I. Introduction

Although we would like to think of the separation of church and state as the normal state of affairs, the light of history shows the marriage of these two institutions to be the rule, rather than the exception. Egyptian subjects saw their pharaohs as gods made flesh. The Roman emperors ruled both the state and the church with an iron fist. So did the Russian czars up to Nicholas II, who was recently canonized, along with his wife and children, by the Russian Orthodox Church. Even today, Queen Elizabeth II of Great Britain is the official head of the Anglican Church and Pope John Paul II the monarch of the Vatican state.

With presidents acting on God’s will, and cardinals investing the church’s money in the world financial markets for the greater glory of God, it seems that rendering to God what is God’s and to Caesar what is Caesar’s is much easier said than done. [1] With God and Caesar holding each other in such a tight grip, the fact that courts often find themselves in the middle of religious disputes should come as no surprise. However, in a society where the separation of church and state stands as one of the central constitutional pillars, this involvement brings serious concerns. By getting involved too deeply in religious matters, the courts run the risk of supporting one sect’s agenda to the detriment of another, thus violating the Establishment Clause and giving to Caesar what belongs to God. [2] By remaining completely aloof from any dispute with doctrinal overtones, however, the courts might be, in essence, blocking an institution’s basic right to access to the courts, thus giving God that which is rightfully Caesar’s.

Concerns about God’s and Caesar’s bittersweet relationship run particularly deep in the area of intellectual property. Jed M. Silversmith and Jack A. Guggenheim discuss the interplay in detail.[3] They acknowledge that intellectual property rights, by their very nature, are in conflict with the U.S. Constitution’s religious clauses.[4] By granting a [p83] person an exclusive right in property to a religious writing or mark, the government may be interfering with another person’s freedom to worship.[5]

This problem seems to be particularly troublesome in the area of copyright law. In one of his articles, Thomas F. Cotter shows concern with the way in which courts “fail to take seriously the needs of religious believers to reproduce and distribute their religion’s core texts for purposes of their religious practice.” [6] As he goes into a deep exploration of the state of the law, he argues that the way in which courts give blanket rights of distribution of important religious texts to certain sects undermines what could possibly be termed as fair use by worshipers from dissenting factions.[7]

Silversmith and Guggenheim seem to share Cotter’s concern regarding copyright law and how it appears to give too much protection to those who hold the copyrights on core religious texts at the expense of the freedom of those who might need those works to worship. Silversmith and Guggenheim, however, do not believe that the problem of overprotection arises in the case of trade name protection. [8] They believe that, although the absence of trade name protection cases dealing with the First Amendment might be due to the fact that most of these trade name cases were fought before the First Amendment was applied to the states, the opinions in the decisions suggest that the courts took First Amendment issues into consideration.[9] Thus, while there might be a problem with copyright law and its interaction with the First Amendment religious clauses, it seems that religious freedoms should remain well protected as long as the courts keep applying the genericness standard to religious trade name cases in the way they have thus far.

The problem with trademark infringement actions, however, is that, by their very nature, they are excellent harassment tools.[10] A perfect example is the recent lawsuit that Fox News filed against Al Franken. Fox sought an injunction to stop the distribution of Al Franken’s “Lies and the Lying [p84] Liars Who Tell Them: A Fair and Balanced Look at the Right. ”[11] Fox argued that the use of the trademarked phrase “Fair and Balanced” in conjunction with a picture of Bill O’Reilly on the cover of Al Franken’s book might lead people to believe that Fox was sponsoring the book. [12] After a mere 30 minutes of oral arguments, however, the judge disagreed and held that the case was without merit, both factually and legally.[13] He held that “Fair and Balanced” is, if anything, a weak trademark and Al Franken’s use was considered parody and, thus, fair (although maybe not balanced) use under trademark law.[14]

Although Fox lost this particular lawsuit, a smaller defendant with less sophisticated counsel might not have fared so well. In fact, the looming prospect of an unfavorable judgment might have led a less sophisticated defendant than Al Franken to simply settle. [15] This possible outcome is particularly unnerving if we realize that it might happen in a religious context. A church plaintiff might be able to stifle a new doctrinal voice by simply suing on trademark and forcing the fledgling sect to settle. Although we would like to think that churches act in better faith than media moguls playing hardball, other church motivations could push the balance the other way. After all, who is more likely to try to stifle a diverging point of view by all means necessary than a church that, bent on a crusading frenzy, is convinced that a new sect may lead humanity further into heresy? Again, let’s not forget history . . .

