On appeal from the Superior Court, Appellate Division, whose opinion is reported at 199 N.J. Super. 160 (1985).
For affirmance -- Chief Justice Wilentz, and Justices Clifford, Handler, Pollock and Stein. For reversal -- Justices O'Hern and Garibaldi. The opinion of the Court was delivered by Clifford, J. Garibaldi, J., dissenting. Justice O'Hern joins in this opinion.
Plaintiffs seek to enjoin defendants from using the phrase "Christian Science" as any part of the name of a church not affiliated with plaintiffs. The trial court granted injunctive relief, but the Appellate Division reversed, one judge dissenting, 199 N.J. Super. 160. Plaintiffs' appeal is therefore here as of right. R. 2:2-1(a)(2). We affirm.
Christian Science is a religion founded by Mary Baker Eddy in 1866. As the religion grew, there developed an organizational structure. In 1879 The Church of Christ, Scientist, was founded in Lynn, Massachusetts. From 1881 until 1889 Mrs. Eddy was principal of the Massachusetts Metaphysical College, which was replaced by the First Church of Christ, Scientist (the "Mother Church"), established in 1889 and relocated in Boston, Massachusetts in 1892. 2 J. Melton, The Encyclopedia of American Religions 74-77 (1978). Plaintiff Board of Directors is a Massachusetts corporation that conducts the business of the Mother Church. The Church has a separate publishing arm, governed by the plaintiff Board of Trustees.
The Mother Church, which is the center of a world-wide religious organization, bears the formal name "The First Church of Christ, Scientist." Local members of the organization consist of branch churches or societies, the difference between the two being primarily a matter of size. Branch churches are formally designated "First Church of Christ, Scientist," followed by a geographical designation, unless they are the second or third branch within one city, in which case the numerical designation changes. These names are prescribed by the Church Manual, and are provided for in New Jersey by
statute, N.J.S.A. 16:3-2. Typically, the branch churches establish "Christian Science Reading Rooms," where publications relating to the religion are made available to the public.
The individually-named defendants are trustees of the defendant church (the "Plainfield Church"), which was formerly a branch church affiliated with plaintiffs. The Plainfield Church became an authorized branch of the Mother Church in 1892, the year the Mother Church was first located in Boston. In 1977 a doctrinal schism developed between the Boston organization and the Plainfield Church. On June 16, 1977, plaintiff Board of Directors gave notice that it was withdrawing its recognition of the Plainfield Church as a branch of the Mother Church. The letter of notice also declared, "Former First Church, Plainfield, no longer has the legal right to identify itself publicly as a 'Church of Christ, Scientist' or a 'Christian Science Church' or in any other way use the term 'Christian Science' or similar words to describe any of its activities."
After receipt of this notice, defendants began taking steps to disassociate the Plainfield Church from the Mother Church. The Plainfield Church terminated its status as a corporation formed under N.J.S.A. 16:3-1 to -11 (which refer consistently to "church of Christ, Scientist," and nowhere use the expression "Christian Science church"), and reincorporated as a general religious corporation under N.J.S.A. 16:1-1 to -12. It adopted the name "Independent Christian Science Church of Plainfield, New Jersey."
Plaintiffs filed this suit on July 21, 1980. Their cause of action rested on asserted trade mark and service mark rights in the phrases "Church of Christ, Scientist" and "Christian Science." They sought to enjoin defendants
from using as the name of, or in connection with, any church, religious group, society, association, organization, or service now existing or which may be organized or exist, independently of the Mother Church and its branches, the names or designations, "Church of Christ, Scientist," "First Church of Christ, Scientist," "Branch Church of Christ, Scientist," "Christian Science Church," "Independent Christian Science Church," "Christian Science Reading Room,"
"Independent Christian Science Reading Room," or any name so similar thereto as to be likely to deceive the public or lead to confusion.
Plaintiffs alleged that the terms used by defendants so nearly resembled plaintiffs' names and marks (trademarks and service marks) as to be likely to cause confusion, mistake, and deception, to constitute false representation, and to result in unfair appropriation of plaintiffs' name, reputation, and good will. They charged that use of the terms constituted a false designation of origin and a false description or misrepresentation under federal trademark law, section 43 of the Lanham Act, 15 U.S.C.A. § 1125.
Plaintiffs alleged further that defendants' use of the terms infringed on plaintiffs' registered trade and service marks (marks for publications, e.g., "Christian Science Monitor"), violated N.J.S.A. 56:4-1 ("No merchant, firm or corporation shall appropriate for his own use a name, brand, trade-mark, reputation or goodwill of any maker in whose product such merchant, firm or corporation deals."), and constituted "unfair competition, trademark and service-mark infringement, palming off, dilution and injury to reputation, all in violation of the common law of the State of New Jersey."
