Church Names
By Richard R. Hammar, J.D., LL.M., CPA
© Copyright 1991, 1998 by Church Law & Tax Report. All rights reserved. This publication is designed to provide accurate and authoritative information in regard to the subject matter covered. It is provided with the understanding that the publisher is not engaged in rendering legal, accounting, or other professional service. If legal advice or other expert assistance is required, the services of a competent professional person should be sought. Church Law & Tax Report, PO Box 1098, Matthews, NC 28106. Reference Code: m20
Occasionally, a new church will acquire a name that is so similar to the name of another church in the same locality that public confusion is likely to result. For example, a new congregation calling itself Calvary Presbyterian Church establishes a church in a community already having a Presbyterian church called “Calvary Church.” A confusion of names may occur in other ways, such as a new sect or religious denomination acquiring a name similar to that of an existing one, or a local church withdrawing from a parent religious body but continuing to employ a name associating itself with the parent body. In any of these situations, does the preexisting church body have any legal basis for halting further use of the similar name by the other church or religious organization?
The courts have long protected the names of existing commercial enterprises against unauthorized use of confusingly similar names by other commercial organizations.1 In many instances, the courts are simply enforcing state corporation laws that, in most states, prohibit new corporations from using names that are identical or confusingly similar to those of existing organizations.2 Other courts have emphasized that such name protection statutes are merely embodiments of the underlying common law of unfair competition, which protects existing corporate names independently of any provisions in state corporate laws.3 The courts have consistently protected the names of nonprofit corporations as well on the basis of one or more of the following theories: (1) the applicable nonprofit corporation statute contains a provision protecting the preexisting names of nonprofit corporations in much the same way as business corporation statutes protect the names of business corporations;4 (2) extension of the name protection provided by business corporation statutes to nonprofit corporations when the state nonprofit law does not specifically provide such protection;5 (3) the common law of unfair competition;6 and (4) trademark protection.
In states having a name protection statute protecting the names of religious corporations, a church's name generally will be protected against later use of the same or a confusingly similar name in either of two ways: (1) the state official charged with the duty of reviewing applications for incorporation can reject the application of an organization whose name is either identical or deceptively similar to the name of an existing corporation; or (2) if the state official chooses to recognize the corporate status of an organization whose name is either identical or deceptively similar to that of an existing corporation, the offended corporation may sue to stop further use of the name.
As noted above, a church may also seek legal protection of its name through the law of unfair competition. Unfair competition is a civil wrong created to protect existing organizations from the deceptive or unfair practices of competitors. It is entirely separate and distinct from trademark law. Among other things, unfair competition means the use of a name that is either identical with or confusingly similar to that of a preexisting organization. As one court has observed:
In the law of unfair competition, a corporate or trade name used in connection with the business to which it relates may become an asset of great value. When it does, it partakes of the nature of a property right, and equity will enjoin the appropriation and use of such name if confusion of identity is likely to result.1
Courts have consistently protected charitable as well as business organizations from unfair competition. In a leading case one court observed:
We hold that the common law principles of unfair competition protecting business corporations against another's use of the same or similar name are applicable to charitable or religious associations and corporations. . . . The right to this protection rests generally upon the fact that the use of identical or similar terms or names is likely to result in confusion or deception.2
To successfully establish that the name chosen by another organization constitutes unfair competition, a church must demonstrate
1. Prior use of the name.
2. Subsequent use of the same or a confusingly similar name by another religious organization.
3. The church with prior use of the name will be injuriously affected by continued use of the same or a confusingly similar name by the other religious organization. It has been held that anything that diverts members or donations from one church to another causes injury. Thus, injury generally will be established by the unauthorized use of a name identical or confusingly similar to that of a preexisting corporation.
4. The church with prior use of the name did not delay for an unreasonable time in seeking to enjoin further use of the same or a confusingly similar name by the other religious organization.3
Generic or highly generalized names are not protected from misappropriation under the doctrine of unfair competition unless a secondary meaning has been established. A generic name acquires a secondary meaning through such continued use that it is commonly associated with a particular church or religious organization in the public mind. Proof of a secondary meaning is a question of fact to be established on a case--by--case basis.
