Holy Spirit Association For The Unification Of World Christianity v. World Peaceand Unification Sanctuary, Inc.

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

HOLY SPIRIT ASSOCIATION FORTHE _ :

UNIFICATION OF WORLD CHRISTIANITY :

Plaintiff,

V. □ —-3:18-CV-1508

: (JUDGE MARIANI)

WORLD PEACE AND UNIFICATION :

SANCTUARY, INC. :

Defendant.

MEMORANDUM OPINION

I. INTRODUCTION AND PROCEDURAL HISTORY

In this case, Plaintiff, Holy Spirit Association For The Unification of World Christianity

("HSA-UWC’) has brought suit against Defendant, World Peace and Unification Sanctuary,

Inc. (“Sanctuary Church”) for violating provisions of the Lanham Act, 15 U.S.C. § 1114, et

seg. (Doc. 1). The Lanham Act provides that “[a}ny person who shall, without the consent

of the registrant — (a) use in commerce any reproduction, counterfeit, copy, or colorable

imitation of a registered mark in connection with the Sale, offering for sale, distribution, or

advertising of any goods or services on or in connection with which such use is likely to

cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action by the

registrant for the remedies hereinafter provided.” 15 U.S.C. § 1114(1). Plaintiff has brought

four causes of action under the Lanham Act.

Plaintiff's first cause of action alleges that HSA-UWC “possesses valid and

enforceable rights in the TWELVE GATES Mark in connection with all of the goods and

services at issue in this case by virtue of their extensive use, registration, promotion, and

advertisement of the TWELVE GATES Mark, and has possessed such rights at all times

material hereto.” (Doc. 1, 152). Count One further alleges that the “Defendant’s Marks

create the same or similar commercial impression as the TWELVE GATES Mark as

evidenced by, among other things, their similar appearance to the TWELVE GATES Mark

and Defendant’s use of Defendant's Marks in connection with religious services which are

competitive with Plaintiff's religious services.” (Id. at J 53).

Plaintiff HSA-UWC alleges that Defendant Sanctuary Church’s conduct in its use of

the TWELVE GATES Mark is ‘willful, deliberate, in bad faith and undertaken with knowledge

of Plaintiff's prior rights, and with full knowledge that Sanctuary Church has no right, license,

or authority to use Plaintiff's Mark or any confusingly similar variant thereof.” (ld. at 7 54).

HSA-UWC further alleges that Defendant's “unauthorized use of Plaintiff's Mark is likely to

cause confusion, or to cause mistake, or to deceive as to sponsorship, affiliation,

connection, or association of Defendant or Defendant’s commercial activities with Plaintiff or

Plaintiffs commercial activities, or as to the origin, sponsorship or approval of Defendant's

Services or commercial activities by Plaintiff.” (/d. at ] 55). Plaintiff alleges that the

Defendant's actions as alleged constitute “willful violation of Plaintiffs TWELVE GATES

Mark in violation of the Lanham Act, 15 U.S.C. § 1114.” (Id. at 56).

In its second cause of action brought under the Lanham Act, 15 U.S.C. § 1125(c),

Plaintiff asserts that as a result of its “extensive advertisement and promotion of its religious

services and outreach, the TWELVE GATES Mark has become famous in the United States

and throughout the world.” (Doc. 1, 59). Plaintiff thus alleges that Defendant Sanctuary

Church commenced its unlawful use of the TWELVE GATES Mark after the TWELVE

GATES Mark had become famous and, as a consequence, Plaintiff HSA-UWC asserts that

‘[rlelevant consumers are likely to make an association between Defendant's Marks and the

TWELVE GATES Mark’; that the Defendant’s Marks “are likely to impair the distinctiveness

of Plaintiffs TWELVE GATES Mark’: that Defendant's Marks “are likely to blur and/or

tarnish the positive associations with Plaintiffs TWELVE GATES Mark”; and that

accordingly the Defendant's actions “constitute trademark dilution in violation of the Lanham

Act, Section 43(c), 15 U.S.C. 1125(c).” (Id. at J] 61-64).

Plaintiff's third cause of action alleges that the Defendant’s actions as described

herein constitute unfair competition under the common law.

‘In paragraphs 27 and 28 of its Complaint, HSA-UWC alleges that in 1965 the Reverend Sun

Myung Moon developed the TWELVE GATES Mark “to serve as the distinctive trademark of HSA-UWC’

and that Reverend Moon “ensured that every aspect of the unique design of the TWELVE GATES Mark

holds symbolic meaning to Unification Church members.” Further, HSA-UWC asserts that “[t}he TWELVE

GATES Mark as a whole signifies the cosmos with God at the center. The shape of the Mark represents

the steering wheel of a boat to symbolize steering the cosmos. Moreover the twelve rays emanating from

the center represent the twelve months of the year while the four wider lines represent the cardinal

directions — east, west, south and north.” (Doc. 1 at Jf] 27, 28).

Finally, the fourth cause of action, “False Suggestion of Connection, under the

Lanham Act, 15 U.S.C. § 1052(a)”, again asserts that the TWELVE GATES Mark is “famous

in the United States and throughout the world” and that Defendant’s Marks “create the same

or similar commercial impression as, or is a close approximation of, the TWELVE GATES

Mark and falsely suggests a connection with HSA-UWC’ when Plaintiff HSA-UWC is not

connected with the Sanctuary Church. (Doc. 1, ff 71-73). Accordingly, Plaintiff alleges that

to the fame of Plaintiff and the TWELVE GATES Mark, when Defendant’s Marks are

used in commerce, a connection with Plaintiff is presumed by the consuming public” and

thus “Defendant’s use of Defendant’s Marks are likely to create a false sense of connection

to Plaintiff in violation of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a)’, thereby

Causing irreparable injury to Plaintiff. (/d. at If] 74-76).

