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 FOR : Civil No. 3:18-CV-01508

THE UNIFICATION OF WORLD :

CHRISTIANITY, :

:

Plaintiff, :

:

v. :

:

WORLD PEACE AND UNIFICATION :

SANCTUARY, INC., :

:

Defendant. : Judge Jennifer P. Wilson

MEMORANDUM

Before the court are cross-motions for summary judgment. (Docs. 200,

201.) Because the court finds that it cannot resolve the merits of the issues

presented in either motion, the court will dismiss this case for lack of subject

matter jurisdiction on ecclesiastical abstention grounds.

FACTUAL AND PROCEDURAL BACKGROUND1

Reverend Sun Myung Moon (“Rev. Moon”) founded the Unification Church

in Seoul, Korea in 1954. (Doc. 200-1, ¶ 1.) The Unification Church expanded

quickly, forming branches throughout the world, including in the United States,

and is now a global religious organization. (Id. ¶¶ 3–4.) In 1960, Rev. Moon

1 In considering the parties’ motions for summary judgment, the court relied on the uncontested

facts, or where the facts were disputed, viewed the facts and deduced all reasonable inferences

therefrom in the light most favorable to the nonmoving party in accordance with the relevant

standard for deciding a motion for summary judgment. See Doe v. C.A.R.S. Prot. Plus, Inc., 527

F.3d 358, 362 (3d Cir. 2008).

married Hak Ja Han (“Mrs. Moon’). (Ud. §] 6.) Hyung Jin Moon, also known as

Sean Moon (“Sean Moon”), is one of Rev. and Mrs. Moon’s sons. (/d. { 7.)

Plaintiff Holy Spirit Association for the Unification of World Christianity

(“HSA”) was established as a branch of the Unification Church in the United

States in 1961. (Doc. 205, p. 2; Doc. 209-9.)? Since 1961, HSA has expanded to

109 chapters with over 16,000 members in 50 states, including Pennsylvania.

(Doc. 200-1, 9 11.) According to HSA officials, the Unification Church “does not

have (and never had) denominations.” (/d. § 5.) However, “HSA oversees and has

overseen the establishment of local churches throughout the United States in

accordance with its governing documents, including the National Charter that was

in place in 2013." Ud. § 12.)

In 1965, Rev. Moon created the Twelve Gates, or Tongil, symbol which

appears below. (Doc. 200-1, §§] 20-21; Doc. 201-2, 4] 6—7.)

? For ease of reference, the court utilizes the page numbers from the CM/ECF header.

> The National Charter includes protocols for establishing and closing local churches as well as

the appointment and removal of pastors. (Doc. 200-1, 14-16.)

This image was designed to be “the symbol of [the Unification Church’s]

activities” and to “be used broadly [for] all witnessing, public relations, service

activities, church actives, and our web sites.” (Doc. 200-1, ¶ 23.) Indeed, the

Unification Church has used the Twelve Gates symbol for over fifty years “to

identify its religious services” and the symbol is used in all aspect of its members’

lives. (Doc. 201-2, ¶ 12; Doc. 206, ¶ 9; Doc. 210-1, ¶ 24.)

HSA and its local churches use the Twelve Gates symbol in connection with

holidays, ceremonies, major events, and on blessing rings that serve as public

displays of marriage through the Unification Church. (Doc. 200-1, ¶ 28.) Many

HSA local churches also display flags or signs with the Twelve Gates symbol

outside of their buildings. (Doc. 205, ¶ 8; Doc. 206, ¶ 9.) In addition, the Twelve

Gates symbol is displayed at the entrance to and throughout HSA’s offices and at

important HSA locations. (Doc. 205, ¶ 8; Doc. 206, ¶ 9.) While the Twelve Gates

symbol is usually red, as pictured above, it has also been displayed in a variety of

colors, including on gold jewelry. (Doc. 200-1, ¶ 37.)

On June 30, 2009, HSA registered the Twelve Gates symbol with the United

States Patent and Trademark Office (“USPTO”) for “religious prayer services,”

“religious and spiritual services,” and “ministerial services” (Registration Number

– 3,646,838; Serial Number – 77,626,340). (Id. ¶ 34.) As of October 7, 2019, the

Twelve Gates mark was still registered, active, and owned by HSA. (Doc. 211-3.)

According to HSA, limited use of the Twelve Gates symbol is permitted by

the Unification Theological Seminary (“UTS”), HSA’s seminary,4 and Gary

Fleischer, an HSA member who uses the symbol on his website, which archives

Unification Church documents.5 (Doc. 200-1, ¶¶ 40, 42.)