To illustrate, the General Conference of the Seventh--Day Adventists sued the “Seventh--Day Adventist Congregational Church” (located in Kealakekua, Hawaii) and its pastor for trademark infringement and unfair competition. A trial court entered a judgment “on the pleadings” in favor of the denomination (i.e., it refused to let the case proceed to trial). The court also issued an order prohibiting the local church from using a name including the term Seventh--Day Adventist or SDA, or representing to others that it was connected in any way with the Seventh--Day Adventist denomination. The local church refused to comply with this order on the ground that the denomination's trademark was invalid since it was “generic.” The trial court found the church to be in contempt of court for ignoring its order, and set a fine of $500 per day until the church and its pastor agreed to comply. The church and pastor appealed this decision, and a federal appeals court agreed that the trial court's summary ruling in favor of the denomination was improper.4 The court reasoned that the church and its pastor had raised a significant issue (the validity of the denomination's trademark) that should have been heard by a jury. The appeals court noted that “a trademark's function is to identify and distinguish the goods and services of one seller from another.” A trademark, however, is always “subject to the defense that it is generic.” A “generic” trademark is “one that tells the buyer what the product is, rather than from where, or whom, it came.” Generic marks are not eligible for trademark protection since they do “not indicate the product of service's origin, but is the term for the product or service itself.” The church and pastor claimed that the name “Seventh--Day Adventist” is generic since it refers to a religion rather than to a particular church organization. They asserted: “The phrase Seventh--Day Adventist is not theirs alone, as they would like to claim, for it describes a system or set of Bible based Christian beliefs, doctrines, and standards. One therefore is not necessarily Seventh--Day Adventist because of what organization he may be affiliated with, but rather he is a Seventh--Day Adventist because of what he believes.”
The appeals court concluded that the denomination's claim of trademark infringement would fail if the local church and its pastor could prove that the name “Seventh--Day Adventist” is generic. On the other hand, if the denomination could establish that its name was not generic, then it would win its trademark infringement suit if it could prove a “likelihood of confusion” caused by the church's continued use of a name similar to that of the denomination. In deciding whether or not there is a likelihood of confusion, a court should consider the following factors: (1) the strength of the denomination's name; (2) the similarity of the parties' goods or services; (3) similarity of the two names; (4) evidence that persons actually have been confused by the similarity of names; (5) marketing methods used; (6) the likely degree of care the public would take in differentiating between the names; (7) the intent of the local church in using the similar name; and (8) likelihood of “expansion of product lines” (i.e., will the local church benefit at the expense of the denomination). The local church claimed that it had “never in any way sought to deceive or confuse anyone in regard to our name,” and that its use of the word “Congregational” in its name effectively distinguished it from the Seventh--Day Adventists. The case was sent back to the trial court to determine whether or not the denomination's name is generic, and if not, whether the local church's use of its present name created a “likelihood of confusion.”
A local church congregation that votes to disaffiliate from a parent denomination may lose the right to use the denominational name. One court has observed:
The local name of a church is of great value, not only because business is carried on and property held in that name, but also because millions of members associate with the name the most sacred of their personal relationships and the holiest of their family traditions. And, since the right to use the name inheres in the institution, not in its members . . . when they cease to be members of the institution, use by them of the name is misleading and, if injurious to the institution, should be enjoined.5
Finally, in some cases the name of a church or religious organization can be protected under federal trademark law. Trademark is defined by the federal Trademark Act as “any word, symbol, or device, or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured and sold by others.”6 Trademark protection is thus available to any church or religious organization that uses a particular name to identify goods or services it offers to the public. For example, if a religious denomination publishes religious literature for its churches, and affixes its name to such literature, the name identifies the goods and therefore is eligible for trademark registration. Similarly, if a church establishes a counseling center, correspondence school, private elementary or secondary school, nursing home, radio or television station, or magazine that is identified by the church's name, the name may be entitled to trademark protection.
Of course, trademark protection is not available for a name or mark that so resembles a mark already registered with the Patent and Trademark Office, or previously used in the United States by another and not abandoned, as to be likely to cause confusion or to deceive. There are two ways of determining whether a proposed name conflicts with a preexisting name that is entitled to protection. First, a commercial search service can be retained which, for a fee, will render an opinion on the availability of a specified name. Second, an application for registration can be filed with the Patent and Trademark Office in Washington, D.C. Although the Patent and Trademark Office takes several months to evaluate an application, it eventually will notify the applicant whether its proposed name or mark conflicts with a preexisting mark.
“Descriptive” and highly generalized names and marks are not eligible for registration unless a secondary meaning can be established. A secondary meaning is established by proof of public association of a generic name or mark with a particular church or religious organization. So--called “generic” marks may not be capable of trademark protection even if a secondary meaning is present. The distinction between descriptive and generic marks is a close one that has caused the courts considerable difficulty.
An application for trademark registration is a relatively simple procedure consisting of the following elements:
1. Preparation of a written application stating the applicant's name, address, state of incorporation or organization; the goods or services in connection with which the name or mark is used; the class of goods or services according to the official international classification system; the date of the first use of the name or mark on or in connection with the goods or services; the date of the first use of the name or mark as a trademark “in commerce”; the mode or manner in which the mark is used on or in connection with the goods.
2. A drawing of the mark, unless the mark consists solely of a name—in which case the name may be typed in capital letters on a piece of paper.
3. Five specimens of the goods bearing the name or mark. No specimens are required for names or marks associated with services.
4. The required filing fee.7
If a church name is not used in connection with any specific goods or services, trademark protection is unavailable.
For related information on this topic see the following articles:Reporting Requirements for Churches
Church Officers, Directors, and Trustees
Removing Disruptive Individuals