On the other hand, we must not forget the legitimate interests of a church in making sure that its reputation is not tarnished or the source of its rituals confused with those of other denominations. The Catholic Archdiocese of Atlanta seems to be precisely in that position. According to the Associated Press, the Archdiocese filed a lawsuit against a network of Spanish-speaking churches for misleading people into believing they are a group of Catholic churches.[16] The faux-priests administer all sacraments, including the Eucharist, and perform all Catholic rituals for immigrants who mistakenly believe the churches to be associated with the [p85] Vatican.[17] The Capilla de la Fe, as this church denominates itself, raises “considerable funds” by engaging in the sale of holy objects and other religious merchandise. [18] Thus, if the Capilla de la Fe is taking funds that people believe are going to the Catholic Church, then Capilla de la Fe is using the Catholic’s church goodwill (a precious and scarce commodity these days), for its own profit. This case seems to fall squarely within Caesar’s realm.[19]

Curious about the possible balance that God and Caesar may strike in a situation like this and concerned about the lack of literature on the subject, I decided to embark in an exploration of some of the relevant issues. In this Note, I argue that, although protection for religious trade names does not seem to burden any religious freedoms, this same protection, if extended to rituals vestments and symbols, could have a more encroaching effect on people’s religious exercise. However, the courts could use the doctrine of aesthetic functionality in trademark disputes involving rituals, vestments and symbols in the same way that they have applied the doctrine of genericness (that is, as a per se rule) in some trade name cases, to ensure that some churches will not monopolize rituals that are necessary to meaningful worship at the expense of other sects. An unqualified per se rule, however, might destroy the rights of the trademark holder if used indiscriminately.

The approach I suggest might be a cause of concern for some who may think that churches will then have no protection against confusion. However, because rituals of a particular faith are usually conducted only at the particular church in question (unlike commercial products which may usually be found in several retail store chains) rituals are less likely to cause confusion than similarities among other product designs in commercial contexts. In order for a set of rituals or vestments to cause confusion, it seems that the potentially infringing church would have to substantially copy more than just the rituals in question. Even then, a different name in front of the church might be all it takes for the parishioners to realize the difference. Thus, it seems that, in this case, [p86] Caesar should not have much to worry about concerning trademark protection.

However, other types of confusion, such as initial interest confusion, could become more problematic as the use of televised and even Internet services becomes more popular with church followers. More trademark actions on rituals, vestments and other symbols are, then, likely to ensue. Although bringing a suit on this kind of contention might border on the frivolous, it might also be enough to chill a rival sect’s free exercise of its beliefs. Therefore, it seems to me that research in this area is becoming more relevant.

Because of the glaring lack of judicial precedent or academic discussion concerning this specific issue, I will first attempt to summarize the state of the law regarding the religious clauses of the First Amendment according to Silversmith and Guggenheim. Then, I will briefly describe the doctrine of genericness, its standard commercial application, and the way it has been used in religious cases, again, in light of the Silversmith and Guggenheim article. After explaining why I think trademark actions in the case of rituals are filed rarely, if ever, I will explain why I think these types of actions may become more prevalent in the future under an initial interest confusion standard. Then, I will explore the relationship between aesthetic functionality and genericness. Finally, I will attempt to sketch a way in which courts may employ aesthetic functionality to keep an injunction based on a trademark claim from violating the Religion Clause.

II. The Religious Clauses According to Smith and Guggenheim

In their article, Silversmith and Guggenheim undertook the task of exploring the interaction between intellectual property law and the Religion Clause of the First Amendment of the Constitution. In this part of the article, I will give a brief overview of the article sections that are relevant to the foundation of this work.

A part of the First Amendment reads: “Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof.” [20] This section, also known as the Religious Clause, has split into three largely independent branches of jurisprudence. [21] First, the Supreme Court held that the Establishment Clause “forbids the state from supporting a religion.” [22] The Free Exercise Clause curtails the state’s [p87] ability to pass laws that “would interfere with an individual’s ability to practice religion.” Finally, because of the nature of the First Amendment, the Supreme Court has “developed a rule of judicial restraint regarding intra-church disputes.”[23] The rule urges courts and legislative bodies to “apply neutral principles of law to resolve these controversies.”[24]

A. The Establishment Clause

Although formerly a powerful check on government action, recent judicial developments have weakened the Establishment Clause. In Lemon v. Kurtzman, the Court established a three-pronged test to determine if a state’s action would tend to promote religion.[25] The three-pronged test reads as follows: “[F]irst, the statute must have a secular legislative purpose; second, its principal or primary effect must be one that neither advances nor inhibits religion; finally, the statute must not foster ‘an excessive government entanglement with religion.’”[26] The present Court, however, seems to disfavor this test.[27] Although some justices maintain the validity of the test, they seem to do so more in form than in substance.

A case that has had crucial effects on Establishment Clause jurisprudence is Rosenberg v. Rector & Visitors of University of Virginia. [28] In this case, petitioner sued student government for refusing to fund a Christian magazine established by petitioner. Student government responded that it was not allowed to fund religious activities and thus could not fund a magazine with a religious message.[29] The student appealed the decision of the student government with the university. [30] Then, the student filed a civil rights suit in federal court.[31] After losing in district court, the Fourth Circuit Court of Appeals affirmed. [32] The Supreme Court granted certiorari and reversed the Court of Appeals.[33] The Court based its holding on the premise that “the government may not regulate speech based on its substantive content or the message it conveys.” [34] The [p88] Court reasoned that student government, by providing funding for publications, created a forum; then, by refusing to fund petitioner, it refused him access to the forum.[35]

The Court then held that funding religious magazines run by students would not be against the Establishment Clause.[36] The Court stated that “the guarantee of neutrality is respected, not offended, when the government, following neutral criteria and evenhanded policies, extends benefits to recipients whose ideologies and viewpoints, including religious ones, are broad and diverse.” [37] Thus, the Court made a distinction between an activity that seeks a subsidy because of its religious affiliations, which would violate the Establishment Clause, and an activity that seeks a subsidy for other legitimate reasons, such as being a student journal, in spite of its religious affiliations, which does not.[38] It seems that, though not overruled, the Lemon test “is not the controlling law relating to the Establishment Clause.”[39] As long as a statute is applied in a neutral way across the board, it falls within the requirements of the Establishment Clause.[40]

