United States Court of Appeals

FOR THE DISTRICT OF COLUMBIA CIRCUIT

Argued April 11, 2008 Decided May 6, 2008

No. 07-7092

ESTATE OF FRANCISCO COLL-MONGE,

BY FRANCISCO D. COLL, ADMINISTRATOR, ET AL.,

APPELLANTS

v.

INNER PEACE MOVEMENT ET AL.,

APPELLEES

Appeal from the United States District Court

for the District of Columbia

(No. 01cv00271)

Walter D. Ames argued the cause for the appellants.

John D. Mason argued the cause for the appellees. Andrew

Butz was on brief. Joshua D. Sarnoff and Richard S. Ugelow

entered appearances.

Before: HENDERSON, TATEL and KAVANAUGH, Circuit

Judges.

Opinion for the court filed by Circuit Judge HENDERSON.

KAREN LECRAFT HENDERSON, Circuit Judge: The

appellants, the Estate of Coll-Monge and two for-profit

corporations owned by testator Francisco Coll, (collectively the
2

1

According to IPM’s by-laws, the “Inner Peace Movement is

dedicated to the principle that each man’s religion must be a way of

Estate), brought this action for trademark infringement and

related claims against two non-profit corporations that Coll

founded—Inner Peace Movement, Inc. (IPM) and Peace

Community Church (PCC) (jointly the Non-Profits). The Estate

alleged that it is the sole registered owner of five marks Coll

registered with the United States Patent and Trademark Office

(USPTO). The Non-Profits—which use the marks—countered

that they are the sole owners and that, when Coll registered the

marks, he did so in his representative capacity on their behalf.

The district court granted summary judgment to the Non-Profits

on the trademark claims, concluding that on the undisputed facts

they, as the sole users of the marks from the beginning, are also

the sole owners and that Coll registered the marks on their

behalf. In reaching its decision, the court held the “related

companies” doctrine—under which registration of a mark used

by a related company inures to the benefit of the owner—

inapplicable to a non-profit corporation. We conclude that the

district court erred in its “related companies” holding and that

there remain disputed issues of fact regarding both the doctrine’s

applicability here and the capacity in which Coll registered the

marks with the USPTO. Accordingly, we reverse the district

court’s summary judgment on the Estate’s trademark claims and

affirm the denial of the Estates’s partial summary judgment

motion. On the other hand, we affirm the district court’s

assessment against the Estate of the cost of mailing “remedial

notices” pursuant to a temporary restraining order it issued

before entering summary judgment.

I.

The following facts are undisputed. Coll co-founded IPM in

January 1964 and PCC in October 1965 to promote his “Inner

Peace Movement” self-actualization program.1

 Coll was
3

life in today’s world” and “provides leadership and suggestions for the

development of inner spiritual guidance and the unfolding of each

person’s spiritual gifts (I Cor. 12:4-11) that bring new faith, balance

and freedom from fear to each individual.” IPM’s Rev. 1st Am.

Answer & Countercls. tab C, at 1.

2

Under the Lanham Act, which governs federal trademark

registration and rights, the marks at issue are technically “service

marks” rather than “trademarks” because they are used in connection

with services rather than goods. See 15 U.S.C. § 1127 (defining

“trademark” as “any word, name, symbol, or device, or any

combination thereof” a person uses or intends to use “to identify and

distinguish his or her goods, including a unique product, from those

manufactured or sold by others and to indicate the source of the goods,

even if that source is unknown” and defining “service mark” as “any

word, name, symbol, or device, or any combination thereof” a person

uses or intends to use “to identify and distinguish the services of one

person, including a unique service, from the services of others and to

indicate the source of the services, even if that source is unknown”).