Defendant Sanctuary Church has filed an Answer with Affirmative Defenses and has

also set forth counterclaims. (Doc. 13). Defendant, in its Answer to Plaintiffs Complaint,

admits “that the Tongil symbol is used by the Unification Church and all those who follow

the teachings of Rev. Sun Myung Moon worldwide in the conducting of religious ceremonies

and rituals, and that the Tongil symbol was created by Reverend Sun Myung Moon.” (id. at

14). The Defendant Sanctuary Church further states that the “Tongil symbol is a religious

symbol having deep meaning for all followers of Rev. Sun Myung Moon throughout the

world, including members of Sanctuary, and is used on all wedding rings, gravesite

monuments and other personal items, in addition to being used during worship services and

in theological texts.” (/d.). Defendant again admits that it uses the Tongil symbol “as a daily

part of the religious practice of its supporters and in its Sanctuary’s worship services.” (Id.

at J 8).

However, Defendant Sanctuary Church in its Answer to the Plaintiff's Complaint

asserts that the Tongil symbol is a ‘Teligious symbol” and “was created to be used by

members of the Unification Church worldwide, and not as ‘the distinctive trademark of HSA-

UWC’ as alleged by Plaintiffs, as it is not a ‘trademark’ and was not created for exclusive

use by HSA-UWC.” (/d. at J 27).

Throughout its Answer, Defendant denies that the “TWELVE GATES Mark or Tongil

symbol is a valid trademark or service mark owned by Plaintiff.” (See e.g., id. at 28, 30).

With respect to the Plaintiffs assertion in its Complaint that the TWELVE GATES Mark is

the subject of a valid and Subsisting United States trademark registration, serial number

77,626,340, which was registered by Plaintiff on June 30, 2009, Sanctuary Church responds

by denying that “the alleged ‘TWELVE GATES Mark’ is a valid trademark or service mark

owned by Plaintiff, and submits that the Tongil symbol is a sacred religious symbol that is

free to be used by all followers of the teachings of Rev. Sun Myung Moon.” (Id. at ¥ 32).

The Defendant also denies in its Answer that the TWELVE GATES Mark is

“distinctive and famous.” (Id. at J 35).

Defendant Sanctuary Church does admit that ‘it has used the Tongil symbol as part of

its religious rituals, ceremonies, and ministries since 2013 as followers of the religious

teachings of Reverend Sun Myung Moon, including use in connection with religious services,

newsletters, its website, and in videos posted on YouTube and Vimeo.” (Id. at J 40).

Sanctuary Church denies the allegations of Plaintiff's first, second, third and fourth

causes of action. (See generally, Answer, Doc. 13, 1 51-77).

Following its Answer to the allegations of Plaintiff's Complaint, the Sanctuary Church

also asserts a number of Affirmative Defenses (see Doc. 13, at 34-37) which the Court will

not set forth at length here.

Defendant Sanctuary Church then sets forth Counterclaims against HSA-UWC,

(Counterclaims, Doc. 13, at 38-59). Paragraphs five, six, and seven are set forth under the

heading “Factual Background.” Paragraphs eight through twelve contain the

Defendant/Counterclaim Plaintiff's allegations regarding the appointment of Sean Moon by

the Rev. Sun Myung Moon as his “legitimate heir and successor in order to continue the

Unification Church’s religious work worldwide.” Paragraphs 13 through 20 of the Sanctuary

Church's counterclaims are set forth under the subtitle “Hak Ja Han Moon's Takeover as

Successor’, and paragraphs 21 through 28 proceed under the subtitle “Hak Ja Han Moon's

changes of Rev. Moon's Theology.” Paragraphs 29 and 30 of Sanctuary Church’s

counterclaims proceed under the subtitle “Sean Moon’s Creation of Sanctuary” and

paragraphs 31 though 50 are set forth under the heading “Use of the Tongil Symbol by

Sanctuary.” Paragraphs 46 through 54 of Sanctuary Church's counterclaims against HSA-

UWC proceed under the heading “Meaning of ‘Cheon I! Guk’ and its Use by the Unification

Church and Sanctuary.”

Thereafter, Sanctuary Church, the Defendant/Counter-Plaintiff, sets forth four causes

the action. The first count seeks cancellation of the registered trademark issued to Counter-

Defendant HSA-UWC on the basis that the “Tongil symbol is used not only by Counter-

Plaintiffs, but all individuals across the globe who follow the teachings of the late Reverend

Sun Myung Moon”: that the Tongil symbol ‘is not a trademark or service mark but is instead

a ‘universal symbol’ or generic religious symbol central to the worship and religious

ceremonies of followers of Reverend Sun Myung Moon.” (Counterclaims, Doc. 13, Tf 58-

99). Count One further asserts that the Tongil symbol is a “universal symbol and functions

in an ornamental and/or descriptive manner, but does not function as a trademark or service

mark, making it unregistrable before the U.S. Trademark Office.” (Id. at J 60). Sanctuary

Church alleges that ‘its free exercise of religion will be infringed if Counter-Defendant is

permitted to maintain and enforce its trademark registration for the Tongil symbol against

Counter-Plaintiff, Sanctuary Church.” (/d. at ] 61). Sanctuary Church as Counter-Plaintiff

asserts that the Tongil symbol is a “generic religious symbol that is used by all followers of

the teachings of Rev. Sun Myung Moon” such that if HSA-UWC is permitted exclusive right

to use the Tongil symbol, Sanctuary Church’s right to the free exercise of religion under the

First Amendment will be violated. (Id. at J 62).

The Counter-Plaintiff Sanctuary Church thus requests this Court order the U.S.