B. The Free Exercise Clause

The Free Exercise Clause has gone through much refining and fine-tuning in the last few years. Prior to the 1990s, the Supreme Court applied what appeared to be a “compelling interest” test on any legislation that interfered with religious activities. [41] In one case, the Supreme Court held that it was unconstitutional for a public employer to fire an employee for refusing to work on Saturday in order to observe the Sabbath because her decision not to work was based on religious beliefs.[42]

In Wisconsin v. Yoder, the state penalized respondents for not sending their children to the state school.[43] Respondents argued that, as members of an Amish community, complying with this government requirement would go against express church directives.[44] The Court held that, since the statute was passed to prevent child labor, and Amish children work under [p89] the supervision and care of their parents, the statute did not serve a state compelling interest and, therefore, violated the Free Exercise Clause.[45]

In 1990, however, the jurisprudence took a turn away from precedent. In Employment Division, Department of Human Resources of Oregon v. Smith, respondents were fired for using peyote.[46] The state then denied them unemployment benefits because of their “work-related misconduct.” [47] The Supreme Court eventually held that the respondent’s First Amendment rights had not been violated. [48] The Court reasoned that criminal law was generally applicable and that “the government’s ability to enforce generally applicable prohibitions of socially harmful conduct, like its ability to carry out other aspects of public policy, ‘cannot depend on measuring the effects of a governmental action on a religious objector’s spiritual development.’”[49]

Three years later, however, the Court held, in Lukumi Babalu Aye, Inc. v. City of Hialeah, that some local ordinances, which essentially made the practice of Santeria impossible, were unconstitutional.[50] The ordinances forbade Santeria practitioners from making animal sacrifices. [51] The legislative history of the ordinances demonstrated that they were passed for the specific purpose of making the practice of Santeria virtually impossible.[52] The Court stated that laws that “target religious conduct for distinctive treatment or advance legitimate governmental interests only against conduct with a religious motivation will survive strict scrutiny only in rare cases.”[53] The Court found that these laws could not possibly pass this standard.[54]

In an effort to revitalize the then-emaciated Free Exercise Clause, Congress, in 1993, passed the Religious Freedom Restoration Act (RFRA). [55] The RFRA declares, “government may substantially burden a person’s exercise of religion only if it demonstrates that application of the burden to the person (1) is in furtherance of a compelling governmental interest; and (2) is the least restrictive means of furthering that compelling governmental interest.” In City of Boerne v. Flores, however, the Court [p90] found the Act to be unconstitutional as applied to the states. Other decisions, however, have acknowledged that RFRA may serve as a “self-imposed limit on Congress’s power.”[56] Therefore, it seems that, unless a law that burdens religion was designed to suppress a particular faith, it is presumptively valid.[57] It remains uncertain, however, whether RFRA even applies to either the Copyright or the Lanham Acts. At least one court has found that scenario to be unlikely.[58]

C. Application of Neutral Principles to Intra-Church Disputes

The Supreme Court has been involved in disputes triggered by the splitting of a church into several groups that end up asking the Court to “determine which group is representing the true faith” in quite a few occasions. [59] The Court has declared that these internal problems should be solved by the church’s own bodies; [60] thus, giving to God what is God’s, while allowing Caesar, like Pontius Pilate, to wash his hands when his intervention is not proper.

The seminal case in this area is Watson v. Jones. [61] After the Civil War ended, the Presbyterian Church required all members who had once supported the Confederacy to repent of their sins before being allowed to join the church again. [62] The proslavery faction contested the election of antislavery members to the important church positions and sued in Kentucky’s highest court.[63] The court held that the church had violated its own charter by keeping proslavery members from voting. [64] Other members sued in federal court. [65] The federal court, however, upheld the election stating that the Court could not get involved in intra-church disputes.[66]

Other decisions have been fairly consistent with this precedent. [67] The Court’s position seems to be that, in the absence of “fraud, collusion, or arbitrariness,” it will not involve itself in church disputes.[68] If the disputes, however, may be dealt with through the use of general principles of [p91] property and equity and are of secular concern, then Caesar has a duty to get his hands dirty.[69]

III. Trademark Law and the Religious Clauses

A. The Purpose of Trademark Protection

The purpose of trademark protection, unlike patent and copyrights, is not to foster creativity or innovation. Rather, the rationale for trademark law is derived from the Commerce Clause. There are two main policy reasons for trademark law. Although they are inextricably intertwined, they are, also, conceptually distinct.

The first policy rationale is consumer protection. By protecting marks that the public associates with a particular source of goods, the government makes sure that the public is not confused about the source of the goods in question. By ensuring that the presence of trademark A on a box will imply the presence of product A inside that box, the government saves the buyer the trouble of having to guess what the product is. This makes commerce more efficient by reducing transaction costs.[70]

Because trademarks allow the public to identify a certain source with a particular mark, the source has an interest in making sure that the mark is not made less valuable as an identifier by the use of another. If another party uses the source’s trademark on its own goods, that second business is not only confusing the public about the source of the goods but also directly hurting the source’s business by usurping the source’s identity and supplanting it in the market. Thus, the splinter in the consumer’s foot might very well be a stake through the trademark owner’s heart.

