3.28.2007

Of Angels, Coffee, and Trademarks


Bruce Godfrey posted about a coffee shop in Utah ("Just Add Coffee") that was selling shirts depicting the Angel Moroni having coffee poured into his trumpet. The LDS Church was not amused and sent a letter to the coffee shop owners asserting that the Angel Moroni was a registered trademark and they had to stop selling the shirts.

From the Deseret News story:
In a letter sent to Beazer's home last week, the shop owner was informed that the image of Moroni is a registered trademark of the LDS Church. The letter also requested that Just Add Coffee discontinue use of the image in advertising campaigns.
...

Attorneys for Just Add Coffee have sent a letter to church officials to inform them of the shirts and request that the shop owners be sent proof of the trademark.
"If they provide proof, we're going to comply," Beazer said. "We don't want to break any laws or anything."
Church spokesman Scott Trotter confirmed to the Deseret Morning News on Thursday that the image is an LDS Church trademark.


If the LDS Church has a trademark on the Angel Moroni, then there's a clear violation of their rights and the coffee shop owners are infringing. I say if, because there's no evidence that the LDS Church has any registered trademark for the Angel Moroni.

As noted on the Deseret Spectacle blog, a search of the U.S. Trademark Office's database yields no results for the Angel Moroni. I did a search for all marks registered to Intellectual Reserve (the LDS Church corporation that owns their intellectual property rights) just to avoid missing any image marks (like this one), but no results for the Angel Moroni.

Now the Washington Post picked up the story, continuing to accept the assertion from the initial story that the LDS Church has trademarked the image of the Angel Moroni.

Admittedly, it's possible that the LDS Church has a state trademark in Utah, just not a Federally registered trademark. In preparation for my Trademark class tonight, I decided I'd search the Westlaw database of state trademarks, going back to 1900. Still no luck finding any Angel Moroni marks.

The upshot of this research is that the LDS Church does not have a registered trademark on the Angel Moroni. At best, they may have some common law trademark rights acquired through using the depiction of the Angel Moroni, but that's a far, far cry from a "registered trademark" as asserted by the LDS Church lawyers and spokesmen.

And here, I thought that Mormons weren't supposed to lie about stuff.

7 comments:

Bruce Godfrey said...

Thanks for the link, Mr. X. A few poorly connection points come to mind:

1. Is it a federal offense to make a false federal trademark claim in bad faith?

2. Some states recognize common law "trademark"-style rights from mere use.

3. It's hard to see how the Angel Moroni has been used by the LDS Church (or its subsidiaries) to trademark goods or services.

The Deseret Spectacle said...

I am not an expert on intellectual property of any kind, but I was wondering something the other day, and your post reminded me of it: Can you trademark historical persons names or their visages?

If the LDS church considers the Angel Moroni to be an actual, historical entity, can he or his visage be trademarked?

And thanks for the link.

DS

Mr. X said...

Is it a federal offense to make a false federal trademark claim in bad faith?

The Lanham Act prohibits false statements about a trademark (Section 43(a)) and some of those provisions might apply. I don't know if there's another law that applies more generally to making false statements about a trademark as opposed to in an application for a trademark.

Some states recognize common law "trademark"-style rights from mere use.

The LDS Church may have common law rights, but those don't provide the quick and easy "cease & desist" letters that registered marks do.

I don't want to speculate too deeply on the LDS Church claim, but I see a real problem in showing confusion. They could rely on a tarnishment claim, but that's a thin reed that is susceptible to a parody defense.

It's hard to see how the Angel Moroni has been used by the LDS Church (or its subsidiaries) to trademark goods or services.

If they were to apply for a mark, it would probably be for use in services as an identifier. I doubt they sell a lot of Moroni statuettes.

There are a ton of reasons why an application for a mark would probably be denied, not least of which the lack of distinctiveness of an angel holding a trumpet. To avoid an overbroad mark, they'd probably end up with a mark for a very specific configuration; that type of very specific mark would be of little use in cases like this.

Mr. X said...

Can you trademark historical persons names or their visages?

Sometimes. The applicable section of the Lanham Act states, in relevant part that:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
(a)
Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; ....
15 U.S.C. §1052(a)

So, you can register a mark of a dead person as long as you're not trying to deceive or bring them into disrepute.

If the LDS church considers the Angel Moroni to be an actual, historical entity, can he or his visage be trademarked?

Maybe. The historicity of Moroni doesn't enter into it as much as the use in commerce and the distinctiveness of the mark. Angels with trumpets are a dime a dozen in religious art and literature, so any protection would be limited by the applicant being able to show that Moroni is distinctive from those other horn blowers.

Jim S. said...

I think the problem the coffee shop has is that they are using an actual photo of the Angel Moron statue from the Mormon temple on their T-shirt, and not just a generic "angel w/trumpet" picture. Just my lay-person's 2¢

Bobby Jassos said...
This comment has been removed by a blog administrator.
John Forrester said...
This comment has been removed by a blog administrator.