Around 2001, Rev. Moon created the phrase “Cheonju Pyeonghwa Tongil

Guk,” or in shorthand, “Cheon Il Guk,” which roughly translates to “Kingdom of

God,” or “One Heavenly Nation” from the Korean language. (Id. ¶ 45.) Like the

Twelve Gates symbol, HSA asserts that the phrase “Cheon Il Guk” has been fully

integrated into its activities, including the “Cheon Il Guk constitution, the Cheon Il

Guk anthem, its Cheon Il Guk leaders, and its Cheon Il Guk calendar years,” as

well as publications, banners, and merchandise. (Id. ¶¶ 46−48 (cleaned up).) The

phrase has also been incorporated into another symbol for the Family Federation

for World Peace and Unification (“Family Federation”), which appears below.6

(Id. ¶ 49.)

4 UTS was founded by Rev. Moon and shares its leadership positions with HSA. (Doc. 200-1,

¶ 41.)

5 As part of Fleischer’s use of the Twelve Gates symbol, HSA requires Fleischer to display a

disclaimer on his website that the site is not an official site of HSA. (Doc. 207-1, pp. 8−9.)

6 The Family Federation is the name under which HSA “market[s] its religious services” in the

United States. (Doc. 201-2, ¶ 4.)

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On September 14, 2015, HSA applied to register “Cheon Il Guk” as a

trademark with the USPTO, but these proceedings have been stayed pending the

outcome of the instant litigation. Ud. 99] 51-53.)

Rev. Moon, the founder and creator of Unificationism, passed away in

September 2012. (id. 957.) Thereafter, Sean Moon disputed Mrs. Moon’s

authority to lead the Unification Church, and formed Defendant World Peace and

Unification Sanctuary, Inc. (“Sanctuary”) around 2013 “with the stated mission of

spreading Rev. Moon’s teachings.”’ (/d. 457-59.) Sanctuary is a separate entity

from HSA with its own certificate of incorporation, bylaws, and governance

structure, all of which are “unauthorized” under HSA’s national charter. (Ud. 79 64,

66.)

7 Sanctuary denies that Mrs. Moon is the legitimate leader of the Unification Church since Sean

Moon claims to be Rev. Moon’s “true heir.” (Doc. 200-1, □□□ 61-63.) Thus, “Sanctuary’s

followers believe that Sean Moon adheres to the true teachings of Rev. Moon and teaches

‘orthodox’ faith of Unificationism. By contrast, Sanctuary’s followers believe that [Mrs.

Moon]’s teachings are heretical.” (Doc. 201-2, 4 51.)

As part of its work, Sanctuary promotes two ministries: religious services,

which Sanctuary classifies as the practice of Unificationism that promotes the

teachings of Rev. Moon, but rejects Mrs. Moon’s ability and qualifications to

oversee the Unification Church; and “Rod of Iron” ministries, which is intended to

“target a broad audience of Christians, who believe in the use of firearms but who

may be less interested in or familiar with the theology of Sanctuary church.” (Id.

¶¶ 68, 83.) As part of both ministries, Sanctuary utilizes the Twelve Gates symbol

to the same extent as HSA; however, Sanctuary primarily displays the symbol in

gold.8 (Id. ¶¶ 70−72, 75−76, 85, 87; Doc. 201-2, ¶¶ 7−21.) The Twelve Gates

symbol appears on Sanctuary’s signs and websites, including its YouTube channel

on which it broadcasts its services.9 (Doc. 200-1, ¶¶ 75−77, 80−81.) The Twelve

Gates symbol is also incorporated into a new symbol for Sanctuary’s “Rod of Iron”

ministries, which appears below. (Id. ¶¶ 85−86.)

8 Sanctuary refers to the Twelve Gates symbol as the Tongil symbol, which differs only in name.

(Doc. 200-1, ¶ 72.) For consistency, the court will refer to the symbol as the Twelve Gates

symbol, but in doing so does not indicate that there are different symbols.

9 Sanctuary began broadcasting its services and content online via YouTube and other streaming

platforms in 2015. (Doc. 200-1, ¶ 105.)

This symbol is also used on Sanctuary’s signs and websites, including its YouTube

channel. (/d. 4] 87.) Thus, Sanctuary has used the Twelve Gates symbol in various

iterations since its inception.!° (Doc. 201-2, 4] 52-53.)

In 2015, HSA submitted a complaint to YouTube requesting that

Sanctuary’s videos depicting the Twelve Gates symbol be removed as infringing

on its trademark. (/d. § 97.) YouTube declined to remove these videos. (Doc.

206-2.) Thereafter, on May 3, 2016, HSA sent Sanctuary a cease and desist letter,

requesting that Sanctuary immediately stop utilizing the Twelve Gates symbol in

connection with its activities. (Doc. 200-1, | 100.) Sanctuary responded to this

letter on May 31, 2016, asserting that “any and all assets of HSA-UWC, including

all trademarks and symbols, remain under the authority of [Sean Moon].” (d.