It is perhaps for this reason that many courts involved in trademark disputes focus more on the property rights of the trademark owner than in the public’s interest to be protected from confusion. Although this might seem a purely academic distinction, it is actually at the center of trademark jurisprudence. In fact, it is at the crux of trademark law and how it deals with religious organizations. [p92]

B. Trademark Law and Religious Organizations

1. Trade Name Disputes

The paradigm case for a religious trade name dispute occurs when a few members of a church decide to leave the mother church because of some doctrinal dispute. [71] When the breakaway sect sets up a new church, it usually wants to use part of the old church’s name to identify itself. [72] The original church will then, usually, either out of malice or due to a legitimate concern with confusion, seek to enjoin the new sect from using any part of the name of the mother church. [73] Smith and Guggenheim rightly conclude that injunction may violate the First Amendment.[74] Furthermore, in the process of solving the dispute, the court will likely find itself entangled in a sticky doctrinal polemic.

It seems, from Smith and Guggenheim’s article, that most courts dealing with trade names of religious or nonprofit organizations seem to focus on whether the organization’s name deserves protection as a property right.[75] As one court declared: “Nothing in the Constitution prohibits a religious organization from owning property — and a trademark is a property right — or prohibits the government from protecting that property from unlawful appropriation by others.” [76] Although this quotation would suggest that religious trade names have been treated in the same way as their commercial counterparts, the case law suggests that the names of nonprofit organizations, religious ones included, may sometimes be subjected to a different treatment.

For example, in Colonial Dames of America v. Colonial Dames of State of New York, there were three distinct organizations calling themselves Colonial Dames. [77] Although all of the organizations were run for the purpose of preserving the memory of colonial times, they were run as completely separate entities.[78] Thus, Colonial Dames of America filed suit, reasoning that patrons might be confused as to the organization they were sponsoring.[79] The Court, however, found that there was no testimony that [p93] anyone ever joined one society mistaking it for any of the others.[80] However, the Court seemed to substantially base its reasoning on the fact that the organizations were nonprofit.[81] The Court stated: “[I]t is more important that philanthropic work should be done than that any particular person should have the gratification of doing it.” [82] Thus, the Court found the lack of a commercial use dispositive, making a thorough analysis of consumer confusion unnecessary.

Notwithstanding the courts’ traditional focus on the property rationale, a case for reduced trademark protection for nonprofit organizations could still be made under the consumer protection rationale. An argument could be made that most people who care to join a church or nonprofit organization will be sufficiently familiar with it not to be confused. In nonprofit cases, the relevant audience for the purposes of confusion is that composed of the members of the organization. When dealing with commercial institutions, on the other hand, the relevant audience, which is composed of the people who are likely to run into and potentially buy the product, will be less familiar with the company that produces it. In that case, the risk of confusion is higher, and the need for protection, therefore, more compelling.

In order to determine whether the use of a name by a religious organization infringes the trademark rights of another, the court must first make two separate analyses. First, a court must determine whether the name is merely descriptive or generic. [83] That is to say, are the words in the name simply describing a set of beliefs? Second, the court must determine whether the use of the name by the defendant is likely to confuse the public in making it believe that defendant is in any way affiliated with the plaintiff. [p94]

a. Distinctiveness

A name can only be a trademark if it is distinctive. In Abercrombie & Fitch Co. v. Hunting World Inc.,[84] the Abercrombie court set out three categories of names. These are 1) arbitrary or fanciful names, which have nothing to do with the product they represent, such as “Kodak,” 2) suggestive names, which suggest a quality of the product but requires a consumer’s leap of the imagination to figure that out, such as “Tide” for laundry detergent, 3) descriptive names, which merely describe the product, such as “Park ‘n Fly” or “Whopper” and 4) generic names, which name the category the product belongs to, such as “burger,” for a “hamburger.”[85]

Arbitrary, fanciful, and suggestive names are found to be inherently distinctive and, therefore, automatically protected under the Lanham Act. [86] Descriptive names are not protected unless there is a showing of secondary meaning.[87] That is to say, after having been used in the market for a while, the name, used in connection with the product, has come to serve, in the mind of the relevant audience, as a source of identification rather than as a descriptor of the product. For example, initially, the Whopper was merely a descriptive name alluding to the size of Burger King’s sandwich. With time, however, this name has come to serve as a source identifier. If one were to ask any random person what Whopper means to them in terms of burgers, they will most likely think of Burger King before they think of a humongous burger (maybe because there are much bigger burgers than the Whopper in the market these days). Thus, in connection with Burger King’s flagship burger, we can say that the word Whopper has acquired secondary meaning and, therefore, deserves trademark protection.

