Secondary Meaning and Claiming Priority: A never-ending relationship
The present case belongs to one of the organizations in Vietnam named as Unified Buddhist Church of Vietnam ("Unified Church founded in Vietnam in 1964 having members and branches worldwide acting as a plaintiff. The defendant in the present case was Unified Buddhist Church of Vietnam - Giao Hoi Phat Giao Viet Nam Thong Nhat ("UBCV Texas") which was founded in 1992 and registered in 2014 as a nonprofit Texas corporation. Plaintiff claimed that the defendant has been using its mark and also alleged that a temple that was purchased by UBCV Texas with the Unified Church's assistance, in California, was sold without its consent. The case was filed at the United States District Court for the Southern District of Texas ("District Court") in 2017 after which the Unified Church appealed to the United States Court of Appeals for the Fifth Circuit ("Fifth Circuit") (Unified Buddhist Church of Viet. v. Unified Buddhist Church of Viet. - Giao Hoi Phat Giao Viet Nam Thong Nhat, No. 19-20544 (5th Cir. Dec. 14, 2020)).
Source- https://travel-information.org/buddhist-temples-vietnam/
The Unified Church and UBCV Texas' relation were disputable. Multiple claims were put by the Unified Church against UBCV Texas. Unified Church claimed that it founded UBCV Texas and appointed its director Dang who organized UBCV Texas. UBCV Texas also had Dieu as its attorney and registered agent. It also alleged that the Church in California was bought by UBCV due to its assistance, but was sold without its authorization. To the entire allegation, UBCV claimed that its existence is not legally connected to the Unified Church. Bringing the suit in the District Court, the Unified Church brought multiple state and federal claims such as false designation of origin, unfair competition, trademark infringement, dilution, and unjust enrichment. Asserting the illegal usage of mark by UBCV, Unified Church asserted three marks, (1) "UBCV"; (2) "Unified Buddhist Church of Vietnam"; and (3)"Unified Buddhist Church of Vietnam - Giao Hoi Phat Giao Vietnam Thong Nhat d/b/a Van Phong II VienHoa Dao" (with and without the additional designation "Texas"). These three marks are used by UBCV without the permission of Unified Church. Moreover, asserting its claim over the purchase of property, it sought accounting in connection with UBCV Texas's purchase and sale of the California property. For both the claims, the District Court granted a summary judgment in favor of UBCV, due to lack of proper evidences which proved that the Unified Church's mark had acquired some secondary meaning to sustain the claims and denied the request of Unified Church for accounting. Aggrieved by this, Unified Church made a timely appeal to the Fifth Circuit.
The main issues in the appeal before the Fifth Circuit were (1) a set of trademark claims on whether the Unified Church's asserted marks have acquired secondary meaning and (2) a request for an accounting. The Court notes that as per the Lanham Act, an entity can pursue certain claims in protection of a " trademark"(3) -"any word, name, symbol, or device" that a person uses or intends to use "to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods." The claims raised by Unified Church were three claims which were false designation of origin; unfair competition, and dilution raising equivalent Texas State-law claims. For proving the claims, the Unified Church needs to prove that the three asserted marks are legally protectable. The Unified Church has not received a certificate of registration for these marks from the United States Patent and Trademark Office.
The Court notes "Although registration affords marks as a presumption of validity, unregistered marks of the sort at issue here can nonetheless be protectable if their holder can demonstrate both ownership and distinctiveness." Still the Court assumes the ownership, but Unified Church failed to raise the issue on distinctiveness. "The general rule regarding distinctiveness is clear: An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning." No argument was raised by Unified Church regarding the inherent distinctiveness, so the Court evaluated whether they have acquired secondary meaning, which involves seven factors. They are: (1) the length and manner of use of the mark, (2) the volume of sales, (3) the amount and manner of advertising, (4) the nature of use of the mark in newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the defendant's intent in copying the mark.
The Court affirmed with the opinion of the District Court and noted that the only evidence that supports the contention was the length manner of use of the Unified Church mark, which is not enough to prove the claim. The Court notes "The Unified Church's allegedly lengthy use of these marks would not be enough, however, for a reasonable jury to find in its favor regarding secondary meaning given the lack of sufficient evidence supporting any other factors."
For the accounting claim, the Fifth Circuit affirming with District Court's observed that the accounting is inappropriate; it noted that "The Unified Church has not explained-below or on appeal-why normal discovery procedures or other relief at law would be inadequate." For Unified Church seeking accounting, it must prove that the facts and account are "so complex that adequate relief may not be obtained at law." Delving into both the claims; the Fifth Circuit affirmed the District Court's judgment of granting summary judgment in favor of UBCV.
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