UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF VIRGINIA

ALEXANDRIA DIVISION

MEMORANDUM OF LAW IN SUPPORT OF MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED OR, IN THE ALTERNATIVE, FOR SUMMARY JUDGMENT

The Complaint filed against defendants should be dismissed pursuant to Fed R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can be granted or, in the alternative, summary judgment should be granted pursuant to Fed. R. Civ. P. 56. Dismissal is proper because the Complaint fails to plead facts necessary to constitute a cognizable claim under the Lanham Act or Virginia law. Specifically, plaintiff has not alleged facts constituting the bona fide use of the mark at issue in the ordinary course of trade and has, under the plead facts and in actual fact, abandoned any rights it may have had in that mark.

Factual Background

The American Unitarian Association ("AUA") was incorporated in the State of Virginia on or about September 28, 2000, as a nonstock corporation organized for religious and charitable purposes. Defendant Burton is the incorporator, a director and President of the AUA and defendant Fisher is a director and Secretary and Treasurer of the AUA. Burton Affidavit, attached as Exhibit A, at ¶¶ 7-14, & 18; Fisher Affidavit, Exhibit B,at ¶ 18. Plaintiff Unitarian Universalist Association alleges that the defendants AUA, Fisher and Burton are using the name American Unitarian Association in violation of its rights under trademark law.

Legal Argument

I. The Plaintiff Has Abandoned Any Rights It May Have Had in the American Unitarian Association (AUA) Name Under Federal Law

Religious corporations, religious tradenames and religious trademarks are governed by the same rules as other corporations, trademarks and tradenames. See McCarthy on Trademarks § 9:7 and Right of Charitable or Religious Organization or Corporation to Protection Against Use of Same or Similar Name by Another, 37 A.L.R.3d 277

Because trademark rights derive from the use of a mark in commerce and not from mere registration of the mark, the owner of a mark will lose its exclusive rights if it fails actually to use it. 15 U.S.C. §1127. A mark is deemed to be thus "abandoned" when "its use has been discontinued with intent not to resume such use." Emergency One, Inc. v. American FireEagle, Ltd., 228 F3d. 531, 535 (4^th Cir. 2000); Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7^th Cir. 1992).

The leading trademark treatise summarizes the law:

It is actual usage of a symbol as a "trademark" in the sale of goods which creates and builds up rights in a mark. Therefore, lack of actual usage of a symbol as a "trademark" can result in a loss of legal rights. This loss is known as "abandonment." Trademark rights may be abandoned through a period of non-use, from which an inference of intent not to resume use can be made.

Since 1989, the federal definition of "use" of mark is "the bona fide use of mark in the ordinary course of trade and not merely to reserve a right in a mark.

McCarthy on Trademarks, §17:9.

The Lanham Act is the basis of the Complaint’s first four counts and, as discussed below, has an almost controlling effect on Virginia common law trademark law, which is the basis of counts five and six. Violations of the Lanham Act also are part of the legal predicate for the alleged applicability of Virginia Code §18.2-499 and §18.2-500 which serve as the basis for count seven of the Compliant. Count eight is derivative of the other seven, simply seeking declaratory relief.

The Lanham Act, 15 USC §1127, contains the following definitions:

The term "mark" includes any trademark, service mark, collective mark or certification mark.

The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce –

(1) on goods when –

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sales, and

(B) the goods are sold or transported in commerce, and

2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State ***

A mark shall be deemed to be "abandoned" if either of the following occurs:

(1) When its use has been discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. ***

The plaintiff in its Complaint makes no factual allegations that would constitute use of the American Unitarian Association mark in commerce since 1961. In paragraph 20 of the Complaint, the plaintiff refers to books and pamphlets, sold under the UUA name or the Skinner House Books name, the text of which refers to the history of the UUA. Discussing religious history in books sold under the UUA name or Skinner House Books does not constitute using the AUA name in commerce even if those books refer to the historical AUA. The plaintiff has not placed the AUA name "in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sales" in order for the mark to be deemed used in commerce by the Lanham Act (15 USC 1127 "use in commerce"). To hold otherwise would imply that the Encyclopedia Britannica or other publishers are using the AUA name in commerce when they refer to the historical AUA in articles they publish. Similarly, occasional discussions of Unitarian history in the UUA magazine does not constitute use in commerce. As with the books and pamphlets, the AUA mark is not associated with the sale, provision or transport of the magazine in any way and the requirements of the Lanham Act are not met. By virtue of the non-use of the mark for at least three years, the presumption is that the mark has been abandoned.

Similarly, the UUA makes no allegation that it has used or displayed the AUA mark in the sale or advertising of services or that the services were rendered in commerce as required by the Lanham Act with respect to service marks.

As plaintiff acknowledges in ¶14 and ¶ 21 and of the Complaint, the American Unitarian Association consolidated (merged) with the Universalist Church of America (UCA) to form the Unitarian Universalist Association in 1961. The two constituent corporations (here the AUA and the UCA) ceased to exist. No corporation existed with the name American Unitarian Association from 1961 until it was incorporated in Virginia in September of 2000.

