June 10, 2010

Just a Name--Or a Registered Trademark?

2010 1516 page24 capan anyone who says they’re a Seventh-day Adventist use the church name in an official capacity? The General Conference Office of General Counsel—which provides legal counsel on issues such as employment, church assets, and protection of the church’s name—says “No.” Adventist Review features editor Sandra Blackmer talks with general counsel Karnik Doukmetzian and associate general counsel Dionne A. Parker to explore the specifics of this increasingly complex issue.—Editors.
BLACKMER: What exactly does the term “registered trademark” mean?
PARKER: A trademark, registered or otherwise, includes any word, name, symbol, or device—or any combination—used or intended to be used in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. For example, the trademark “Adventist” is registered in specific areas such as missionary services, religious observances, education, and health care. So we have protection in those specific areas.
Does the Adventist Church’s registered trademark include just the church logo and the name “Seventh-day Adventist,” or does it involve more than that?
PARKER: The names “Seventh-day Adventist” and “Adventist,” and the church logo, are all registered trademarks. The acronym “SDA” is used with what’s called common-law rights, meaning that the Adventist Church has been using it for a long period of time as a name that identifies our organization. So we have rights with that, as well.
Who has the legal right to use these trademarks?
PARKER: Any entity listed in The Seventh-day Adventist Church Yearbook. This includes the General Conference, divisions, unions, local conferences, local churches and companies, educational institutions, health-care institutions, and so forth. Lay and professional groups, however, must apply to the GC Office of General Counsel for a license to use the name “Seventh-day Adventist” and then wait for approval from administration.

: One thing to point out is that the General Conference Administrative Committee—the group that gives the ultimate approval for licenses to use the church name—doesn’t issue licenses to use the church logo. That use is restricted to official organizations, which don’t need additional permission.
2010 1516 page24To put trademark use into perspective, if someone were to take the golden arches of McDonald’s and put them up in a building and open up a business, it wouldn’t be long until McDonald’s would react to that, even if that person used only the logo—the golden arches. On the other side of that coin is the name “Mc-Donald’s.” You can’t open up a hamburger place and call it McDonald’s, although there have been a number of cases in which people have tried. If someone passes themselves off as McDonald’s, it impacts the company brand, its reputation, and the quality of the products McDonald’s is selling.

The same is true if somebody tries to pass themselves off as part of the official Seventh-day Adventist Church when, in fact, they’re not.

It affects not only doctrinal issues but also charitable donations. If I’m attending a Seventh-day Adventist church, I expect certain rules and procedures to regulate what happens to the money I put into the offering plate. I also know there are specific doctrines held by the Adventist Church. But if there’s another organization that calls itself the Seventh-day Adventist Church but is not part of the organized church, I don’t know where my money is going or how it’s going to be spent. They also may be advocating or following doctrines different from those of the official church. It’s very important to protect the reputation of the church so people know they’re getting what they think they’re getting. The misuse of the church trademarks can cause a lot of confusion for the public.
Such as when a self-supporting but Adventist-run school uses the trademarks?
DOUKMETZIAN: If a self-supporting school were to include the name “Adventist” in its name, they would receive a letter from Dionne saying, “You’re not part of the officially recognized Seventh-day Adventist system; you don’t have the right to use this name. Please cease and desist.” Most people amicably concede at that point.

There are times, though, when we have to go beyond that. Sometimes they ask permission to use the church trademark. At that point Dionne reviews the situation to determine how it would impact the church: What is it they do or advocate, and what are their functions and goals? That information is then forwarded to the General Conference Administrative Committee, and a decision is then made whether to grant them a license to use the trademark and how that mark is to be used.

They also have to provide a letter of recommendation from their conference, a statement of their mission and objectives, and affirmation that their board members are members of the church in regular standing.
Are there restrictions as to how and where the church trademarks can be used?
DOUKMETZIAN: They can’t be used to generate profit. And when a registered trademark such as the logo is used, it must be used with the appropriate recognitions. For example, the letter “R” with a circle around it [®] showing that it’s a registered trademark.
But it can be used by appropriate entities on letterhead, Web sites, signs, the sides of conference-owned moving vans?
DOUKMETZIAN: In general, yes.

We run into sticky points with ministries that may be supported by the local church. For example, there’s a church that was running a healthful living center, but when the woman working with the program decided to take it over and run it herself, problems arose. When the ministry was under the umbrella of the church, they didn’t need a license agreement. Once it moved away from the church, the church didn’t want the organization to use the church’s trademark anymore. So we had to ask the woman to stop using the trademark, even though in the past she had been able to do so.

A church member may feel, “Well, I’m a member of the church, therefore, I should be entitled to use the name ‘Adventist,’” but that’s not necessarily the case. An individual cannot use the name of the church in promoting his or her own business, for example.
2010 1516 page24How frequently do you deal with a situation in which an individual or a group is using the trademark inappropriately?
DOUKMETZIAN: Almost every day.

Right now we probably have more than 60 open issues.

Dionne does a regular search—both in corporate name and domain name registrations. We get reports every time someone registers a corporate name or uses a name or a domain name with any of the variations or names that we monitor.

We also have a company that provides us with trademark monitoring worldwide, so we keep a pretty good finger on the pulse of what’s going on in terms of using the church’s name. The church’s name is also well-known outside of North America, but trademarks, in general, are not as well-protected in other world regions.
How do you enforce trademark restrictions?
DOUKMETZIAN: More and more governments are putting rules and laws in place to protect trademarks. As the world shrinks and corporations expand around the world, they want to protect their name and reputation so that someone else is not trying to pass themselves off as the corporation. The same thing applies to the church.
We’ve had some high-profile cases ?in which individuals have broken off from the official church and started their own churches using the “Seventh-day Adventist” name, and we’ve had to enforce the church’s rights. At times we’re misunderstood when we go into the court system to enforce that right, but that’s the ultimate step for us, a step we don’t take lightly. We’d much rather resolve these issues well before they get to that point. But if individuals or organizations insist even after we have counseled with them, we need to do the best we can to protect the church’s name from misuse and confusion.

Litigation is always a last resort. In the four years I’ve been here we’ve filed three lawsuits; two of them settled almost immediately. We have ?a pretty good track record that speaks loudly to the fact that we really try not to sue people. But at the same time, we’re very firm about making sure we protect the church’s name.
Some people might say, “Why are you spending all that money taking people to court?” How would you respond?
DOUKMETZIAN: If we didn’t, the cost to the church—financial and otherwise—would be much greater.

With trademarks, if you don’t protect your rights, you lose them. If we can’t identify ourselves as Seventh-day Adventists and be distinct from the world—which is what we’re supposed to be doing—then we’re going to have a problem. If we call ourselves Seventh-day Adventists and we believe X, but these people over here call themselves Seventh-day Adventists and they believe Y, we’ve lost our identity and created confusion and misunderstanding with the public.
A perfect example of this is the Baptist Church. The Baptists didn’t do anything to protect their name, and pretty much anybody now can start a Baptist church and believe anything they want, and there’s nothing that the National Baptist Convention can do about it because they never made the effort when they should have to protect their name.
Is there anything else you would like to add?
DOUKMETZIAN: I want to emphasize that we follow the Matthew 18 principle. We go to the people who are using the trademarks inappropriately or without authorization and try to reason with them. It’s only when everything else fails that we take the extreme step of taking them to court. It’s not what we want to do; but, ultimately, it’s the last recourse we have. The kind of publicity the church wants is not what we get when a news crew shows up in a courthouse when we’re trying to enforce the church’s right to protect its name. But sometimes we have no other recourse. 

This article was published June 10, 2010.