4] 101.) On September 22, 2016, HSA responded to Sanctuary’s May 31, 2016

10 Likewise, Sanctuary has used the phrase “Cheon II Guk” extensively in its practice of

Unificationism. (Doc. 201-2, §§] 30-37, 39-40.)

letter stating that “[a]t no time while [Sean] Moon was the President of HSA-

UWC, or after he resigned from that office on July 10, 2013, did HSA-UWC

assign or license the Twelve Gates symbol or any other mark to [Sean] Moon or

Sanctuary.” (Id. ¶ 102.) Based on the record, it does not appear that any other

efforts were made to curtail Sanctuary’s use of the Twelve Gates symbol until the

instant lawsuit was filed on July 30, 2018. (Doc. 1.)

On February 28, 2018, Sanctuary held a blessing ceremony involving

“Sanctuary’s congregants carrying semi-automatic guns as part of the ceremony.”11

(Doc. 200-1, ¶ 106.) The Twelve Gates symbol was prominently displayed during

the event. (Id. ¶ 107.) Certain news outlets reporting on this event initially

indicated that Sanctuary was associated with the Unification Church, a fact which

HSA vehemently disputed, and continues to dispute. (Id. ¶¶ 112−116, 124−125.)

HSA has since undertaken efforts to clear up this alleged confusion, including by

issuing press releases, letters to news outlets, verbal corrections, and the institution

of the instant litigation. (Id. ¶¶ 113−116; Doc. 1.)

This action was initiated via complaint on July 30, 2018. (Doc. 1.)

Sanctuary responded with an answer and counterclaims against HSA on September

26, 2018. (Doc. 13.) HSA moved to dismiss Sanctuary’s counterclaims, but this

11 This ceremony occurred “two weeks after the mass shooting in Parkland, Florida” and

attracted significant media attention. (Doc. 200-1, ¶¶ 109−110.)

motion was denied by United States District Judge Robert D. Mariani on July 22,

2019. (Docs. 81, 82.) By agreement of the parties, the court permitted HSA to file

an amended complaint on July 31, 2019, the operative complaint, alleging federal

trademark infringement and unfair competition under the Lanham Act (Count I)

and common law unfair competition (Count II). (Doc. 93.) On August 7, 2019,

Sanctuary filed an answer with affirmative defenses as well three counterclaims

pursuant to the Lanham Act for cancellation of a registered trademark (Count I),

declaratory judgment of non-infringement and no unfair competition (Count II),

declaratory judgment of no dilution (Count III), and one counterclaim for

declaratory judgment on non-infringement of “Cheon Il Guk” and that “Cheon Il

Guk” is generic and fails to function as a trademark (Count IV). (Doc. 101.) HSA

answered Sanctuary’s counterclaims on August 27, 2019. (Doc. 106.) On

September 26, 2019, the parties stipulated that Sanctuary’s third counterclaim

regarding dilution would be dismissed. (Doc. 115.) The court accepted this

stipulation on September 30, 2019. (Doc. 116.)

On October 7, 2019, the parties filed cross motions for summary judgment

as well as a number of miscellaneous motions related to the cross motions for

summary judgment. (Docs. 119, 120, 129, 135, 142, 156, 158, 164, 167, 177.)

Due to the state of the record after resolving this flurry of motions, the court denied

the cross motions for summary judgment without prejudice and granted the parties

leave to refile their motions in compliance with the court’s order. (Doc. 191.) On

January 8, 2021, the parties re-filed the instant cross motions for summary

judgment in accordance with the parameters set by the court. (Docs. 200, 201.)

These motions have been fully briefed and are ripe for disposition.12 (Docs.

202−216, 219–225.)

STANDARD OF REVIEW

Federal Rule of Civil Procedure 56 sets forth the standard and procedures for

resolving a summary judgment motion. Rule 56(a) provides that “[t]he court shall

grant summary judgment if the movant shows that there is no genuine dispute as to

any material fact and the movant is entitled to summary judgment as a matter of

law.” Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317,

322−323 (1986). A factual dispute is “material” if it might affect the outcome of

the suit under the applicable substantive law, and is “genuine” only if there is a

sufficient evidentiary basis that would allow a reasonable fact-finder to return a

verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

248 (1986). When evaluating a motion for summary judgment, a court “must view

the facts in the light most favorable to the non-moving party” and draw all

12 The court notes that Sanctuary’s briefs with respect to its motion for summary judgment

include a notation in the caption which reads “oral argument requested.” (Doc. 202, p. 1; Doc.