Since 1961, the UUA has not engaged in commerce as the AUA or under the AUA name. No goods or services have been advertised, sold, transported or disseminated by the UUA under the AUA name for decades. The religion is now know as Unitarian Universalism (or UUism) and adherents to the UUA "religion" are known as Unitarian Universalists or UUs for short. The merger represented the beginning of a new faith and a new era. As Unitarian Universalist Association President John Buehrens wrote in the most recent UU World (May/June 2001, page 5) "Our Association was born 40 years ago in the midst of the American civil rights movement." At the keynote sermon in Symphony Hall, Boston, on May 23, 1960, after the votes for the merger, Donald S. Harrington said:

We stand tonight at such a milestone, one which is partly a birth, partly a commencement, partly a marriage, and which involves a degree of death, an end of things which have been precious to us and of institutions with which we have been lovingly familiar.

A Stream of Light: A Short History of American Unitarianism (Second Edition), Conrad Wright, Editor, Skinner House Books, 1975, p. 154. Skinner House Books is a UUA enterprise.

It was a marriage between Unitarian and Universalists giving birth to the Unitarian Universalist Association and Unitarian Universalism and involved the death of "of institutions with which we have been lovingly familiar," to wit the American Unitarian Association and the Universalist Church of America. The defendants goal is to bring the AUA back to life not only corporately but also religiously.

The Unitarian Universalist Association holds itself out as offering Unitarian Universalism (rather than Unitarianism). It cannot do otherwise without implying a rejection of the newly created religion named "Unitarian Universalism." If a corporate name is not being used by the buying public, then it is not being used in such a way that it furnishes a basis for preventing similar use by others. See Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576 (Fed. Cir. 1984).

Trademark and tradename law require use in commerce for a name or mark to be protected. As the Supreme Court stated in United Drug Co. v. Theodore Rectanus Co., 248. U.S. 90, 63 L.Ed. 141, 39 S. Ct. 48 (1918) "[t]here is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed." A corporate name may become abandoned through long non-use even if the corporation still uses the name for payment of taxes, declaring dividends and the like. Lawyers Title Ins. Co. v. Lawyers Title Ins. Corp., 109 F.2d 35 (D.C. Cir. 1939) cert. denied 309 U.S. 684, 84 L.Ed. 1028, 60 S. Ct. 806 (1940). In this case, the UUA does not allege even ministerial uses of the AUA for things like paying taxes and the like.

A corporate name may become abandoned through long non-use even if the corporation still uses the name for payment of taxes, declaring dividends, etc. and still holds corporate papers under that name. If the corporate name is not used before the buying public, it is not being used in such a way that it furnishes a basis for preventing similar use by others.

McCarthy on Trademarks §17:14.

At paragraph 20 of the Complaint, the plaintiff alleges that from time to time, wills make bequests to the American Unitarian Association. The UUA is not soliciting requests for bequests to the AUA. Receiving bequests certainly does not constitute the use of the American Unitarian Association in commerce within the meaning of the Lanham Act. Moreover, the last alleged instance of this occurring was in 1997, beyond the three year period of presumed abandonment under the Lanham Act. It would, however, be unjust for a bequest meant for the old AUA to not be directed to its successor the UUA. Defendants have indicated in writing to the plaintiff that they are willing to enter into an agreement whereby all bequests made by wills executed prior to the incorporation of the new AUA shall be the property of the UUA. It is within the equitable power of the Court to fashion a remedy that requires as much and defendants would support such a remedy with respect to the bequest issue.

The Lanham Act deems a mark abandoned "when its use has been discontinued with intent not to resume use." 15 USC §1127. "Intent to abandon" is no longer the relevant legal standard.

There is a difference between intent not to abandon or relinquish and intent to resume use in that an owner may not wish to abandon its mark but may have no intent not to resume its use … An "intent to resume" requires the trademark owner to have plans to resume commercial use of the mark. Stopping at an "intent not to abandon" tolerates an owner’s protecting a mark with neither commercial use nor plans to resume commercial use. Such a license is not permitted by the Lanham Act.

Exxon Corp v. Humble Exploration Co., 695 F.2d 96, 217 U.S.P.Q 1200 (5^th Circuit 1983) at 217 U.S.P.Q. 1204-05. See also Emergency One, Inc. v. American Fireeagle, Ltd., 228 F.3d 531, 535-536 (4^th Cir. 2000). McCarthy on Trademarks §17:9.

The modern Restatement also takes the position that the "intent not to resume use" standard today also governs non-federal law cases concerning the abandonment of common law marks. Restatement (Third) of Unfair Competition §30(2) (1995).

Both the Fifth Circuit in the Humble case and the Restatement emphasize that the requisite intent is an intent to resume a commercial level of use, not just an intent to resume a token level of use to try to avoid loss of rights. Since 1989, federal law is explicit on this point, because "use" is defined as the bona fide use of the mark in the ordinary course of trade, not mere token use to reserve rights in a mark.

McCarthy on Trademarks §17:11.