The Lanham Act generally treats service marks and trademarks the

same. See 15 U.S.C. § 1053 (“Subject to the provisions relating to the

president of each of the Non-Profits as well as on the board of

directors of each. Coll also founded three for-profit

corporations: (1) Americana Leadership College, Inc.,

incorporated in 1976, which assisted the Non-Profits with

promotion, administration and financing; (2) Alley Copyrights,

Inc., incorporated in 1977, which published, stored, distributed

and registered with the U.S. Copyright Office educational

materials used by the Non-Profits; and (3) Employee Services

Personnel, Inc., incorporated in 1984, which did accounting

work for the Non-Profits. All three for-profit corporations are

owned by a parent holding company, Wayshowers, Inc., of

which Coll was the sole shareholder. 

Between 1992 and 1995, Coll registered with the USPTO the

five service marks2

 at issue: the words “Inner Peace Movement,”
4

registration of trademarks, so far as they are applicable, service marks

shall be registrable, in the same manner and with the same effect as are

trademarks, and when registered they shall be entitled to the protection

provided in this chapter in the case of trademarks. Applications and

procedure under this section shall conform as nearly as practicable to

those prescribed for the registration of trademarks.”).

3

These are Patricia Alexander, Coll’s administrative assistant;

Cherie Buchanan, Coll’s secretary/bookkeeper; and IPM Officer Peter

Georgas, who is affiliated with the Americana Leadership College

Conference Center in Glendale, Arizona.

4

The complaint also alleged counts of unfair competition (both

common law and statutory), copyright infringement, misappropriation

of trade secrets and conversion. 

5

The answers also alleged counterclaims for violation of D.C.

Code § 29-514 (now D.C. Code § 29-301.14) (requiring that annual

board meetings comply with by-laws), unlawful trade practices in

violation of D.C. Code § 28-3904, common law unfair competition,

the words “Peace Community Church,” the “IPM”

word/emblem, PCC’s “Dove and Olive Branch” emblem and a

“Circle of Love” emblem. On December 15, 1999, Coll died,

leaving his estate to his son, Francisco David Coll. 

In February 2001 the Estate of Coll-Monge, joined by

Americana Leadership College, Inc. and Alley Copyrights, Inc.,

filed this action against the Non-Profits, three named

individuals3

 and 20 “John Does,” setting out seven claims,

including Counts I and II which allege trademark infringement

under, respectively, the Lanham Act, 15 U.S.C. §§ 1051 et seq.,

and the common law.4

 In their amended answers, IPM and PCC

asserted various counterclaims alleging, inter alia, fraudulent

trademark registration, trademark infringement and deceptive

trade practices in violation of the Lanham Act and sought

cancellation and rectification of Coll’s trademark registrations.5
5

unjust enrichment and conversion.

On June 21, 2001, the Non-Profits applied for a temporary

restraining order (TRO) to prohibit the Estate from misleading

IPM’s board members and others by soliciting them to attend an

annual board of directors meeting for the “Inner Peace

Movement®” in Osceola, Iowa on July 4, 2001, the same date

that IPM’s annual board meeting was in fact to be held in San

Antonio, Texas. See, e.g., JA 106-07. The Non-Profits alleged

that the Estate’s use of the name “Inner Peace Movement” was

intended to divert attendees from IPM’s official board meeting.

On June 27, 2001 the district court issued a TRO restraining

“the plaintiffs and their officers, agents, servants, employees and

all persons in active concert or participation with any of the

foregoing” until July 9, 2001 from 

advertising, promoting, noticing or conducting an annual

meeting of the board of directors of Inner Peace

Movement, Inc., and/or the Inner Peace Movement®,

and/or IPM International, Inc., and/or the plaintiff

corporations or any similar or related entity at any time.

TRO 2. The TRO further enjoined the same parties for the same

time period from contacting any member of IPM’s board of

directors about the Osceola meeting and required them to remove

website notices of the meeting and to provide the names of “all

persons . . . contacted by writing, electronic mail or otherwise,

about annual meetings of Inner Peace Movement® or IPM

International Inc. so that Inner Peace Movement, Inc. may send

remedial notices.” Id. at 3. The TRO directed that the cost of

the mailings be borne by the Estate. Id.

