Who owns the right to use the words “Christian,” “Jewish,” or “Muslim” in connection with product or services? Nobody. But the right to use the word “Mormon” is in dispute. The intellectual property arm of the Church of Jesus Christ of Latter-Day Saints has attempted to prevent the owner of the dating website Mormon Match from using that brand name and registering it with the US Patent & Trademark Office (USPTO).
In July 2013, Jonathan Eller, a Mormon, launched the dating site Mormon Match at dateamormon.com. He had filed an Intent-to-Use application to register the mark MORMON MATCH with the USPTO a month earlier, in June 2013. In November, Intellectual Reserve, Inc. (which holds the LDS church’s IP rights) filed a 90 Day Request for Extension of Time to Oppose for Good Cause with the USPTO’s Trademark Trial and Appeal Board.
Intellectual Reserve holds the rights to trademark registrations such as THE CHURCH OF JESUS CHRIST OF LATTER-DAY SAINTS (for “textbooks for religious instruction and seminarian studies; instructional manuals for teaching gospel, scriptures, priesthood courses and church doctrine, missionary services and administering church welfare; pamphlets featuring church teachings and writings”) and BOOK OF MORMON (for “pre-recorded audio and video cassette tapes and compact discs featuring religious content and Printed matter; namely religious books, religious instructional pamphlets, and brochures; photographs, artist materials, instructional and teaching material, posters, engravings, prints of paintings, books.”)
Intellectual Reserve filed suit against Eller filed in the federal district court of Southern Texas, asking the court to block the USPTO application and to take down Eller’s site. Eller countersued.
According to Eller, while the case was pending, Intellectual Reserve sent a shutdown request letter to Eller’s web-hosting company, alleging that the site contained infringing content. Bad form, LDS.
Note that Intellectual Reserve does not own any trademark registrations comprised of the word “Mormon” without any other words attached. According to the Electronic Frontier Foundation (which filed an amicus brief in support of Eller), “Intellectual Reserve concedes that the term “Mormon” can be used to describe church members generally, but claims that its ‘family of marks’ using ‘Mormon’ (such as ‘Mormon Tabernacle Choir’) gives it the power to silence any business that dares to use the term in commerce.”
In its brief, the EFF stated:
Cases such as this one, where the affirmative defense of fair use is so clear from the outset, can and should be dismissed at the earliest possible stage of litigation. As this Court is aware, discovery can be expensive and time-consuming in trademark cases. In addition to the usual attorneys fees and costs, litigants must often hire experts to conduct and/or debunk large surveys identifying consumer confusion. These expenses quickly add up to eye-popping amounts…Such expenses can be enough to stifle a business in its infancy, no matter how meritorious the company’s legal position.
This looks like a fairly straightforward case of trademark bullying on the part of Intellectual Reserve. Certainly the intent of trademark law is not to restrict religious expression in any way. And there’s a longstanding tradition of religious-minded individuals making relationship matches, including as a paid service. The fact that this is now done online rather than in person doesn’t affect the underlying questions in this case.
If Eller had attempted to obtain a trademark registration for the sole word “Mormon,” I would oppose that, as well. A registration for the unique term “Mormon Match,” with a disclaimer for the word “Mormon” (meaning, Eller would not be able to prevent anyone else from using that word in connection with online dating services), seems appropriate to me. We’ll see if the court agrees when they review this trademark dispute.