Generic names describe the class of products a particular item belongs to. “Brush” is generic for brush, car for “car,” “computer” for computer, etc. Therefore, by definition, a generic name can never be protected as a trademark, even if it were to acquire secondary meaning.[88]

The problem with trying to make these distinctions between the different classes of names is that the tests are difficult to apply, since they pose questions of fact particular to each case “and the trier of fact has the formidable task of ascertaining on the evidence submitted the meaning of the word among an indeterminate number of persons, perhaps millions.”[89]

[p95] As if the special treatment that names for nonprofits seem to receive was not enough to reduce their protection under the framework of trademark law, several courts have gone even further and held that religious names are “per se generic.” As one court put it, religious names must be generic because the name only describes:

First, the system of religion which it teaches; and second, that it teaches that system through the medium of organizations known as churches. It surely is not in a position to successfully claim a monopoly of teaching this form of religious faith by means of organizations known by the generic names of churches.[90]

The position held by many courts is well represented by that in McDaniel v. Mirza Ahmad Sohrab.[91] The plaintiffs sought to enjoin the defendant from making any use of the word “Baha” in any of its materials because it claimed to be the only authorized representative for the Baha religion. [92] The McDaniel court, in denying the plaintiff’s relief, explained:

The plaintiffs have no right to a monopoly of the name of a religion. The defendants, who purport to be members of the same religion, have an equal right to use the name of the religion in connection with their own meetings, lectures, classes and other activities. No facts are alleged in the complaint to indicate that the defendants have been guilty of any act intended or calculated to deceive the public into believing that . . . (they are) affiliated with . . . the plaintiffs.[93]

In Christian Science Board of Directors of First Church of Christ, Scientist v. Evans, by far the most comprehensive case on the matter, the Evans court reiterated the point it made in the prior case. [94] The facts of this case could serve as a model for the prototype religious trade name case. It involved a breakaway church that desired to use the names “Independent Christian Church,” and “Independent Christian Science Reading Room.”[95] The Evans court held that the defendants could keep using the name of [p96] their church.[96] The Evans court held that, even though the mother church had always used the words “Christian Science” exclusively, they were, nonetheless generic.[97]

On the other hand, other courts have found religious names to be source identifiers, entitled to all protections that trademark law may provide. In Jandron v. Zuendel, a federal district court faced with the exact same issue, found that “Christian Science Church” could only mean that the church was in a bona fide relationship with the mother Christian Science Church.[98] Thus, defendant was enjoined from using the name “Third Church of Christ Scientist” because it was remarkably similar to plaintiff’s usual names such as “First Church of Christ Scientist.”[99]

Courts also take into consideration the context in which words are used. In General Conference Corp. v. Seventh-Day Adventist Congregational Church, the circuit court stated that “Seventh-Day Adventist” could be a generic term when applied to the name of a specific church, because it describes “a system or set of Bible-based Christian beliefs, doctrines, and standards.[100] One, therefore, is not necessarily a Seventh-day Adventist because of what organization he may be affiliated with, but rather, he is a Seventh-Day Adventist because of what he believes.”[101]

In Stocker v. General Conference Corp., however, the Trademark Trial and Appeal Board (TTAB) held that the General Conference could use the name Seventh-Day Adventist in its literature as a trademark.[102] The TTAB explained that, although the General Conference acted as a church, it also offered a myriad of goods and services and, in relation to those, it could use Seventh-Day Adventist as a trademark.

In Te Ta Ma Truth Foundation, Family URI v. World Church of the Creation, a case decided last year, the court went even further in its protection of the plaintiff’s name, holding that protection of a church trade name does not impede freedom of religion but rather helps people make informed choices by avoiding confusion of sects. [103] In other words, trademark protection does not impede our religious freedoms. It actually facilitates our exercise.

[p97] In short, it seems that courts used to be extremely reluctant to give churches more protection for their names than it seemed necessary, thus using the per se genericness doctrine when they saw some kind of First Amendment issue looming in the horizon. However, this did not stop churches from acquiring trademarks for their more earthly dealings in products and services, a nice compromise between God and Caesar. Today, however, churches seem to enjoy increasing trademark protection. In some cases, the protection seems to be as broad as that granted to the trademarks used in more typically commercial contexts.

b. Likelihood of Confusion

A court may enjoin the name of any organization, including a religious one, if it determines that the use would carry a likelihood of confusion. A likelihood of confusion is usually found “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.”

In Church of Scientology International v. Elmira Mission of Church of Scientology, there was a preliminary injunction ordered because the defendant’s use created a likelihood of confusion.[104] Again, this is a case where the defendant used to be a member of plaintiff’s organization but later broke away. After defendant’s secession, plaintiff sought to enjoin defendant from using the word “Scientology” within its name. [105] The Elmira Mission court found that if it were to wash its hands in the case of someone who “loses its authorization, yet continues to use the mark, the potential for consumer confusion is greater.” [106] Thus, the defendant was enjoined from using its name.

Also, on the grounds of likelihood of confusion, several churches have not been allowed to call themselves the “Polish National” church. In the case of In re St. Stanislaus Polish National Reformed Church of Scranton, the church was ordered to change its name from St. Stanislaus Polish National to St. Stanislaus Polish National Reformed Church, because the national religion of Poland is Catholicism.[107]

The cases in this section appear at odds with those in the preceding section. The reason for this seems to be that, in the preceding section’s [p98] cases, the plaintiffs did not usually meet the burden of proving that they had a valid trademark.[108] This is not surprising because, as stated in the preceding section, nonprofits seem to be held to a higher standard when attempting to establish the validity of their names as trademarks. Once plaintiffs prove the validity of their trademark, as the plaintiffs in the cases in this section did, however, the test for likelihood of confusion applied to nonprofit organizations seems to be the same as that applied in other commercial contexts.

c. Trade Name Disputes and the Religion Clauses

In light of the limitations in trademark protection that courts use to impose through its per se genericness doctrine, the fact that they treat religious trade names just as regular commercial trade names should not be troubling from a First Amendment perspective. Smith and Guggenheim seem to be correct in asserting that the application of trademark law should be relatively straightforward under each one of the religious clauses.