223, p. 1.) However, this request does not appear anywhere else in the parties’ briefs, Sanctuary

does not indicate why oral argument is necessary in this case, and the court otherwise finds that

oral argument is not warranted. Therefore, the court will deny the request for oral argument to

the extent it is raised.

reasonable inferences in favor of the same. Hugh v. Butler Cty. Family YMCA,

418 F.3d 265, 267 (3d Cir. 2005).

The moving party bears the initial burden of demonstrating the absence of a

disputed issue of material fact. See Celotex, 477 U.S. at 324. “Once the moving

party points to evidence demonstrating no issue of material fact exists, the non-

moving party has the duty to set forth specific facts showing that a genuine issue of

material fact exists and that a reasonable factfinder could rule in its favor.” Azur v.

Chase Bank, USA, Nat’l Ass’n, 601 F.3d 212, 216 (3d Cir. 2010). The non-moving

party may not simply sit back and rest on the allegations in its complaint; instead,

it must “go beyond the pleadings and by [its] own affidavits, or by the depositions,

answers to interrogatories, and admissions on file, designate specific facts showing

that there is a genuine issue for trial.” Celotex, 477 U.S. at 324 (internal quotations

omitted); see also Saldana v. Kmart Corp., 260 F.3d 228, 232 (3d Cir. 2001).

Further, the non-moving party cannot rely on “general denials or vague

statements.” Shaeffer v. Schamp, No. 06-1516, 2008 WL 2553474, at *4 (W.D.

Pa. June 25, 2008) (quoting Trap Rock Indus. v. Local 825, Int’l Union of

Operating Eng’rs, 982 F.2d 884, 890 (3d Cir. 1992)). Summary judgment should

be granted where a party “fails to make a showing sufficient to establish the

existence of an element essential to that party’s case, and on which that party will

bear the burden at trial.” Celotex, 477 U.S. at 322–23. “Such affirmative evidence

– regardless of whether it is direct or circumstantial – must amount to more than a

scintilla, but may amount to less (in the evaluation of the court) than a

preponderance.” Saldana, 260 F.3d at 232 (quoting Williams v. Borough of West

Chester, 891 F.2d 458, 460−61 (3d Cir. 1989)).

DISCUSSION

In HSA’s motion for summary judgment, HSA argues that the Twelve Gates

symbol is a valid trademark to which Sanctuary has no colorable claim; that

Sanctuary infringed on HSA’s trademark rights to the Twelve Gates symbol; and

that Sanctuary has no valid affirmative defenses to HSA’s trademark infringement

claim. (Doc. 202.) Specifically, HSA asserts that it is the exclusive owner of the

Twelve Gates symbol by virtue of its trademark, registered at No. 77,626,340

issued on June 30, 2009 by the USPTO, which remains “valid, subsisting,

uncancelled[,] and unrevoked.” (Id. at 22.) In support of this assertion, HSA states

that it has “continuously used the Twelve Gates Mark in a manner that strongly

connects the Mark in the mind of the public with the Unification Church.” (Id.)

HSA posits that Sanctuary infringed on its rights to the Twelve Gates symbol

because Sanctuary’s use of the symbol has created confusion in the community

regarding Sanctuary’s relationship to HSA. (Id. at 34−38.) Finally, HSA asserts

that Sanctuary’s affirmative defenses fail as a matter of law since the Twelve Gates

symbol is not generic, HSA has not acquiesced to Sanctuary’s use of the symbol,

laches does not bar HSA’s claims, and because HSA continues to use and protect

the Twelve Gates symbol. (Id. at 39−44.) Accordingly, HSA seeks summary

judgment on its trademark infringement claim under the Lanham Act, its common

law unfair competition claim, and on all of Sanctuary’s counterclaims and

affirmative defenses. (Doc. 200.)

Sanctuary’s motion for summary judgment, in contrast, argues that the

Twelve Gates symbol is a generic or universal religious symbol akin to a cross or

the Star of David which is not subject to trademark protection. (Doc. 201-1,

pp. 16−19.) Specifically, Sanctuary asserts that the Twelve Gates mark “conveys

affiliation with Unificationism—not a particular sect within Unificationism.” (Id.

at 20.) Sanctuary also argues that HSA has abandoned its trademark rights by

permitting the unlicensed use of the Twelve Gates symbol. (Id. at 23−24.) Indeed,

Sanctuary asserts that it has used the Twelve Gates symbol since its inception

without any enforcement action taken until the instant litigation. (Id.) Sanctuary

raises the same arguments with respect to the phrase “Cheon Il Guk.” (Id. at

25−27.) Finally, Sanctuary argues that the court should abstain from resolving any

of the disputes raised in this litigation on the basis of the ecclesiastical abstention

doctrine because its affirmative defenses, which the court is required to resolve in

order to determine whether summary judgment should be granted in this case,

involve court inquiry into the operations of the Unification church—an inquiry

prohibited by the First Amendment. (Id. at 28−30.) Accordingly, Sanctuary seeks

an order denying HSA’s trademark infringement claim, cancelling HSA’s

trademark registration to the Twelve Gates symbol and confirming its allegedly

unprotectable nature, and declaring that a trademark may not issue for the phrase

“Cheon Il Guk.” (Doc. 201.)