Patent and Trade Office to cancel trademark Reg. No. 3646838 on the ground that itis a

“universal symbol’ i.e., a “generic religious symbol to which no party should have an

exclusive right to use”, and for the reason that it does not “function as a trademark or

service mark” and instead it is a “universal religious symbol similar to a Cross or Star of

David.” (Id. at J 63).

Count Il, entitled “Declaratory Judgment of Non-Infringement and Declaratory

Judgment of No Unfair Competition’, is assertedly brought under 15 U.S.C. §§1114 and

1125. Here, the Sanctuary Church again alleges that the Tongil symbol or the TWELVE

GATES Mark, as it is referred to by the Counterclaim-Defendant HSA-UWC, is a “universal

symbol” or a “generic religious symbol” which the Sanctuary Church asserts “does not

function as a trademark or service mark and is not protectable or enforceable as such.”

Sanctuary Church asserts that HSA-UWC “does not own a valid and enforceable federal

trademark registration for the Tongil symbol” and “does not own valid and enforceable

unregistered trademark rights in the Tongil symbol.” (Counterclaims, Doc. 13, J 66).

Sanctuary Church thus seeks judgment from this Court declaring that its use of the Tongil

symbol in connection with its religious activities does not constitute trademark infringement

or unfair competition and further seeks a judgment from this Court declaring that the First

Amendment prevents any finding of liability on the part of Sanctuary Church and precluding

the Plaintiff/Counterclaim-Defendant HSA-UWC from entitlement to injunctive relief or

monetary damages for trademark infringement or unfair competition under the Lanham Act.

(See id. at 1] 67-69). Alternatively, the Sanctuary Church asserts that, should this Court

find that the Tongil symbol serves as a trademark, the Court enter a judgment that Counter-

Defendant HSA-UWC “is not the true owner of any trademark rights in the Tongil symbol by

virtue of Sean Moon’s inheritance of all Unification Church intellectual property as the only

true and rightful successor to the Rev. Sun Myung Moon.” It further seeks in the alternative,

should this Court find that the Tongil symbol serves as a trademark, a judgment that it is an

authorized licensee of the trademark and is therefore free to use the Tongil symbol. (/d. at

70-71).

Count Ill, “Declaratory Judgment of No Dilution” brought pursuant to 15 U.S.C. §

1125(c), generally asserts that the Tongil mark is not a “famous mark” and that Sanctuary

Church has not engaged in trademark dilution. (See generally, id. at {J 72-78).

Count IV, entitled “Declaratory Judgment of Non-Infringement of ‘Cheon II Guk’ and

Declaratory Judgment that ‘Cheon II Guk’ is Generic and Fails to Function as Trademark’,

asserts that the Plaintiff/Counterclaim-Defendant HSA-UWC has applied to register the term

“Cheon II Guk” as a trademark before the U.S. Patent and Trademark Office in an attempt to

secure exClusive rights to that term. (Counterclaims, Doc. 13, {1 80-81). Thus, Sanctuary

Church seeks a judgment from this Court declaring that Sanctuary Church’s use of the term

“Cheon II Guk” in connection with its religious activities does not constitute trademark

infringement in the “generic phrase ‘Cheon Il Guk” and also that a finding of infringement

that would entitle HSA-UWC to relief would be an unconstitutional violation of Sanctuary

Church’s First Amendment rights to the free exercise of religion. (Id. at J 83).

As additional alternatives, Sanctuary Church requests that this Court, should it find

that “Cheon Il Guk” serves as a trademark, enter a judgment that the Plaintiff/Counter-

Defendant HSA-UWC is not the true owner of any trademark rights in the term “Cheon II

Guk” by virtue of Sean Moon’s inheritance of all Unification Church intellectual property “as

the only true and rightful successor to the Rev. Sun Myung Moon.” It is further requested

that, should the Court determine that the term “Cheon II Guk” serves as a trademark, the

Court enter a judgment that Sanctuary Church is an authorized licensee of the trademark

and therefore is free to use that term without fear of liability. (/d. at 84-85).

In response to Sanctuary Church’s Counterclaims, HSA-UWC, the

Plaintiff/Counterclaim-Defendant, has filed a “Motion to Dismiss Defendant's Counterclaims

and Strike Certain Affirmative Defenses and Allegations.” (Doc. 23). HSA-UWC moves to

dismiss Defendant's Counterclaims | and II for failure to state claims upon which relief can

be granted pursuant to Fed. R. Civ. P. 12(b)(6) and to stay Defendant’s counterclaims in

Count IV pending determination in the proceedings before the Trademark Trial and Appeal

Board (“TTAB”) or, in the alternative, dismiss that counterclaim. (Id. at JJ 3, 5). In addition,

Plaintiff has moved to strike Defendant's Third through Fourteenth, Seventeenth, and

Twenty-Sixth Affirmative Defenses, asserting that the affirmative defenses “either lack any

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legal merit and are precluded as a matter of law or should be stricken as immaterial or

impertinent pursuant to Fed. R. Civ. P. Rule 12(f).” (Id. at J 4).

Il. STANDARD OF REVIEW

A complaint must be dismissed under Federal Rule Civil Procedure 12(b)(6) if it does

not allege “enough facts to state a claim to relief that is plausible on its face.” Bell At. Corp.

v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). The plaintiff must

aver “factual content that allows the court to draw the reasonable inference that the

defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct.

1937, 1949, 173 L.Ed.2d 868 (2009).