(1) The Establishment Clause

As long as a court applies a rule neutrally and evenhandedly, it will not infringe the Establishment Clause. Trademark law is neutral on its face. In addition, any efforts that a court may make to give trademark rights to one religion over another will actually help clarify their identities and, thus, avoid confusion, which is the main goal of trademark law.

(2) The Free Exercise Clause

It seems that the mere grant of a name should not violate the Free Exercise Clause, since there is no evidence that the Lanham Act was passed with any religious group in mind, as long as it is done in a neutral manner. [109] In any event, it seems that the state could argue a compelling interest in making sure that the two groups are not confused.

(3) Neutral Principles of Law

This seems to be the only clause under which we may run into some trouble. Since the paradigm case for a trade name suit in a religious context, as stated above, tends to be that in which the breakaway church [p99] used to be part of plaintiff’s organization, the court will inevitably be drawn into a doctrinal dispute as to whether or not the new sect is a true follower of the faith or an apostate worthy of condemnation. However, there is a way around this dilemma.

In Church of God at Markleysburg v. Church of God at Markleysburg, [110] the local minister persuaded the church to breakaway from the mother church. The local church, however, was planning to keep using the local building. The Supreme Court of Pennsylvania held that they could not do that. Because the General Assembly’s bylaws reserved ownership of all church property in the General Assembly, the Court declared that “a local congregation which is a part of a larger religious organization cannot divorce or separate itself from the church family, set up a new independent organization, and by so doing entitle itself to retain the congregational property.” The Court declined to get involved in doctrinal disputes and stated that it could only examine the facts from a legal point of view and would not interfere unless the congregation started to use the property for purposes drastically different to those espoused by the bylaws. In this way, the Court avoided stepping on God’s toes. Following that rationale, the Court enjoined defendants from using the plaintiff’s name as well.

Many other courts seem to hold that the right to use the name should go with the property. They determine which side is the rightful owner of the property. Then, based on that judgment, they award the name to the winning side as well. Although perhaps not the most enlightened way of solving issues from a doctrinal point of view, it is perhaps the most solomonic way for courts to deal with these predicaments. By using neutral principles such as property law, as their guide, and turning a blind eye toward the religious questions in dispute, the courts avoid the type of meddling in intra-church disputes that might render their decisions unconstitutional. Lady Justice does wear a blindfold for a reason.

2. Ritual Disputes?

In trademark law, protection is not limited to names. Therefore, parties will fight over more than just trade names. Many trademark cases are about trade dress (the way a product is packaged, such as a Coca-Cola bottle or a Pez dispenser) and product design (the color of a Post-It note or the shape of a Goldfish cracker) as well. In my research, however, I could not help but notice the absence of religious trademark disputes in [p100] these two areas. Of course, the first argument would be that a religion, unlike a commercial enterprise, does not sell a product. But then again, courts treat church names as church property so can we not analogize religious rituals to commercial products and religious services to services in the commercial sense?

a. Unlikelihood of Confusion?

Even if we accept that premise, there seems to be another reason why we do not see many trademark lawsuits in this realm. Perhaps the possibility of likelihood of confusion is, actually, rather unlikely.

Even if commercial enterprises have a family of products that they would like to sell in combination (such as tennis shoes, rackets, jerseys, balls, and sport bags. . . and indeed they may try) the harsh realities of the market will probably push these companies to market their products individually. Many of these individual products will be the only significant connection a buyer may ever make between the product and its source. That makes it very important for the seller to make sure that a competitor will not use a trade dress or product design so similar to hers that it will cause confusion among consumers.

In the case of religious sects, however, (for the most part, because in East Asia people have a tendency to mix and match different rituals from a plethora of religious traditions without giving it a second thought) it seems that a ritual is not an isolated product but rather a part of the larger purpose of the church: to spread its faith and save souls. To the extent that a church may be analogized to a commercial enterprise, it can be said that its rituals, rather than being isolated products, are instead part of the one product the church is trying to sell: again, its faith. I do not recall seeing a catalog of isolated rituals in any church manual (except for Catholic churches urging people to go to Mass or confession, and this is usually done to get people who are already members to participate in the product they have already purchased, much as a personal trainer might urge us to exercise correctly at the gym for which we have bought a yearly membership). The only ritual most churches urge non-members to participate in is baptism (of course, I am speaking mostly about Christian sects now). That is because, by participating in baptism, one is essentially signing a contract for the purchase of salvation. Therefore, any other rituals that one may get involved in will probably happen after one has already become part of the church. The result of this is that, just like with other nonprofit organizations and secret societies, the purchaser has to become too familiar with the structure and doctrine of the church before partaking in any ritual to make confusion likely.