The trial court granted injunctive relief. Christian Science Bd. of Directors v. Evans, 191 N.J. Super. 411 (Ch.Div.1983). The court assumed, without deciding, the threshold issue, namely, that plaintiffs had a protectible trademark interest in "Church of Christ, Scientist" and "Christian Science" when used in or as part of the name of a church, id. at 422, and then pursued a "likelihood of confusion" analysis -- that is, it concluded that plaintiffs had shown likelihood of confusion and potential damage by defendants' continued use of the terms, sufficient to justify an injunction Id. at 422-23. The trial court's faulty premise, endorsed by the dissent as a finding of fact, post at 316, 321 (we see it rather as a holding of law, and an incorrect one at that) led it to enter judgment enjoining defendants from using for any of its organizations any name or designation that includes any of the following phrases: Church
of Christ, Scientist; Christ, Scientist; Christian Science Church; Christian Science. It also enjoined defendants from making a representation likely to lead the public to believe they were affiliated with the plaintiffs, "provided that this * * * shall not prohibit Defendants from using, in a fair, truthful, and non-deceptive manner, both as to form and content, the term 'Christian Science' in phrases or sentences to refer to the religion developed by Mary Baker Eddy."
Defendants appealed, and pending appeal proposed to use the name
PLAINFIELD COMMUNITY CHURCH
AN INDEPENDENT CHURCH PRACTICING CHRISTIAN SCIENCE.
Because plaintiffs viewed defendants' use of that name as violative of the trial court's judgment, they sought an Order in Aid of Litigants' Rights enjoining use of the proposed name. The trial court agreed that the proposed use of the term "Christian Science" as part of the name of the church amounted to a trademark use in violation of the judgment. It therefore ordered that the second line, "An Independent Church Practicing Christian Science," be used, if at all, only as an explanatory phrase rather than as part of the name. The order included specific restrictions on the size, type, and style of lettering.
On appeal to the Appellate Division defendants challenged only the restraints on their use of "Christian Science" and "Christian Science Church." Therefore the injunction stands against their use of "Christ, Scientist" and "Church of Christ, Scientist."
A divided Appellate Division held that plaintiffs were not entitled to exclusive use of the phrase "Christian Science" when used as part of the name of a church. Christian Science Bd. of Directors v. Evans, 199 N.J. Super. 160 (1985). The court rested that holding on its conclusion that the primary significance
to the public of the phrase "Christian Science" is as the name of a religion, hence the phrase could not be protected as a trade name for the name of a church. Id. at 168. The court further held that "Christian Science" was protectible when used as part of the trade name "Christian Science Reading Room." Id. at 171-72. The Appellate Division therefore restrained defendants from using any variation of "Christ, Scientist," or "Christian Science" in connection with a Reading Room. One judge dissented from so much of the majority opinion and judgment as reversed the trial court's injunction against defendants' use of "Christian Science" in the name of their church, id. at 172, thereby framing the sole issue presented on this appeal. The injunction regarding Reading Rooms continues without challenge.
The parties and the courts below approached this case almost exclusively in terms of the law of unfair competition, of which the subjects of trademarks, service marks, and tradenames are branches. See 1 J. T. McCarthy, Trademarks and Unfair Competition § 2.2 at 51 (2d ed. 1984) (hereinafter McCarthy). In the context of this case those various areas of law overlap but do not differ significantly. For convenience we treat them throughout this opinion as interchangeable. Typically, the principles involved surface in commercial settings, and the language used is often peculiarly suited to those settings. For that reason their fit is awkward when they are applied to religious or eleemosynary institutions. Notwithstanding, those institutions are entitled, no less than are commercial enterprises, to the protection of the law of unfair competition. See generally National Bd. of Young Women's Christian Ass'n v. Young Women's Christian Ass'n, 335 F. Supp. 615, 621 (D.S.C.1971) ("a religious, benevolent or fraternal organization is entitled to protect the use of its name against those who secede"); National Spiritual Assembly of The Baha'is Under the Hereditary Guardianship, Inc. v.
National Spiritual Assembly of The Baha'is, 150 U.S.P.Q. 346, 354-55 (N.D.Ill.1966) (church organizations can develop protectible goodwill in marks, and are entitled to protection from injury to reputation and from loss of potential members through use of confusingly similar marks by competitors); Annotation, Right of Charitable or Religious Association or Corporation to Protection Against Use of Same or Similar Name by Another, 37 A.L.R. 3d 277 (1971) (collecting cases on the topic). Thus plaintiffs are entitled to have their claim of exclusive right to the name "Christian Science Church" evaluated under principles of law more commonly applied to commercial entities.