‘While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need

detailed factual allegations, a plaintiff's obligation to provide the grounds of his entitlement

to relief requires more than labels and conclusions, and a formulaic recitation of the

elements of a cause of action will not do.” Twombly, 550 U.S. at 555 (internal citations,

alterations, and quotations marks omitted). In other words, “[flactual allegations must be

enough to raise a right to relief above the speculative level.” Covington v. Int'l Ass'n of

Approved Basketball Officials, 710 F.3d 114, 118 (3d Cir. 2013) (internal citations and

quotation marks omitted). A court “take[s] as true all the factual allegations in the Complaint

and the reasonable inferences that can be drawn from those facts, but. . . disregard[s] legal

conclusions and threadbare recitals of the elements of a cause of action, supported by mere

conclusory statements.” Ethypharm S.A. France v. Abbott Labs., 707 F.3d 223, 231 n.14

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(3d Cir. 2013) (internal citation, alteration, and quotation marks omitted). Thus, ‘the

presumption of truth attaches only to those allegations for which there is sufficient ‘factual

matter’ to render them ‘plausible on [their] face.” Schucharat v. President of the U.S., 839

F.3d 336, 347 (3d Cir. 2016) (alteration in original) (quoting Iqbal, 556 U.S. at 679).

“Conclusory assertions of fact and legal conclusions are not entitled to the same

presumption.” /d.

‘Although the plausibility standard ‘does not impose a probability requirement,’ it

does require a pleading to show ‘more than a sheer possibility that a defendant has acted

unlawfully.” Connelly v. Lane Constr. Corp., 809 F.3d 780, 786 (3d Cir. 2016) (internal

citation omitted) (first quoting Twombly, 550 U.S. at 556; then quoting /qbal, 556 U.S. at

678). “The plausibility determination is ‘a context-specific task that requires the reviewing

court to draw on its judicial experience and common sense.” /d. at 786-87 (quoting

Iqbal, 556 U.S. 679).

Ill. ANALYSIS

The allegations of Counts |, Il, and IV of Sanctuary Church’s counterclaims set forth

factual assertions and resulting legal conclusions which present sharp disputes between the

parties. The TWELVE GATES Mark or Tongil symbol is at the core of these disputes.2

Specifically, whether the TWELVE GATES symbol is a generic religious symbol or a

? HSA-UWC states it has referred “to the ‘Tongil’ symbol and the TWELVE GATES Mark

a based on Defendant's acknowledgement that the two are one and the same.” (Doc. 48 at

12

descriptive term under the Lanham Act present factual issues which cannot be resolved in

the context of a motion to dismiss Sanctuary Church’s properly pleaded counterclaims.

Indeed, Counts | and II of Sanctuary Church's counterclaims are founded on sufficiently

pleaded allegations that the TWELVE GATES or Tongil symbol is a generic religious symbol

which does not provide a basis for a valid trademark notwithstanding the HSA-UWC’s

registration of the TWELVE GATES symbol with the U.S. Patent Office.

In General Conference Corporation of Seventh-Day Adventists v. Perez, 97

F.Supp.2d 1154 (S.D. Fla. 2000), the court summarized the terms which may be registered

as trademark and the necessary conditions for doing so:

[] The Lanham Act, 15 U.S.C. § 1051 et seq. provides that no person shall,

without consent of the registrant, use in commerce any trademark if “such use

is likely to cause confusion, or to cause mistake or to deceive.” Id. at §

1114(1)(a).

[ ] Terms which may be registered as trademarks fall into four categories of

Strength (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary. American

Television v. American Communications, 810 F.2d 1546, 1548 (11th Cir.

1987); University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 1540

(11th Cir. 1985). “Generic” terms are those which name “the genus or class of

which an individual article or service is but a member.” “Descriptive” terms

‘identify a characteristic or quality of an article of service.” “Suggestive” terms

suggest characteristics of the goods and services and “require an effort of the

imagination by the consumer in order to be understood as descriptive.”

“Fanciful” or “arbitrary” terms are words or phrases that bear no direct

relationship to the product. Generic terms represent the weaker end of the

spectrum and arbitrary terms represent the stronger. Vision Ctr. v. Opticks,

996 F.2d 111, 115 (5th Cir.1979), cert. denied, 444 U.S. 1016, 100 S.Ct. 668.

62 L.Ed.2d 646 (1980).

[] Generic terms may never be registered as trademarks under the Lanham

Act. 15 U.S.C. § 1052(e). Descriptive terms may not be registered as

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trademarks under the Lanham Act, unless the holder shows that the mark has

acquired “secondary meaning.” 15 U.S.C. § 1052(e)(1), (f); Citibank, N.A. v.

Citibanc Group, Inc., 724 F.2d 1540, 1549 (11th Cir. 1984); Abercrombie &

Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10 (2d Cir.1976). Proof of

secondary meaning in a trademark requires a showing that the mark has

become distinctive of the trademark holder's product or services.

[ ] Five years after registering a mark, the holder may file the affidavit required

by § 1065 and have its marked declared “incontestable.” 15 U.S.C. § 1065(3).

Once a mark has become “incontestable,” its validity is presumed, subject to

certain enumerated defenses set out in 15 U.S.C. § 1115(b). Park ‘N Fly, Inc.

v. Dollar Park and Fly, Inc., 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582

(1985). Dieter v. B & H Industries of Southwest Florida, Inc., 880 F.2d 322,

327 (11th Cir. 1989).

[ ] The Lanham Act, 15 U.S.C.A. § 1114(1) provides the Plaintiff in a

trademark infringement action has made a prima facie case if the Plaintiff

shows first that its mark is valid and second that the Defendant's use of

Plaintiffs mark is likely to cause confusion. Determination of likelihood of

confusion requires analysis of seven factors (1) type of mark, (2) similarity of

marks, (3) similarity of the products and/or services the marks represent, (4)

similarity of the parties’ retail outlets and customers, (5) the similarity of

advertising media used, (6) Defendant's intent and (7) actual confusion.