The UUA has alleged no intent to resume "use in commerce" of the AUA name within the meaning of the Lanham Act. It has no plans to sell goods and services under the AUA name. Moreover, although it has never filed for trademark protection for the American Unitarian Association mark, the Unitarian Universalist Association has filed for the following trademarks (with the following serial numbers and filing dates):

UU World (SN 76170595, November 21, 2000)

UU & Me (SN 75331939, July 28, 1997)

Unitarian Universalist Service Committee (SN 74386541, May 3, 1993)

World Journal of Unitarian Universalist Association (SN 73662235, May 21,

1987)

Beacon (SN 73594212, April 18, 1986)

Unitarian Universalist (SN 73106267, November 11, 1976)

Concord Library (SN 74232036, December 20, 1991)

In addition, the UUA had filed for trademarks on various symbols. See Burton Affidavit, Ex. A at ¶ 9.

Although the UUA took all of these steps to protect "Unitarian Universalism" and variations on that mark, it never took any steps to protect "Unitarian" or "Univeralism" standing alone. It took no steps to protect the American Unitarian Association name. From these and other facts and 40 years of non-use in commerce, it is reasonable to infer that the UUA does not and never had the requisite intent to resume use of the AUA mark in commerce.

In paragraph 43 plaintiff makes the conclusory allegation that it has made "widespread and long-standing use of the name and mark American Unitarian Association" without providing in that paragraph or elsewhere in the Complaint a single factual example of use in commerce within the meaning of that term under the Lanham Act. Mere use of some undefined sort does not give rise to a cognizable claim. The plaintiff must have used the mark in commerce within the meaning of the Lanham Act. It has not. Conclusory allegations unsupported by specific allegations of fact are insufficient to constitute a cause of action. Davis v. City of Portsmouth, 579 F. Supp. 1205, 1210 (E.D. Va. 1983) citing Jackson v. Nelson, 405 F. 2d 872 (9^th Cir. 1968); Harper v. United States, 423 F. Supp. 192 (D. S.C. 1976); Drink Group, Inc. v. Gulfstream Communications, Inc., 7 F. Supp. 2d 1009. 1010 (N.D. Illinois, 1998).

II. The Plaintiff Has Abandoned Any Rights It May Have Had in the American Unitarian Association (AUA) Name Under Virginia Common Law

The UUA has not alleged any registration of any mark in Virginia. As with the Lanham Act, under Virginia common law "[t]he exclusive right to use a trademark is acquired by its use and application to a particular article. It is only the actual use of a mark, device or symbol by the dealer which entitles him to, and gives him the right to be protected in, the enjoyment of a trademark." §3 Trademarks and Tradenames, Michie Jurisprudence of Virginia and West Virginia; AIM Percolating Corp. v. Ferrodine, 139 Va. 366, 124 S.E. 442 (1924); CPC Int’l Inc. v. Skippy, Inc., 651 F. Supp. 62 (E.D. Va. 1986). The right to use a trademark may be forfeited by a nonuser and cannot be resumed in prejudice of one who has used it exclusively during the period of abandonment, Blackwell v. Dibrell, 3 Hughes 151, 17 Am. Law Reg. 516, 3 F. Cas. 549 (No. 1475) (C.C.E.D. va 1878) (finding abandonment after eight years of nonuse).

Thus, the legal principles applicable under Virginia Common law are "essentially the same" as under the Lanham Act and courts have so held. Black and Decker (U.S.) Inc. v. Pro-Tech Power, Inc., 26 F.Supp.2d 834, 856 (E.D. Va 1998), appeal dismissed, 232 F.3d 905 (Fed. Cir. 2000). See also Lone Star Steakhouse & Saloon v. Alpha of Virginia, 43 F.3d 922, 930, n. 10 (4^th Cir. 1995).

III. The Plaintiff Has No Cause of Action Pursuant to Virginia Code §§18.2-499, 500

Virginia Code §§18.2-499 reads in part:

A. Any two or more persons who combine, associate, agree, mutually undertake or concert together for the purpose of (i) willfully and maliciously injuring another in his reputation, trade, business or profession by any means whatever or (ii) willfully and maliciously compelling another to do or perform any act against his will, or preventing or hindering another from doing or performing any lawful act, shall be jointly and severally guilty of a Class 1 misdemeanor. Such punishment shall be in addition to any civil relief recoverable under § 18.2-500.

This provision is inapposite for several reasons. Defendants have not acted to "willfully and maliciously" injure another. Defendants have the right to use the American Unitarian Association mark because the plaintiff abandoned whatever rights it may have had in the name under the Lanham Act and Virginia common law. Moreover, exercising lawful rights does not constitute "injuring another" within the meaning of the statute.

Conclusion

Based on the foregoing law, the Complaint against all three defendants should be dismissed pursuant to Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can be granted or, alternatively, summary judgment should be granted pursuant to Fed. R. Civ. P. 56.

Respectfully submitted,

_____________________________

Larry L. Goodman (Va. Bar # 32621)

Nancy Chase Burton

David R. Burton