In an order filed March 25, 2004, the district court granted

summary judgment to the Non-Profits on all seven counts of the

complaint and denied the Estate’s motion for partial summary

judgment on the trademark claims and counterclaims as to the
6

marks “Inner Peace Movement” and “Peace Community

Church.” The court concluded that Coll had not been the owner

of the subject trademarks because (1) there was “no evidence that

Dr. Coll used the IPM and PCC trademarks for his own

pecuniary interest independent of the two organizations,” (2) the

“related companies” doctrine did not apply to a non-profit

corporation and (3) Coll “intended to register the trademarks in

his representative capacity and did not intend them for his

individual benefit.” Summ. J. Order 2-3. The court denied the

individual defendants’ motions for summary judgment on the

claims against them, leaving intact those claims and the

counterclaims asserted by the Non-Profits. Subsequently, the

court granted the Estate’s motions to dismiss the claims against

the three individual defendants and the 20 John Does and the

Non-Profits’ motion to dismiss their counterclaims.

Accordingly, on May 7, 2007, the court entered final judgment

in favor of the Non-Profits.

The Estate filed a notice of appeal on June 6, 2007.

II.

The Estate appeals two of the district court’s rulings: (1) the

March 25, 2004 order granting the Non-Profits summary

judgment and denying the Estate summary judgment on the

Estate’s trademark claims (Counts I and II) and (2) the portion

of the June 27, 2001 TRO requiring that the Estate bear the cost

of sending remedial notices to those persons the Estate had

contacted about its Osceola, Iowa “Inner Peace Movement”

board of directors’ meeting. 

A. Summary Judgment on Trademark Claims

“We review the district court’s grant of summary judgment

de novo, applying the same standards as the district court and

drawing all inferences from the evidence in favor of the

non-movant.” Wilburn v. Robinson, 480 F.3d 1140, 1148 (D.C.

Cir. 2007) (citations omitted). “We may affirm only if there is
7

no genuine issue as to any material fact and the moving party is

entitled to judgment as a matter of law.” Id. (citation omitted).

Applying this standard here, we agree with the Estate that the

district court erred in concluding that as a matter of law the NonProfits owned the marks at issue and that Coll intended to

register the marks on their behalf. We address first the

underlying issue of ownership through use. See In re ECCS,

Inc., 94 F.3d 1578, 1579 (Fed. Cir. 1996) (“most fundamental

aspect of United States trademark law” is “that trademark

ownership and attendant rights are acquired in the marketplace

by use and that the statute, popularly known as the Lanham Act,

aside from modern ‘intent to use’ law not here involved,

provides only for registration of existing marks”); see also 3 J.

Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 19:3 (4th ed. 2005) (“Although a federal

registration will give the owner of a mark important legal rights

and benefits, the registration does not create the trademark. . . .

[T]he absence or cancellation of a registration does not invalidate

the trademark. It is the use of the mark to identify a single

source which creates exclusive trademark rights.”) (footnote

omitted).

Ordinarily, a party establishes ownership of a mark by being

the first to use the mark in commerce. See Allard Enters., Inc.

v. Advanced Programming Res., Inc., 146 F.3d 350, 358 (6th Cir.

1998) (“ ‘[T]he exclusive right to a trademark belongs to one

who first uses it in connection with specified goods.’ ” (quoting

Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir.

1975) (alteration added))); Ford Motor Co. v. Summit Motor

Prods., Inc., 930 F.2d 277, 292 (3d Cir.) (“With respect to

ownership of unregistered marks, the first party to adopt a

trademark can assert ownership rights, provided it continuously

uses it [sic] in commerce.”), cert. denied, 502 U.S. 939 (1991).