Dieter v. B & H Indus. of Southwest Florida, Inc., 880 F.2d 322, 326 (11th Cir.

1989), cert. denied, 498 U.S. 950, 111 S.Ct. 369, 112 L.Ed.2d 332 (1990).

87 F.Supp.2d at 1156-1157.

Because the Counterclaim-Plaintiff Sanctuary Church has sufficiently placed in

dispute questions of fact as to the proper categorization of the TWELVE GATES Mark or

Tongil symbol, USA-UWC’s motion to dismiss Counts | and II will be denied.

Similarly, Count IV of Sanctuary Church’s Counterclaims present an assertion that

the term “Cheon Ii Guk” is generic, an assertion of fact which may not be resolved on a

motion to dismiss pursuant to Rule 12(b)(6). (See Counterclaims, Doc. 13, J] 46-54).

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Accordingly, Plaintiff/Counterclaim-Defendant HSA-UWC’s motion to dismiss Count III of

Sanctuary Church’s counterclaims will be denied.

The arguments raised by Plaintiff/Counterclaim Defendant HSA-UWC to support its

assertion that the TWELVE GATES Mark “functions as a trademark” are unavailing at this

stage of the proceedings and better reserved for a dispositive motion at the close of

discovery or at trial. This is largely so because HSA-UWC’s arguments seek to refute, on

the merits, the specific factual assertions of Sanctuary Church's counterclaims with respect

to genericness or as to the meaning of the term “Cheon II Guk.”

A generic term is one “which function[s] as the common descriptive name of a

product class.” A.J. Canfield Co. v. Honickman, 808 F.2d 291, 296 (3d Cir. 1986). It “refers

to the genus of which the particular product is the species.” Park ‘N Fly, Inc. v. Dollar Park

and Fly, Inc., 469 U.S. 189, 194, 105 S. Ct. 658, 83 L. Ed. 2d 582 (1985); see also Boston

Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 14 (4st Cir. 2008) (“Rather than

answering the question ‘where do you come from?,’ a generic term merely explains ‘what

are you?’ . .. . [Generic terms] serve primarily to describe products rather than identify their

sources ....”).

The Lanham Act “provides no protection for generic terms because a first-user of a

term ‘cannot deprive competing manufacturers of the product of the right to call an article by

its name.” E.T. Browne Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 191 (3d Cir. 2008)

(quoting A.J. Canfield, 808 F.2d at 297). Thus, the Act states that a registered mark that

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“becomes the generic name for the goods or services, or a portion thereof, for which it is

registered” may be canceled “[ajt any time.” 15 U.S.C. § 1064(3).

lf a mark is generic, it does not matter whether the mark would be otherwise

incontestable. See 15 U.S.C. § 1065(4) (“[NJo incontestable right shall be acquired in a

mark which is the generic name for the goods or services or a portion thereof, for which it is

registered.”). “The same rule applies when the word designates the product in a language

other than English. This extension rests on the assumption that there are (or someday will

be) customers in the United States who speak that foreign language. Because of the

diversity of the population of the United States, coupled with temporary visitors, all of whom

are part of the United States marketplace, commerce in the United States utilizes

innumerable foreign languages. No merchant may obtain the exclusive right over a

trademark designation if that exclusivity would prevent competitors from designating a

product as what it is in the foreign language their customers know best. Courts and the

USPTO apply this policy, known as the doctrine of ‘foreign equivalents,’ to make generic

foreign words ineligible for private ownership as trademarks.” Otokoyama Co. v. Wine of

Japan Import, Inc., 175 F.3d 266, 270-271 (2d Cir. 1999) (internal citation omitted).

“There is a presumption in favor of a registered trademark and the burden of proof is

upon one who attacks the mark as generic, but the presumption can be overcome by a

showing by a preponderance of the evidence that the term was or has become generic.”

Anti-Monopoly, Inc. v. Gen. Mills Fun Gp., Inc., 684 F.2d 1316, 1319 (9th Cir. 1982); cf. also

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Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 14 (2d Cir. 1976) (concluding

that registration “means not only that the burden of going forward is upon the contestant of

the registration but that there is a strong presumption of validity so that the party claiming

invalidity has the burden of proof and must put something more into the scales than the

registrant.”) (internal citations, alterations, and quotation marks omitted); interState Net

Bank v. NetB@nk, Inc., 221 F.Supp.2d 513, 517-518 (D.N.J. 2002) (“If a party has a federal

trademark registration, it constitutes a strong presumption that the term is not generic or

descriptive.’).

The law cited thus far in this opinion, combined with the allegations of the Sanctuary

Church’s counterclaims, lead unavoidably to the conclusion that dismissal of the Sanctuary

Church's counterclaims at the pleading stage is inappropriate. Nonetheless, the arguments

made by Sanctuary Church in its brief in opposition to the motion to dismiss (Doc. 36) are

likewise arguments directed to the merits of its claim that the “Tongil” mark is a universal

symbol, generic in nature, which therefore fails to function as a trademark and are no more

appropriate to a determination of HSA-UWC’s motion to dismiss than the arguments made

by HSA-UWC in support of its motion. That is to say, both parties have engaged in

arguments which invite the Court to resolve the merits of the disputes between them. This,

the Court may not do on a motion to dismiss. It is sufficient to state that a review of the

pleadings of Sanctuary Church’s counterclaims show that under the /qbal-Twombly

analysis, the counterclaims of Sanctuary Church properly plead causes of action in Counts

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|, I! and IV as to the generic nature of the TWELVE GATES Mark or the “Tongil” symbol as

well as the term “Cheon II Guk.”