Based on the arguments presented by the parties, as a threshold matter, the

court must analyze whether it has subject matter jurisdiction to hear this case.

Hamilton v. Bromley, 862 F.3d 329, 334 (3d Cir. 2017) (noting that courts are

obligated to consider subject matter jurisdiction as an “antecedent question”).

Indeed, district courts are continually obligated to review whether they have

subject matter jurisdiction and must raise subject matter jurisdiction issues sua

sponte. See Fort Bend Cnty, Tex. v. Davis, 139 S. Ct. 1843 (2019). It is axiomatic

that where a court lacks subject matter over a case, it cannot address the issues

presented in the case. The Supreme Court has noted that:

Subject-matter jurisdiction, then, is an Art. III as well as a statutory

requirement; it functions as a restriction on federal power, and

contributes to the characterization of the federal sovereign. Certain

legal consequences directly follow from this. For example, no action

of the parties can confer subject-matter jurisdiction upon a federal

court. Thus, the consent of the parties is irrelevant, principles of

estoppel do not apply, and a party does not waive the requirement by

failing to challenge jurisdiction early in the proceedings.

Insurance Corp. of Ireland, Ltd. v. Compagnie des Bauxites de Guinee, 456 U.S.

694, 702 (1982) (internal citations omitted). The fundamental importance of

subject matter jurisdiction is echoed in the Federal Rules of Civil Procedure, which

mandate dismissal where subject matter jurisdiction is lacking. See Fed. R. Civ. P.

12(h)(3) (“If the court determines at any time that it lacks subject matter

jurisdiction, the court must dismiss the action.”).

Accordingly, before turning to the merits of the disputes presented for the

court’s review, to which the parties have dedicated almost all of their briefing, the

court takes up the jurisdictional question raised in Sanctuary’s affirmative defenses

regarding ecclesiastical abstention.13

The ecclesiastical abstention doctrine stems from the First Amendment’s

provision that “Congress shall make no law respecting an establishment of

religion, or prohibiting the free exercise thereof.” U.S. CONST. AMEND. I. “This

13 The court recognizes that there is a split in authority regarding whether the ecclesiastical

abstention doctrine serves as an affirmative defense or a jurisdictional bar to a court’s review.

See Edley-Worford v. Va. Conf. of the United Methodist Church, 430 F. Supp. 3d 132, 136 n.1

(E.D. Va. 2019) (“While neither the Supreme Court, or the Fourth Circuit, has provided explicit

guidance as to whether the ecclesiastical abstention doctrine challenge constitutes a Rule

12(b)(1) jurisdictional bar, as opposed to a Rule 12(b)(6) affirmative defense, most courts have

viewed the ecclesiastical abstention doctrine through a 12(b)(1) lens.”) (citing Bryd v. DeVeaux,

2019 WL 1017602, at *4 (D. Md. Mar. 4, 2019) (“Defendants first argue that the First

Amendment ecclesiastical abstention doctrine presents a jurisdictional bar to Plaintiff’s claim.”);

Gregorio v. Hoover, 238 F. Supp. 3d 37, 45 (D.D.C. 2017) (“[W]ithout definitive guidance

otherwise from the Supreme Court or the D.C. Circuit, the Court will analyze defendants’

arguments under the ecclesiastical abstention doctrine . . . under a Rule 12(b)(1) lens.”);

Kavanagh v. Zwilling, 997 F. Supp. 2d 241, 248 n.7 (S.D.N.Y. 2014) (“It is somewhat unclear

whether the First Amendment serves as jurisdictional bar or an affirmative defense to claims that

require courts to review ecclesiastical decisions. Most district courts to consider the question

have treated it as jurisdictional.”). In the absence of any controlling precedent, the court will join

the majority of courts to have considered the issue and will treat the ecclesiastical abstention

doctrine as a jurisdictional issue under Rule 12(b)(1).

clause applies to the judiciary as well as the legislature, Kreshik v. St. Nicholas

Cathedral, 363 U.S. 190, 191 (1960), and limits the power of the courts to hear

suits ‘whenever the questions of discipline, or of faith, or ecclesiastical rule,

custom, or law have been decided by . . . church judicatories. . . .’” Ogle v.