As we have pointed out, the religion of Christian Science was founded at least thirteen, and possibly twenty-three, years before establishment of the Mother Church, the organization now centered in Boston. Although the Boston organization has now co-existed with the Christian Science religion for close to a century, an understanding of this case requires recognition of two significant, related facts: first, the religion and the organization are conceptually separate; and second, the religion pre-existed the organization.
The point of our departure from our dissenting colleagues may be found in the consequences we attach to those important elements, consequences that the law has come to recognize: (1) because "Christian Science" is the name of a religion, anyone practicing a religion other than the Christian Science religion could be prohibited from using "Christian Science" in the name of a church -- and, obversely, anyone practicing "Christian Science" can use that phrase in the name of a church; (2) because defendants practice the Christian Science religion (as plaintiffs readily acknowledge), they are entitled to use "Christian Science" in the name of their church.
If in the late nineteenth century, in the early, formative stages of both the religion and the Mother Church, the founders of the Plainfield Church had chosen to practice the religion of Christian Science by following the religious teachings of Mary Baker Eddy, but had decided that their church should not become a member of the Mother Church organization, it is certain that there could have been no restraint on their use of the name "Christian Science Church." In fact, not even Mrs. Eddy, founder of the religion and of the Mother Church, would have been empowered by law to prevent defendants' use of the name "Christian Science Church," provided that name were truthful (in the sense that it accurately referred to the religion practiced by defendants). In Primal Feeling Center, Inc. v. Janov, 201 U.S.P.Q. 44 (TTAB*fn1 1978), there was a successful challenge to federal registration by Dr. Janov of the service mark "Primal Therapy" -- this, even though Janov had developed the method of therapy, coined the expression "primal therapy," and used that name exclusively for some time. The court found it was impossible to talk about his technique without using "Primal Therapy" as the common term for it. Id. at 50. Because others provided the same therapeutic services, they had a right to use the common name in their businesses and to prevent its registration by Dr. Janov. Id. at 56.
The fact that defendants seek here to use the name "Christian Science Church" now, after plaintiffs have used the phrase with little competition for a long period, makes no difference. Plaintiffs simply cannot appropriate, from the public domain, the common name of a religion and somehow gain an exclusive right to its use and the right to prevent others from using it. This principle is fundamental to the law of trademarks, the body of law under which plaintiffs seek relief.
Generic names are regarded by the law as free for all to use. They are in the public domain. * * * To grant an exclusive right to one firm of use of the generic name of a product would be equivalent to creating a monopoly in that
particular product, something that the trademark laws were never intended to accomplish. [McCarthy, supra, § 12.1 at 521 (footnotes omitted).]
If such a result is scrupulously avoided in respect of sellers and products, surely the rights of "competing" proponents of a religion should be guarded even more zealously. (In fact, that right has been protected in numerous cases involving religion, discussed infra, Section VI.)
Plaintiffs demonstrated before the trial court that the Christian Science church organization centered in Boston is referred to, by itself and by the public, as the "Christian Science Church." It is natural that this usage would develop. It is equally natural and likely that new churches in which Christian Science is practiced will be called, regardless of their corporate names or formal designations, "Christian Science Churches." This is because, as a matter of pure common sense, "Christian Science Churches" is a generic name for churches in which Christian Science is practiced. Consider the reasoning of the Court of Customs and Patent Appeals in In re Bailey Meter Co., 102 F.2d 843 (1939):
[T]he appellant concludes ["Boiler Meter"] does not name the device to which it is applied.
However, this argument ignores the fact that the product of appellant is a meter and that it is used in connection with boilers. It is, therefore, a boiler meter. Indeed, we are unable to see how the device could be more aptly described. Words used in combination may not be found in the dictionary, or elsewhere, in the precise combination used but it does not follow from this that they are not the correct nomenclature for particular things. As the brief of the solicitor points out "barn key" may not appear in the dictionary but it is the proper name for a key to a barn. Mere use of the words in combination does not destroy the significance of their meaning or their descriptive properties. [ Id. at 844.]
The court denied trademark registration for "Boiler Meter." On the basis of the reasoning so persuasively employed by that court, we conclude that the term "Christian Science Church" is not entitled to trademark status.
The notion that the existing generic name of a thing cannot be appropriated as a trademark by one producer has ...