Sanctuary Church has also asserted that HSA-UWC’s enforcement of its trademark

rights violates the Sanctuary Church’s religious freedom. HSA-UWC argues that "[w]hether

based on First Amendment grounds (under both the Establishment Clause and the Free

Exercise Clause) or under federal law (under the Religious Freedom Restoration Act or

‘RFRA’), this claim is not plausibly meritorious as a matter of law’ and cites to case law in

support of its argument. (Doc. 29, at 10-11; id. at 11-13). Indeed, the applicable case law

makes clear that “the First Amendment prohibits civil courts from resolving church property

disputes on the basis of religious doctrine and practice” and further requires that “civil courts

defer to the resolution of issues of religious doctrine or polity by the highest court of a

hierarchical church organization.” Jones v. Wolf, 443 U.S. 595, 602, 99 S.Ct. 3020, 61

L.Ed.2d 775 (1979). However, it also leaves no question that, as the Court held in Jones, “a

State is constitutionally entitled to adopt neutral principles of law as a means of adjudicating

a church property dispute.” /d. at 604. See Scotts African Union Methodist Protestant

Church v. Conference of African Union First Colored Methodist Protestant Church, 98 F.3d

78, 89 (3d Cir. 1996) (Jones “gives shape to the proper modern judicial approach to

intrachurch disputes.”). See also, Askew v. Trustees of Gen. Assembly of Church of the

Lord Jesus Christ of the Apostolic Faith, Inc., 684 F.3d 413, 418-419 (3d Cir. 2012)(‘The

First Amendment severely circumscribes the role that civil courts may play in resolving

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disputes touching on matters of faith. Civil courts encroach on the autonomy of religious

institutions when they inquire into ecclesiastical law and governance. The non-entanglement

principle, anchored in First Amendment values, thus requires that civil courts defer to the

resolution of issues of religious doctrine or polity by the highest court of a hierarchical

church organization. In so doing, civil courts accept decisions of the highest religious

decision-maker as binding fact, so long as those decisions are not tainted by fraud or

collusion. . . . Still, the First Amendment does not remove from the purview of civil courts all

controversies involving religious institutions. When a church dispute turns on a question

devoid of doctrinal implications, civil courts may employ neutral principles of law to

adjudicate the controversy.”) (internal citations and quotation marks omitted).

Moreover, the neutral principles doctrine adopted in Jones have been specifically

held to be exemplified in the application of the principles of the Lanham Act to resolve

trademark infringement disputes between religious organizations. Thus, in Maktab Tarighe

Oveyssi Shan Maghoudi, Inc. v. Kianfar, the Ninth Circuit Court of Appeals reversed the

District Court’s dismissal of a complaint brought by a religious order and its leader against

former members of that order and against a competing organization established by former

members who claimed legitimate successorship to the prior order and in doing so alleged

trademark infringement and other state law claims. 179 F.3d 1244 (9th Cir. 1999). The

Court of Appeals held that the claims could be addressed by the District Court without

violating the First Amendment to the extent that they could be resolved by “neutral, secular

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principles.” The Court of Appeals, following the rule set forth in Jones v. Wolf, supra, held

that the claims of the plaintiff were susceptible to decision by neutral principles, in particular,

the trademark infringement provisions of the Lanham Act. The Court explained:

Here, most of the claims stated in the First Amended Complaint are

susceptible to decision by neutral principles. First and foremost, Angha and

Shah Maghsoudi seek various forms of relief for trademark infringement and

false designation of origin, under the Lanham Act, 15 U.S.C. §§ 1114,

1125(a). We have previously applied neutral principles of trademark

infringement in disputes between religious organizations. See Self-Realization

Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902 (9th

Cir. 1995). The trademarks and service marks to which Shah Maghsoudi and

Angha claim title and which they contend are infringed were registered to

Angha, doing business as Shah Maghsoudi, between 1987 and 1991. This

registration constitutes prima facie evidence that Angha owns the marks. See

Sengoku v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996). It also provides

constructive notice of the claimed ownership of the marks. See 15 U.S.C. §

1072; Park ‘N Fly v. Dollar Park and Fly, 469 U.S. 189, 199-200, 105 S.Ct.

658, 83 L.Ed.2d 582 (1985). In determining whether the trademarks have

been infringed, the district court can apply the regular factors that courts

employ to determine infringement. See AMF, Inc. v. Sleekcraft Boats, 599

F.2d 341, 348-49 (9th Cir. 1979). The defendants can raise neutral defenses,

such as prior use of the marks, to the extent that they are applicable. See

Sengoku, 96 F.3d at 1219. To determine these issues, the district court has

no need to decide who is the legitimate Forty-First Teacher of the Order or

any other matter of religious doctrine. The same may be said for the federal

claim of false designation of origin, see Accuride Int'l, Inc. v. Accuride Corp.,

871 F.2d 1531, 1534-35 (9th Cir. 1989) (rights protected under § 1125(a) are

governed by same principles that govern trademark rights), and the state

claim of unfair competition, see Cleary v. News Corp., 30 F.3d 1255, 1262-63

(9th Cir.1994) (“actions pursuant to California Business and Professions Code

§ 17200 are ‘substantially congruent’ to claims made under the Lanham Act’).

179 F.3d at 1249-1250.

Here, while these principles will undoubtedly have application in the ultimate

determination of the present case, they do not provide a basis for dismissal of Sanctuary

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Church’s counterclaims on a motion to dismiss. This is again the case because Sanctuary

Church's counterclaims are founded on the provisions of the Lanham Act and seek relief

under that statute by alleging that the Tongil symbol is a “universal symbol and functions in

an ornamental and/or descriptive manner, but does not function as a trademark or service

mark, making it unregistrable before the U.S. Trademark Office” and also that the Tongil

mark is a “generic religious symbol” which may therefore not be subject to trademark

registration. (Counterclaims, Doc. 13, ff] 60, 63). Similarly, Count II of Sanctuary Church's

Counterclaims invoke §§ 1114 and 1125 of Title 15 and again assert that the Tongil symbol

or the TWELVE GATES Mark is a “universal symbol” or a “generic religious symbol” which

Sanctuary Church asserts “does not function as a trademark or service mark and is not

protectable or enforceable as such.” (/d. at | 66).