[p101] Not only do churches, in essence, sell their products and services in a package; they are also, for the most part, the exclusive distributors of such products and services. No licensing or franchising is likely to occur. Therefore, it is probable that most members of the public, even if they are not members of the particular church in question, will come to identify the rituals and liturgies offered by the church with that church itself and no other. Furthermore, church “products” come in such a tight bundle that any small difference in the performance of the religious rites as a whole, between the owner of the trademark and the potentially infringing party (such as the ministers’ vestments, the liturgy, or the name of the church itself) is likely to clue the public into realizing that this church is not in association with the one it is so similar to, thus, making confusion as to source unlikely.

Therefore, it seems that, in order for a likelihood of confusion to occur in a religious scenario not involving a trade name, the infringing religious organization must copy an overwhelmingly substantial amount of the features of the plaintiff’s church. Even then, it seems the only way a church could pull that off would be by intentionally attempting to mislead the public into believing that they are indeed the plaintiff church. This is called fraud, a charge that brings consequences of a substantially more dire nature than trademark infringement actions, thus, probably making the trademark action seem trivial.

The preceding analysis assumes that it is necessary for people to be confused throughout the whole process of purchase and use of the product in order to trigger a likelihood of confusion. The law, however, recognizes other types of confusion as well. One type is initial interest confusion. Initial interest confusion occurs when someone uses another’s trademark “in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.” [111] This usually happens when someone packages their product in a manner so similar to another’s trademark that a consumer will come by and grab the product thinking it comes from the trademark holder. Upon closer examination, the consumer will realize that the product does not come from the trademark holder. The product is so similar to that made by the trademark owner, however, that the consumer will find it easier to buy the new product than to go back to find the one she had in mind in the first place.[112]

[p102] It may seem ludicrous to think of initial interest confusion as a legitimate cause of action from a church’s point of view. As the twenty-first century advances, however, more and more religious services are available on TV and even through the Internet. In these kinds of mediums, all those characteristics that protect churches from confusion (e.g., separate building, prominent name on the door), would tend to disappear, making a minister’s vestments or the form of a ritual on a computer monitor or TV screen the first thing that one might encounter when flipping the channels or surfing through web sites. Is it not possible for a powerful church to allege that a rival sect is confusing people enough to make followers tune into the rival church because it “looks like” the bigger or older church? To some, this might seem a hard case to make in court. However, it may be enough to dampen the fervor with which some might be willing to express their faith and engage in activities related to their free exercise of religion.

We must remember that life is stranger than fiction, and when it comes to law, if it can be conceived, there is always an entrepreneurial lawyer willing to bring it to court. Therefore, it seems that asking the following questions is indeed a valid exercise: What would happen if a court found a ritual to cause a likelihood of confusion? May a court then enjoin the party from practicing such a ritual? What about the right to practice one’s religion? Just as the courts have sometimes applied a per se generic test to religious trade names, they could adopt a test of per se aesthetic functionality when it comes to rituals. Before delving into the application of aesthetic functionality to rituals, it may be helpful to explore the doctrine in further detail.

b. Aesthetic Functionality?

Aesthetic functionality came into the public light with Pagliero v. Wallace, which concerned the design of a china set.[113] The Pagliero court held that the design’s aesthetic appeal, “which was an important ingredient in the commercial success of the product” rendered the feature functional, and thus, not qualified for trademark protection. [114] Because of the broadness of the test, some courts rejected aesthetic functionality completely. [115] According to Professor Thurmon, it seems that the Pagliero test was wrong not so much in its acknowledgment of aesthetic [p103] functionality, but rather in the breadth of its standard. [116] Just because “an important ingredient in the commercial success of a product” gives one a competitive advantage, it does not mean that competitors need to use that feature. Again, as Professor Thurmon puts it: “Only by evaluating alternative designs can a court accurately determine the competitive significance of a particular feature or design.” [117] In the end, courts started to move toward a single functionality test both for aesthetic and utilitarian functionality, where competitive need is the standard.

All of this changed, however, after the Supreme Court rendered its Traffix decision in 2001.[118] Because of the all-encompassing nature of this decision, and the way it has shaken the foundation of functionality jurisprudence, it will suffice to say, for our purposes, that the Traffix decision revived the distinction between utilitarian and aesthetic functionality, keeping the old competitive need standard for aesthetic functionality and making utilitarian functionality the equivalent of trademark nullification. [119] Because the Traffix decision made the boundaries between aesthetic functionality and utilitarian functionality so uncertain and, at the same time, so crucial for the determination of trademark rights, it seems to me that, in order to make sure that both trademark protection and the First Amendment are given their dues, a court might adopt a per se aesthetic functionality rule in the case of disputes concerning rituals. Although, given the chaotic and at times volatile state of the functionality doctrine, this seems a rather arbitrary assumption, yet there are two reasons why it can be made.

First, at least from a legal and materialistically utilitarian point of view, rituals can be said to be useless except to the extent that they may appeal to those participating in them. They serve no tangible, quantifiable purpose, and their effectiveness is not scientifically falsifiable because they are not objectively real. Their effects seem to exist only in the minds of the participants. Therefore, courts would be very unlikely to find rituals functional in the utilitarian sense.