Hocker, 279 F. App’x 391, 395 (6th Cir. 2008) (quoting Watson v. Jones, 80 U.S.

(13 Wall.) 679, 727 (1871); Serbian Eastern Orthodox Diocese v. Milivojevich,

426 U.S. 696 (1976)). Thus, courts have held that “the First Amendment severely

circumscribes the role that civil courts may play in resolving church property

disputes.” Id., at 449. “Most importantly, the First Amendment prohibits civil

courts from resolving church property disputes on the basis of religious doctrine

and practice.” Jones v. Wolf, 443 U.S. 595, 602 (1979) (citing Milivojevich, 426

U.S. at 710; Maryland & Virginia Churches v. Sharpsburg Church, 396 U.S. 367,

368 (1970); Presbyterian Church I, 393 U.S., at 449).

Rather, courts employ the “non-entanglement principle,” which “requires

that civil courts defer to the resolution of issues of religious doctrine or polity by

the highest court of a hierarchical church organization.” Askew v. Trs. of the Gen.

Assembly of the Church of the Lord Jesus Christ of the Apostolic Faith, Inc., 684

F.3d 413, 418 (3d Cir. 2012) (quotation marks omitted) (quoting Jones, 443 U.S. at

602). Therefore, civil courts will “accept decisions of the highest religious

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

or collusion.” Id. (citing Milivojevich, 426 U.S. at 713).

As a corollary to these principles, the Court of Appeals for the Third Circuit

has explained that:

the First Amendment does not remove from the purview of civil courts

all controversies involving religious institutions. Jones, 443 U.S. at

602−03. When a church dispute turns on a question devoid of doctrinal

implications, civil courts may employ neutral principles of law to

adjudicate the controversy. Id.; Presbyterian Church, 393 U.S. at 449;

Scotts African Union Methodist Protestant Church v. Conference of

African Union First Colored Methodist Protestant Church, 98 F.3d 78,

88−90 (3d Cir. 1996). Pennsylvania courts opt to apply neutral civil

law principles whenever possible to resolve such cases. See, e.g.,

Presbytery of Beaver-Butler of the United Presbyterian Church in the

U.S. v. Middlesex Presbyterian Church, 489 A.2d 1317, 1320−23 (Pa.

1985).

Askew, 684 F.3d at 418−19. The Third Circuit has emphasized that the question of

whether a dispute is one of church governance and doctrine or one that may be

resolved by applying neutral principles of law is a fact-intensive inquiry. Scotts

African Union, 98 F.3d at 94−95 (“[T]he extent to which a court may permissibly

inquire into [ecclesiastical] disputes . . . turns on the specific elements of the

inquiry itself and the degree to which it might trench upon doctrinally sensitive

matters, rather than on conclusory labeling of the whole dispute as either ‘secular’

or ‘ecclesiastical.’”).

In this case, HSA asserts that the court can resolve its trademark dispute

under the Lanham Act based on purely secular principles of law, i.e., trademark

law.14 The court will address the elements of the claim simply in order to

determine whether the instant dispute may be resolved by applying neutral

principles of law, rather than to resolve the merits of the case. To state a claim for

federal trademark infringement under 15 U.S.C. § 1114, “a plaintiff must

demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the

mark; and (3) the defendant’s use of the mark to identify goods or services causes a

likelihood of confusion.” A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,

237 F.3d 198, 210 (3d Cir. 2000). With respect to the first two elements,

“[r]egistration of a mark under the Lanham Act constitutes prima facie evidence of

the mark’s validity and its ownership by the registration.” Members First Fed.

Credit Union v. Members 1st Fed. Credit Union, 54 F. Supp. 2d 393, 403 (M.D.

Pa. 1999) (citing 15 U.S.C. § 1115). With respect to the third element, the Third

Circuit has specified ten factors to be considered in determining whether a

14 The court’s discussion below regarding trademark infringement under the Lanham Act is

equally applicable to HSA’s common law claim for unfair competition since “[t]he Pennsylvania

common law of unfair competition generally tracks federal law” under the Lanham Act.

Magnesita Refractories Co. v. Tianjin New Century Refractories Co., No. 1:17-cv-1587, 2019

U.S. Dist. LEXIS 32559, at *44 (M.D. Pa. Feb. 28, 2019) (citing Diodato v. Wells Fargo Ins.

