Church symbol trademarks

I read an interesting article today regarding a trademark dispute brewing (sorry for the pun) in Utah involving coffee, clothing, the angel Moroni, and the Church of Jesus Christ of Latter Day Saints (aka the Mormons). The article is entitled Church Trademark Used to Sell Coffee Shop T-shirts.

The dispute involves a coffee shop in Taylosville, Utah called Just Add Coffee. The individuals decided to sell a t-shirt and greeting cards that utilize images of an angel. They drew unwanted attention by using a specific angel- namely the angel Moroni. For those of you not familiar with the Mormon faith, Moroni was the angel who told Joseph Smith (the founder of Mormonism) the material that would become the Book of Mormon. Moroni had some golden plates upon which were inscribed these words of god. A picture of Moroni is to the right, and it is Moroni from which the term "Mormon" is derived. Moroni is thus one of the fundamental pillars of the Mormon faith. Each Mormon temple that is constructed has a gilded statute of Moroni, facing Salt Lake City, Utah, and blowing a trumpet. I am not an expert in Mormons, but I imagine that each statute of Moroni looks different-- and an example is provided to the left.

The Mormons have decided to take issue to the use of the angel Moroni in conjunction with apparel and stationary relating to coffee. They claim trademark rights to the image of Moroni, and have requested that Just Add Coffee cease all use of the angel image (to which Just Add Coffee has stopped using the image).

I think the Mormons have a very weak case, and that Just Add Coffee should continue using their design. Can one have a trademark in a symbol that represents a religion? Where does this end- will the Mormons police all use of the name? Will they stop all use of the beehive (another symbol associated with Utah and Mormons) image? This is the same as the Pope asking people to stop using images of the cross or Christ in their names or logos. Similar arguments can be made for the Star of David or the Crescent Moon. Furthermore, there does not appear to be one image of Moroni that is always used, thus it appears they're claiming rights to any guy blowing into a long horn. I've seen similar representations in artwork, architecture, and products elsewhere- so the Mormons have perhaps not been diligent in enforcing their alleged trademark. This enforcement of trademark rights can also extend to all individuals that use images of the Moroni statutes, which I suspect includes a significant number of tourist related information (guides, postcards, books, movies, etc) and other "unauthorized" uses of the angel Moroni.

I suspect one main issue the Mormons had was the use in conjunction with coffee, which the Mormons forbid. Additionally, this is a store located in Utah, where individuals are more likely to be familiar with the representation of the angel Moroni. The Mormon church may not want individuals assuming that Just Add Coffee is associated with, or approved by, the Mormons. While certainly valid reasons, I do not believe that Just Add Coffee should stop their use.

Internet Trademark Domain Name Disputes

The National Arbitration Forum just released three decisions regarding trademark domain name disputes, which is commonly referred to as "cybersquatting." The three cases illustrate different how to win an internet domain name trademark dispute, and how not to.

Magic Johnson

The first domain name is MagicJohnsonTravelGroup.com. June Bug Enterprises, on behalf of basketball legend Magic Johnson and his latest venture Magic Johnson Travel Group, filed to recover the domain name MagicJohnsonTravelGroup.com. A few days after the announcement of the formation of the Magic Johnson Travel Group, myspecialprice.com registered the domain name in question. myspecialprice.com had no rights to utilize the terms "Magic Johnson," and provided pay-per-click ads on the website. The Forum found for Magic Johnson, and ordered the domain name transferred from myspecialprice.com to Magic Johnson. This case illustrates the importance of registering domain names for your trademarks- especially before announcing your new trademarks to the public. The cost of registering the domain name is a lot lower (and quicker) than having to arbitrate over the domain name. The full decision is June Bug Enterprises, Inc. v. myspecialprice.com

War Games

In 1983, Metro-Goldwyn-Mayer Studios ("MGM") produced the hit movie "War Games." In 1998, World Readable registered the domain name wargames.com. For 8 years, pay-per-click ads appeared on the website, and in 2006 the website began selling military simulation war games.

The arbitrator found that although the marks were identical, MGM failed to show the 3 requirements to transfer a domain name:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The arbitrator found that World Readable had legitimate rights in the domain name, in light of the sale of products. This case highlights the importance of policing your trademarks, and for acting immediately to address infringers. If MGM had gone after World Readable 5 years ago, when they were only showing ads, then they would have likely been successful in obtaining the domain name. The full decision is Metro-Goldwyn-Mayer Studios Inc. v. World Readable c/o R.L. Cadenhead.

Pig

The third case involves the trademark "pig." Canadian Adam Dicker registered the domain name pig.com. New Pig Corporation has been using the trademark "pig" since 1987 for industrial absorbents, containment products, waste handling equipment, distribution, sales and service related to such products. Mr. Dickler has been using the pig.com domain name to show pay-per-click ads. The arbitrators found that since Mr. Dicker had not registered the domain name in bad faith (e.g. he did not intend to usurp New Pig's trademark rights, and obtained the domain name because of it's desirable 1 word format), then New Pig had not proven the necessary elements to force transfer of the domain name.