Likewise, with respect to the term “Cheon II Guk’, the Counterclaim-Plaintiff

Sanctuary Church asserts Lanham Act claims for its assertion that the term “Cheon II Guk’

is a generic phrase and therefore not subject to registration.

The Counterclaim-Plaintiffs arguments that, were a finding of infringement be made

against them, that such a finding would be an unconstitutional violation of the Sanctuary

Church’s First Amendment rights to free exercise of religion, while appearing at this stage of

the proceedings to be without strong foundation in law, do not compel or even permit the

dismissal of Sanctuary Church's counterclaims which are otherwise properly pleaded under

the provisions of the Lanham Act.

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Similarly, determination of Sanctuary Church’s claims of ownership of the TWELVE

GATES Mark to the extent that it is determined to be a trademark, as well as its claim as

alleged of licensed or authorized use of the TWELVE GATES Mark present issues of fact

which preclude the disposition of those claims on HSA-UWC's motion to dismiss.

Sanctuary Church, in its brief in opposition to HSA-UWC's motion to dismiss,

appropriately points out that the cases cited by HSA-UWC “were [not] decided on 12(b)(6)

grounds.” (Doc. 36, at 11). Sanctuary Church argues that this Court “should disregard

Plaintiff's attempt to inappropriately argue this case on the merits through a motion to

dismiss under Rule 12(b)(6). As there is no bright line rule or test as to when a court will

determine whether a religious symbol or term functions as a trademark, discovery is

necessary and appropriate. Sanctuary has sufficiently plead facts to survive a motion to

dismiss.” (Doc. 36 at 13). The Court, for the reasons set forth herein, agrees.

With respect to the Counterclaim Defendant HSA-UWC's request for a stay on the

“Cheon II Guk” mark pending resolution of the TTAB action, the Sanctuary Church cites a

number of cases, including Sturgis Motorcycle Rally, Inc. v. Farez Farrokhi. (Id. at 18).

There, the Trademark Trial and Appeal Board wrote:

The Board's well-settled policy is to suspend proceedings when the parties

are involved in a civil action or another Board proceeding which may be

dispositive of or have a bearing on the Board case. Trademark Rule

2.117(a); General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d

1933, 1937 (TTAB 1992). Here, one of opposers pleaded registrations, i.e.,

Registration No. 3923284 for STURGIS in typed form is at issue in both

proceedings. As such, a disposition relating to the registration in those

proceedings will certainly have a bearing on this one. As such, we find that

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the suspension of this matter is appropriate and hereby GRANT applicant's

motion to suspend. See Trademark Rule 2.117(a). Accordingly, proceedings

herein are SUSPENDED pending final disposition of the civil action and the

Board proceeding.

2013 WL 11247190, at *6 (T.T.A.B. 2013).

It is this Court’s view that a stay of the proceedings in this case is unnecessary and a

denial of the request for a stay will not unduly prejudice either party. Nor will a stay in this

case simplify the issues or streamline trial. To the contrary, should the Trademark Trial and

Appeal Board decide not to stay the proceedings underway before that body concerning the

meaning of the “Cheon II Guk” term, the decision of the TTAB may be given preclusive

effect. See B&B Hardware, Inc. v. Hargis Indus., Inc., --- U.S. ---, 135 S.Ct. 1293, 1305,

191 L.Ed.2d 222 (2015) (Supreme Court concluding “that nothing in the Lanham Act bars

the application of issue preclusion in such cases’, referring to TTAB decisions “in which the

ordinary elements of issue preclusion are met.’).

Conversely, should the TTAB invoke its “well-settled policy” to suspend proceedings

with respect to HSA-UWC and Sanctuary Church, no purpose would be served by a stay of

proceedings in the case before this Court.

Lastly, HSA-UWC requests that this Court strike Sanctuary Church's Third through

Fourteenth, Seventeenth, and Twenty-Sixth Affirmative Defenses. (Doc. 29, at 20).

Federal Rule of Civil Procedure 12 provides that a “court may strike from a pleading

an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.”

Fed. R. Civ. P. 12(f).

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District courts are afforded considerable discretion when addressing a motion

to strike. Generally, motions to strike are not favored and usually will be

denied unless the allegations have no possible relation to the controversy and

may cause prejudice to one of the parties, or if the allegations confuse the

issues.

Yellow Book Sales & Distrib. Co., Inc. v. White, 2011 WL 830520, at *4 (E.D. Pa. 2011)

(internal citations and quotation marks omitted). See also, N. Penn Transfer, Inc. v.

Victaulic Co. of Am., 859 F.Supp. 154, 158 (E.D. Pa. 1994). “Indeed, striking a pleading ‘is a

drastic remedy to be resorted to only when required for the purposes of justice’ and should

be used ‘sparingly.” Dela Cruz v. Piccari Press, 521 F.Supp.2d 424, 428 (E.D. Pa. 2007)

(quoting N. Penn Transfer, Inc., 859 F.Supp. at 158); see also Pozariik v. Camelback

Assocs., Inc., 2011 WL 6003841, at *3 (M.D. Pa. 2011) (‘[T]he standard for striking portions

of a plaintiffs complaint ‘is strict and only allegations that are so unrelated to the plaintiffs’

claims as to be unworthy of any consideration should be stricken’) (quoting Johnson v.