Servs., USA, Inc., 44 F. Supp. 3d 541, 571 (M.D. Pa. 2014)); see also UHS of Del., Inc. v. United

Health Servs., 227 F. Supp. 3d 381, 404 (M.D. Pa. 2016) (granting summary judgment on state

law unfair competition claims, which were found to be “necessarily dependent upon the success

of the federal claims”).

defendant’s use of its mark to identify goods or services creates a likelihood of

confusion:

(1) the degree of similarity between the owner’s mark and the allegedly

infringing mark; (2) the strength of the owner’s mark; (3) the price of

the goods and other factors indicating the care and attention one expects

would be given when making a purchase; (4) the length of time the

alleged infringer has used the mark without evidence of actual

confusion arising; (5) the intent of the alleged infringer in adopting the

mark; (6) the evidence of actual confusion; (7) whether the goods are

marketed through the same channels; (8) the extent to which the target

markets are the same; (9) the perceived relationship of the goods,

whether because of their near-identity, similarity of function, or other

factors; and (10) other facts suggesting that the prior owner might be

expected to expand into the alleged infringer’s market.

A & H Sportswear, Inc., 237 F.3d at 215.

While it is undisputed that the Twelve Gates symbol is registered with the

USPTO in HSA’s name, Sanctuary contends that the Twelve Gates symbol is not

entitled to trademark protection because the symbol has become generic as a

universal religious symbol that represents Unificationism generally. In addition,

Sanctuary asserts that HSA does not own the Twelve Gates symbol because Sean

Moon, as Rev. Moon’s son, inherited all rights to the Unification Church’s

intellectual property “as the only true and rightful successor to the Rev. Sun

Myung Moon.” (Doc. 101, ¶ 70.)

With respect to the first element: whether the Twelve Gates symbol is a

valid and legally protectable mark, the court finds that HSA’s registration of the

Twelve Gates symbol with the USPTO constitutes prima facie evidence of a valid

trademark. The court is capable of making this finding on neutral principles of

law. However, because Sanctuary has challenged this evidence, and asserted that

the Twelve Gates symbol has become generic and is therefore not entitled to

trademark protection, the court turns to the question of whether this symbol has

become generic.

Generic terms are those “which function as the common descriptive name of

a product class.” A.J. Canfield Co. v. Honickman, 808 F.2d 291, 296 (3d Cir.

1986). In other words, a “generic term is one that refers to the genus of which the

particular product is a species.” Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469

U.S. 189, 194 (1985). 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 “becomes the

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

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

According to Sanctuary, the Twelve Gates symbol is the common

descriptive symbol for the Unification religion, rather than serving as a symbol

specific to HSA as a branch of the Unification Church. While HSA has not

contested this assertion, there has been no evidence presented that the Unification

Church uses this symbol as its identifying mark. Indeed, the only evidence

presented in this case is that Rev. Moon, the founder of Unificationism, created the

Twelve Gates symbol, and that Sanctuary and HSA both use this symbol as an

identifying mark for their practice of Unificationism. However, no evidence has

been presented regarding other countries’ use of the Twelve Gates symbol vis-à-vis

Unificationism, let alone whether the Unification Church has adopted the Twelve

Gates symbol as representative of the Unification religion generally.

Thus, the implicit question raised by this issue is whether Sanctuary can be

classified as a branch of the Unificationist church in light of the apparent

fundamental disagreements between the parties relating to the beliefs and practice

of this religion. Indeed, while Sanctuary classifies itself as a Unificationist church,

HSA vehemently disputes this assertion. The voluminous record that has been

produced discusses the parties’ beliefs and practices of their versions of

Unificationism at length; however, it is well-settled that the court cannot resolve

church disputes on the basis of religious doctrine and practice. Jones, 443 U.S. at

602 (“Most importantly, the First Amendment prohibits civil courts from resolving

church property disputes on the basis of religious doctrine and practice.”). It is

therefore not appropriate for the court to determine whether Sanctuary is

considered a Unificationist church, and by extension, whether its representations

that it utilizes the Twelve Gates symbol to identify its religious practice would be

sufficient evidence for the court, or a jury, to determine that the Twelve Gates

symbol has become a generic religious symbol incapable of protection by

trademark.

Even if the court could resolve the first element of HSA’s trademark

infringement claim without running afoul of the First Amendment, it would face

additional difficulty with the second element: HSA’s purported ownership of a

trademark for the Twelve Gates symbol. As with the first element of HSA’s claim,

the court finds that HSA’s registration of the Twelve Gates symbol with the

USPTO constitutes prima facie evidence that it owns this trademark right and can

accordingly be determined by application of neutral principles of law. However,

Sanctuary has contested HSA’s ownership on inherently religious grounds.

Specifically, Sanctuary has alleged that Sean Moon is the owner of all

Unificationist property as the heir of Rev. Moon, and that he therefore owns the

trademark to the Twelve Gates symbol since he controls the Unificationist Church,

and by extension, HSA as a branch of same.

