United States: The Seventh Circuit Court Holds that an Incontestable Federal Trademark that Is Merely Descriptive Is Enforceable

The U.S. Court of Appeals for the Seventh Circuit has held that an incontestable federal trademark that is merely descriptive may be enforced against a third party. Te-Ta-Ta Truth Found. v. World Church of the Creator, 2002 U.S. App. LEXIS 14890 (7th Cir. July 25, 2002).

The plaintiff owned an incontestable federal trademark registration for CHURCH OF THE CREATOR, and the defendant was using the mark WORLD CHURCH OF THE CREATOR. The district court awarded summary judgment in favor of the defendant on the plaintiff’s trademark infringement claim on the ground that the plaintiff’s mark was generic.

The Seventh Circuit reversed and remanded with instructions to enter judgment in favor of the plaintiff. The court reversed the district court’s determination that the plaintiff’s mark was generic, instead holding that the mark was merely descriptive of the plaintiff’s services. The court explained that a mark is generic (and thus unenforceable) when, according to contemporary usage, it has become the name of a product or class of products. The only evidence that the defendant offered that illustrated the plaintiff’s mark was generic was dictionary definitions of the individual words in the plaintiff’s mark. But as the court put it, "That won’t cut the mustard, because dictionaries reveal a range of historical meanings rather than how people use a particular phrase in contemporary culture." Contemporary usage did not demonstrate that the plaintiff’s mark was the name of a single religion or a class of religions. Further, the court reasoned that affording protection to the plaintiff’s mark would not hinder available options for other sects to distinguish themselves. Thus, the court awarded judgment in favor of the plaintiff as a matter of law.