UBCV Texas on the trademark claims and denied the request for an accounting. The Unified Church appealed.

Asserted marks. The Unified Church claimed that UBCV Texas used three asserted marks belonging to the Unified Church: (1) "UBCV"; (2) "Unified Buddhist Church of Vietnam"; and (3) "Unified Buddhist Church of Vietnam - Giao Hoi Phat Giao Vietnam Thong Nhat d/b/a Van Phong II Vien Hoa Dao" (with and without the additional designation "Texas"). The Unified Church has not received a certificate of registration for these marks from the United States Patent and Trademark Office. However, unregistered marks of this sort can nonetheless be protectable if their holder can demonstrate both ownership and distinctiveness.

Secondary meaning. The Unified Church raised three claims under Section 43 of the Lanham Act: false designation of origin, unfair competition, and dilution. To sustain all of its trademark claims, the Unified Church had to prove that its asserted marks are legally protectable.

The Unified Church does not argue that the marks are inherently distinctive, so the only issue was whether they have acquired secondary meaning. That question was resolved with reference to seven factors: (1) the length and manner of use of the mark, (2) the volume of sales, (3) the amount and manner of advertising, (4) the nature of use of the mark in newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant’s intent in copying the mark.

As the district court correctly determined, only the first factor—the length and manner of use of the Unified Church’s asserted marks—weighed in favor of the marks having developed protectable secondary meaning. The Unified Church presented evidence that, for over 30 years, it used the phrases "UBCV," "Unified Buddhist Church of Vietnam," and "Giao Hoi Phat Vietnam Thong Nhat." The Unified Church’s lengthy use of these marks would not be enough, however, for a reasonable jury to find in its favor regarding secondary meaning given the lack of sufficient evidence supporting any other factors. Therefore, the court found insufficient summary judgment evidence to support a finding at trial that the asserted marks have developed a secondary meaning such that the public thinks only of the Unified Church when it sees them. Accordingly, the court affirmed the district court’s grant of summary judgment in favor of UVBC Texas.

Request for accounting. As for the accounting claim, the appellate court also affirmed the summary denial of the Unified Church’s request for an accounting. The church did not explain why normal discovery procedures or other relief at law would be inadequate, the Fifth Circuit explained.

This case is No. 19-20544.

Attorneys: Tammy Tran (Tammy Tran Law Firm) for Unified Buddhist Church of Vietnam. Jarod Rodney Stewart (Smyser Kaplan & Veselka, L.L.P.) for Unified Buddhist Church of Vietnam and Giao Hoi Phat. Giao Viet Nam Thong Nhat, d/b/a Van Phong II Vien Hoa Dao.

Companies: Unified Buddhist Church of Vietnam; Unified Buddhist Church of Vietnam; Giao Hoi Phat. Giao Viet Nam Thong Nhat, d/b/a Van Phong II Vien Hoa Dao

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