Second, even if a court wanted to involve itself in the task of determining whether the functionality of a ritual is aesthetic or utilitarian (or whether it is functional at all), such a determination would automatically require a court to get involved in doctrinal issues that are beyond its constitutional domain. How is a court to evaluate the function [p104] of a ritual: Evidence of souls saved per performance? Effect on the person’s spirit or karma? The suggestions might seem somewhat humorous but they underline the basic problem with these cases. Courts become entangled in the details of ritual administration and purpose, and which courts are to decide these issues? Therefore, a per se rule is more likely. For these reasons, I believe that courts might possibly adopt a rule close to a per se aesthetic functionality rule in respect to rituals.

c. Ritual Disputes and the Religious Clauses

(1) Establishment Clause

It seems that the analyses do not change much from those made under the trade names section. As long as a court applies its principles neutrally and evenhandedly, there is no reason why the Establishment Clause should be violated.

(2) Free Exercise Clause

As discussed above, it is in this area that the tensions between trademark law and religious freedoms may reach their higher levels. Aesthetic functionality would function as a valve through which any excessive pressure imposed on the Free Exercise Clause by trademark protection may be released. This must be done without deflating trademark protection so much that it becomes an empty shell. Striking a balance may become problematic. If a court forbids a church the performance of a particular ritual simply on the grounds that it may cause confusion, then it could be infringing the Free Exercise Clause. On the other hand, if it fails to protect some particularly distinctive rituals on the basis that they are aesthetically functional, the likelihood of confusion may increase dramatically.

In the unlikely case of finding secondary meaning and likelihood of confusion in the defendant’s use of the trademark, the defendant could still end up retaining use of the ritual, vestment, or symbol during religious celebrations because of the use of a per se aesthetic functionality rule. The defendant could also retain use of a symbol in other areas such as marketing religious merchandise if it could prove competitive need, just like in any other commercial case of aesthetic functionality. As noted above, the likelihood of confusion in religious contexts, other than those involving church names should be minimal. Therefore, if there is a likelihood of confusion, it is very likely that a minimal change on the infringing ritual, mark or symbol could be made, minimizing confusion [p105] without altering its functionality. In that case, the court could order the defendant to carry out such changes as a matter of equity.

It is plaintiff’s burden to prove secondary meaning, a potentially daunting task when it comes to religious situations. By combining that with a rule of per se aesthetic functionality for rituals, vestments and symbols used during religious services, the Free Exercise Clause should be well guarded from Caesar’s pressure. In other circumstances where the defendant church is acting more like any other commercial enterprise, then it should be the defendant’s burden to prove aesthetic functionality in that case as well. In this way, both defendant’s right to worship and plaintiff’s trademark rights are protected. The problem with attempting to make such distinctions, again, is: How can a court determine which use is religious and which use is not?

(3) Neutral Principles of Law

As noted above, the problem with rituals is that, if characterized as products, a determination of functionality must be made. This determination would inevitably involve a court in the resolution of doctrinal disputes that go beyond the realm of constitutional judicial action.

The alternative approach would be to make the per se functionality rule apply only when the rituals, vestments, and symbols are used during religious services. In other words, the infringing church would only be allowed to use the rituals, symbols and vestments for noncommercial purposes. However, by creating a rule of per se aesthetic functionality that only applies to religious services or noncommercial activities, we bring courts back around the circle of doctrinal meddling. What is a religious service? What is necessary to the followers of the church in a doctrinal sense and what is simply a commercial activity for the earthly benefit of the institution? Are these activities really necessary? Are they distinct and severable from the religious ones? How do we know? Do we just take the worshipers’ word for it? Do we engage in the secular creation of a standard for religious use? These are questions that would very likely drown the courts in the waters of the religion clauses from which we were trying to save them in the first place. As wise and able as Caesar may be, he is not the one who walked on water.

[p106] Unless, someone finds a way to solve these issues without engaging in doctrinal analysis (the possible subject of another paper), [120] the former approach (the per se rule) remains the best alternative. Although this might result in possible under-protection of trademark rights, we must keep in mind that confusion in this realm remains so unlikely that, in reality, the trademark rights should not suffer much.

IV. Conclusion

Intellectual property and the First Amendment, although not completely irreconcilable, serve different masters in distinct manners. Intellectual property assigns exclusive rights to specific individuals, while the First Amendment grants freedoms to all. Although the conflicts between these two aspects of the law tend to look obvious in hindsight, they are hardly ever foreseeable. By the same token, even though the possibility of a lawsuit on trademark involving rituals, vestments and symbols seems to be rather small, the way in which churches are increasing their use of technology makes these lawsuits more likely in the future. By exploring the use of theories already in place in possible future scenarios, such as aesthetic functionality in religious trademark litigation, we help make sure that, once these conflicts start to happen more often, they are resolved in ways that do not infringe the rights of any of the parties involved. It is true that the doctrine may leave many questions unanswered. However, it is better to acknowledge the limits of the system than to burden it with impossible tasks. It is not the task of the law to find all the answers to every question, but rather, to determine the party best suited for the task in order to promote efficiency as well as justice. In this case, the key is to strike a balance between trademark protection and religious freedoms in order to reach a point that might foster not just a compromise but perhaps even synergy between both. It is critical to give to God what is God’s and to Caesar what is Caesar’s.