Mr. Dicker purchased the domain name in an auction in 2006. New Pig should have been policing the mark and the domain name, and could have won it through the auction. They gambled through the arbitration process, and in the end, do not have a domain name with their trademark. Mr. Dickler is earning over $2 for the top click on his website, so this also demonstrates the value of domain names. The full decision is New Pig Corporation v. Adam Dicker.

Read the full press release.

Asics and Skechers trademark dispute

Two dueling press releases caught my attention today-- because they involve trademark infringement allegations, and are from my two favorite shoe companies. ASICS, maker of athletic shoes, has sued SKECHERS, maker of "lifestyle footwear." I run marathons wearing ASICS, and prefer SKECHERS for my casual shoes. According to ASICS, they are suing

for trademark infringement, unfair competition, trademark dilution and false advertising. ASICS is seeking a permanent injunction against Skechers [sic] to prevent any future sales and distribution of shoes that bear a stripe design similar to ASICS famous stripe design. In addition, ASICS is also seeking damages, including profits and attorney fees.

The press release includes a quote from the vice president and general counsel of ASICS, Michael Zall:

"These shoes are an attempt to free-ride on the ASICS brand image and goodwill associated with our stripe mark that we have developed over the years. ASICS has spent over 40 years building a world-renowned premium brand and nurturing the goodwill represented by this mark. We will do what we must to protect the ASICS brand and to maintain its integrity."

ASICS states that their stripe mark is a registered trademark in most countries in the world. Read the full press release (Feb 5, 2007).

SKECHERS has replied with press release dated Feb 7, 2007, in which they deny all the allegations. A good legal analysis is put forth by executive vice president and general counsel of SKECHERS Philip G. Paccione:

"We believe that this lawsuit is completely without merit and will vigorously defend ourselves and our customers against such baseless allegations," says , General Counsel and Executive Vice President of SKECHERS. "Our stripe design does not look like the ASICS trademark; in fact, on the shoes in issue, our differences are patently obvious. Our designs use one horizontal stripe while ASICS uses two horizontal lines — a prominent feature of the ASICS trademark. In addition, our designs do not mimic the curves and contours of ASICS' design. There are many differences. "

Read the full SKECHERS press release.

Here are pictures of the two shoes in question:


The shoe on the left is from ASICS, and the one on the right is SKECHERS. Looking at the two side-by-side, I tend to agree with Mr. Paccione, in that the stripe patters are indeed different- there are different numbers of stripes, one is wavy and the other straight, the orientation is different... and a number of other differences.

I think it might be tough for ASICS to win this one, however this can only be determined by significant analysis- and the use of consumer surveys. This is gearing up to likely be a very long and expensive court battle.

Keith Urban v. Keith Urban- trademark infringement

The Smoking Gun has an interesting article today, regarding litigation by Keith Urban. The two litigants are both named Keith Urban. The plaintiff, Keith Lionel Urban, is a country musician from Nashville, Tennessee. He is the husband of Nicole Kidman who spent three well publicized months in rehab. The defendant is Keith D. Urban, of Wayne, New Jersey. He is a painter.

Keith L. Urban is unhappy that Keith D. Urban runs the website keithurban.com. He wants Keith D. Urban to stop selling his paintings on the website. Keith L. Urban was slow in registering domain names, and he uses the website keithurban.net. I did a quick search through Google for "Keith Urban," and the all of the first few pages of search results all point to the country singer, and identify his .net website.

When I first read about this website, I figured that Keith L. Urban must be back on the bottle- the other guy is actually named Keith Urban, registered the domain name first, so one could logically conclude that the painting Urban has the right to use the domain name comprising his actual name.

Then I took a look at the keithurban.com website, and I immediately knew that Keith L. Urban had a very strong case, and will likely win against Keith D. Urban. The country singer alleges that the painter is using the website of keithurban.com in bad faith, and confusing people into believing that he is the painter in addition to being the singer.

Of particular note, keithurban.com leads you to believe that it is actually the singer who does the paintings. The website prominently proclaims:

You have reached the site of Keith Urban
To Those Who Don't Know, Oil Painting
Is One Of My Hobbies.

The website later continues with:

For production reasons the print will not be the exact size as the painting, however it will be as close to the original size of the painting as possible.
The print will be autographed and numbered on the back and also comes with
a certificate of authenticity that is also autographed and numbered.

At no point does the website indicate that the individual is someone other than Keith Urban, country music star. Indeed, it leads one to believe that this may even be the Keith Urban, musician. By not clarifying this important fact, the painter Keith Urban is likely attempting to profit from the well known musician. Many people (myself included) will often go directly to a name and add ".com" when attempting to visit a website. I imagine the painter is receiving a good bump in website traffic by these accidental visits. As I noted earlier, the .com website does not show up within the first few pages of Google search results.

I have saved copies of the main page of keithurban.com, in the likely event that the website is shut down or ordered to change (and likely enter a disclaimer). Click the thumbnail image above to view the main page.