Anhorn, 334 F.Supp.2d 802, 809 (E.D. Pa. 2004)) (internal alterations omitted).

Sanctuary Church’s Affirmative Defenses 3-14 are as follows:

3. Plaintiffs claims are barred, in whole or in part, from being heard by this

Court by the free exercise of religion clause of the First Amendment of the

United States Constitution, and the Establishment Clause.

4. Plaintiff's claims are barred, in whole or in part, from being heard by this

Court by the doctrine of ecclesiastical abstention.

5. Plaintiff's claims are barred, in whole or in part, by the Religious Freedom

Restoration Act, as granting the relief requested under the Lanham Act would

infringe Defendant's religious freedom.

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6. Plaintiff's claims are barred, in whole or in part, because Defendant has

never used the alleged marks in commerce.

7. Plaintiff's claims are barred, in whole or in part, because Defendant's use, if

any, of the alleged marks has only been in connection with religious rituals

and other religious and theological purposes.

8. Plaintiffs claims are barred, in whole or in part, under the doctrine of

trademark abuse, where enforcement of the alleged marks against Defendant

is abusive, unfair and unreasonable in scope.

9. Plaintiff's claims are barred by license.

10. Plaintiffs claims are barred by implied license.

11. Plaintiffs claims are barred by Plaintiff's consent.

42. Plaintiff's claims are barred because these alleged marks were intended

by the Rev. Sun Myung Moon to be used by all his followers, not just those

that hijacked his congregation upon his death.

13. Plaintiff's claims are barred, in whole or in part, because Plaintiff lacks

standing to bring claims for trademark infringement against Defendant, as

Plaintiff is not the owner of a valid trademark registration or valid unregistered

trademark rights, since the Tongil symbol is a universal symbol incapable of

functioning as a trademark and improperly granted registration.

14. Plaintiff's claims are barred, in whole or in part, because Plaintiff is not

entitled to a trademark registration because Sean Moon is the rightful heir of

the Unification Church, making him the true owner of any intellectual property

rights of the Unification Church.

(Doc. 13, Affirmative Defenses, ff] 3-14). Affirmative Defenses 17 and 26, which HSA-UWC

also seeks to strike, state:

17. Plaintiffs claims are barred, in whole or in part, by the abandonment of

any trademark rights through the doctrine of uncontrolled or naked licensing.

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26. To the extent that Plaintiff claims intentional or knowing uses of the

alleged marks, Defendant has not knowingly used the alleged marks in

violation of Plaintiffs claimed rights.

(Id. at Jf] 17, 26).

Counterclaim-Defendant HSA-UWC asserts that these affirmative defenses “all offer

some variation on the following erroneous statements that have been shown to be legally

insufficient under any set of facts which may be properly inferred from Defendant's

allegations.” (Doc. 29, at 20). HSA-UWC argues that the Third through Seventh affirmative

defenses “are recitals of Defendants’ religious freedom claims, described in their

Counterclaims”, and that HSA-UWC has “demonstrated [in its brief] that the First

Amendment and other legal protections for religious freedom preclude a finding of liability.”

(Id.). HSA-UWC further states that the Eighth through Fourteenth affirmative defenses

“offer some iteration of a defense that Defendant has authorization to use the Marks,” and

then asserts that Sanctuary Church's claim of authorization is “false.”

HSA-UWC’s assertion of the falsity of Sanctuary Church’s claim of authorization for

use of the Marks is not a basis on which such affirmative defenses may be stricken. Instead

the dispute as to the truth or falsity of the affirmative defense is quintessentially a matter

which should not be resolved on a motion to strike, or, for that matter, by a motion to

dismiss.

The Seventeenth affirmative defense is characterized by HSA-UWC as an allegation

by Sanctuary Church that HSA-UWC has abandoned its trademark rights by uncontrolled

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licensing to which it asserts that Sanctuary Church “has not alleged one other group that

attempts to use the Marks besides it — and its use has been adamantly opposed by HSA-

UWC.” (Doc. 29, at 20). Here again, this is a dispute of fact which does not provide a basis

to grant HSA-UWC’s motion to strike.

Similarly, Counterclaim-Defendant HSA-UWC asserts that affirmative defense

Twenty-Six claims that Sanctuary Church has not knowingly used the marks, which it

asserts is “false.” (/d.). However, a reading of affirmative defense Twenty-Six cannot be

reconciled with HSA-UWC’s characterization of it. Rather, that affirmative defense states:

"To the extent that Plaintiff claims intentional or knowing uses of the alleged marks,

Defendant has not knowingly used the alleged marks in violation of Plaintiff's claimed

rights.” (Doc. 13, Affirmative Defenses, {| 26).

What is presented here is an encapsulation of the factual disputes between the

parties to this case which can only be resolved through the development of the parties’

positions through the process of discovery, and thereafter, by dispositive motion or trial.

While it may well be that the factual development of this case will reveal that one,

some, or all, of Sanctuary Church’s affirmative defenses lack merit, in particular the fourth

and fifth affirmative defenses, this Court is unable to say at this juncture that the assertions

in the affirmative defenses in question are so unrelated to the claims and defenses of

Sanctuary Church as to compel a ruling that they should be stricken. In addition there is no

basis upon which to strike these affirmative defenses as immaterial or impertinent.

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Accordingly, for all the foregoing reasons, the motion to dismiss filed by HSA-UWC the

fourth through fourteenth, seventeenth and twenty-sixth affirmative defenses will be denied.

IV. CONCLUSION

For the reasons set forth above, HSA-UWC’s Motion to Dismiss Defendant's

Counterclaims and Strike Certain Affirmative Defenses and Allegations (Doc. 23) will be

denied. A separate Order follows.

oS \/

TAN 1 thaw:

Robert D. Martani

United States District Judge

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