Plainly, this is a dispute that the court cannot resolve without venturing into

issues of church leadership or organization—an area in which the Southern District

of New York and the Second Circuit have already determined is inappropriate in a

similar dispute presented by the same parties. See Hyung Jin Moon v. Hak Ja Han

Moon, 833 F. App’x 876, 878−880 (2d Cir. 2020) (finding that “there are no

neutral principles by which we can adjudicate these claims without deciding the

religious question of who the rightful successor to the late Rev. Moon is”); Moon

v. Moon, 431 F. Supp. 3d 394, 404−409 (S.D.N.Y. 2019) (finding that the

ecclesiastical abstention doctrine prohibits court review of “intrachurch succession

disputes, such as the one at issue here”). While not binding on this court, the court

finds that these two cases, which present strikingly similar issues to those in the

instant case, are persuasive and helpful authority to aid in the resolution of this

case. Thus, with respect to the second element of HSA’s trademark infringement

claim, the court must once again apply the ecclesiastical abstention doctrine, which

precludes resolution of this claim.

Likewise, even if the court could resolve the first two elements of HSA’s

trademark infringement claim, the court finds that the third element, likelihood of

confusion, cannot be resolved by reliance on neutral principles of law.

Specifically, the court finds that Sanctuary’s contention that it practices

Unificationism adds an extra element of confusion to the confusion analysis. The

likelihood of confusion element exists “‘when the consumers viewing the mark

would probably assume that the product or service it represents is associated with

the source of a different product or service identified by a similar mark.’” Fisons

Horticulture, Inc. v. Vigoro Indus., 30 F.3d 466, 472 (3d Cir. 1994) (quoting

Dranoff-Perlstein Assoc. v. Sklar, 967 F.2d 852, 862 (3d Cir. 1992) (emphasis

added)).

As the court has already explained, there is some inherent confusion

regarding Sanctuary’s status vis-à-vis the Unification Church. HSA argues that

Sanctuary and its members do not practice Unificationism; Sanctuary asserts that it

does. There are no neutral principles of law available to assist the court, or a jury,

in resolving the question of whether Sanctuary’s members subscribe to a sect of

Unificationism versus the Unification Church generally. Thus, the court cannot

resolve the following questions without delving into religious matters: whether

Sanctuary is a sect of Unificationism; if Sanctuary is a sect of Unificationism,

whether Sanctuary should be able to utilize the Twelve Gates symbol; and whether

the likelihood of confusion between HSA and Sanctuary matters if Sanctuary is a

branch of the Unification Church. These questions are fundamental to the outcome

of this suit. Because they cannot be resolved on neutral principles of law, the court

finds that abstention on ecclesiastical grounds is necessary. Ecclesiastical

abstention creates a jurisdictional bar for the court’s review, and dismissal of this

case is accordingly mandated pursuant to Federal Rule of Civil Procedure 12(h)(3).

The court finds that the concerns outlined above are equally applicable to

Sanctuary’s remaining counterclaims in this case: cancellation of the registered

trademark for the Twelve Gates symbol (Count I); declaratory judgment that

Sanctuary did not infringe on HSA’s trademark or unfairly compete under common

law (Count II); and declaratory judgment that the phrase “Cheon Il Guk” is

generic, fails to function as a trademark, and that Sanctuary otherwise did not

infringe on HSA’s purported rights with respect to this phrase (Count IV). (Doc.

101.) These counterclaims are grounded on the same arguments and principles as

HSA’s claims in this case.15 Thus, based on the reasons outlined above, the court

lacks neutral principles of law on which it can resolve these issues.

In light of the court’s inability to resolve the claims presented in this case

based on ecclesiastical abstention grounds, the court finds that it lacks subject

matter jurisdiction over this dispute.16 Thus, pursuant to Federal Rule of Civil

Procedure 12(h)(3), the court must dismiss this action.

15 The court notes that Sanctuary’s counterclaim regarding the phrase “Cheon Il Guk” would

proceed through the trademark infringement analysis detailed above without the prima facie

evidence of a registered trademark on HSA’s part. However, Sanctuary’s affirmative defenses

present the same issues that the court has discussed above with respect to the Twelve Gates

symbol. To avoid the redundant exercise of repeating the same analysis for this phrase, the court

incorporates its discussion above as applicable to the phrase “Cheon Il Guk” and finds abstention

equally appropriate.

16 In light of the court’s findings that it lacks jurisdiction to resolve the claims and counterclaims

in this case, the court does not consider the remaining affirmative defenses raised by Sanctuary.

CONCLUSION

For the foregoing reasons, the court will dismiss this case for lack of subject

matter jurisdiction. An appropriate order will issue.

s/Jennifer P. Wilson

JENNIFER P. WILSON

United States District Court Judge

Middle District of Pennsylvania

Dated: March 30, 2022