Alternatively, the Lanham Act permits an applicant to establish

ownership under the “related companies” doctrine by showing

that it controlled the first user of the mark. See Secular Orgs. for
8

Sobriety, Inc. v. Ullrich, 213 F.3d 1125, 1130 (9th Cir. 2000)

(“[T]o prevail on its trademark claim, [plaintiff] must

demonstrate that it was the first user of the disputed marks or, in

the alternative, that if [defendant organization] was using the

marks first, it was doing so as a related entity and the benefits of

any such use should therefore inure to [plaintiff].”). “Under the

doctrine of ‘related companies,’ the first use of a mark by a

person ‘controlled by the registrant or applicant for registration

of the mark’ shall inure to the benefit of the controlling entity.”

Id. at 1131 (quoting 15 U.S.C. § 1055). In this case, it is

undisputed that the Non-Profits were the “first users” of the

marks at issue but the Estate contends that Coll controlled the

Non-Profits’ use of the marks, which use therefore inured to his

benefit. The district court rejected this argument, reasoning that

“[b]ecause the defendants are non-profit organizations with no

owners and their actions are controlled solely by their Board of

Directors, no one person has control over any actions of the

defendants, much less control over the uses of the trademark.”

Summ. J. Order 3. We conclude the court erred in holding that

a non-profit corporation cannot be a related company whose use

of the trademark is controlled by a mark’s registrant. 

The related companies doctrine is embodied in section 5 of

the Lanham Act, which provides:

Where a registered mark or a mark sought to be

registered is or may be used legitimately by related

companies, such use shall inure to the benefit of the

registrant or applicant for registration, and such use shall

not affect the validity of such mark or of its registration,

provided such mark is not used in such manner as to

deceive the public. If first use of a mark by a person is

controlled by the registrant or applicant for registration

of the mark with respect to the nature and quality of the

goods or services, such first use shall inure to the benefit

of the registrant or applicant, as the case may be.
9

15 U.S.C. § 1055. The Lanham Act defines a “related company”

as “any person whose use of a mark is controlled by the owner

of the mark with respect to the nature and quality of the goods or

services on or in connection with which the mark is used.” Id.

§ 1127. The statute does not expressly require formal corporate

control, as the district court suggested. Instead, the statute

requires control over only the “use of a mark . . . with respect to

the nature and quality of the goods or services,” id., which may

include not only corporate control but also licensing agreements

and other types of oversight. See, e.g. Turner v. HMH Pub. Co.,

380 F.2d 224, 229 (5th Cir. 1967) (concluding under 15 U.S.C.

§ 1055 plaintiff as licensor “introduced ample evidence to show

that [it] fully controlled and dictated the nature and quality of the

goods and services used in connection with the trade and service

marks by the several [independently owned] licensees”); see also

Carpenter v. Marini, 2006 WL 2349586, at *6 (D. Conn. July 11,

2006) (“In certain cases, an individual may control the nature

and quality of the goods or services in connection with which a

mark is used even if he or she does not own the company that is

using the marks.”); 2 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition § 18:51 (4th ed. 2005)

(term “related” “is not limited to control of a company in

general” but “simply refers to control over the ‘nature and

quality of the goods and services in connection with which the

mark is used.’ ” (quoting Roberts, The New Trademark Manual

20 (1947)); id. (although “superficial reading of the Lanham Act

‘related company’ provisions might lead one to the conclusion

that the ‘companies’ (meaning ‘any person’) must be ‘related’ by

some form of stock ownership, such as are parent and subsidiary

corporations,” . . . “[i]n fact, during the legislative hearings, the

Department of Justice wanted to limit the language to 100

percent controlled subsidiaries, and this was rejected.” (citing

Shinderman, Trademark Licensing: A Saga of Fantasy and Fact,

14 Law & Contemp. Probs. 248 (1949); Taggart, Trademarks

and Related Companies: A New Concept in Statutory Trademark
10

Law,” 14 Law & Contemp. Probs. 234, 241 (1949))). The Estate

has offered sufficient evidence of such control to survive

summary judgment. 

In a 2001 declaration, Coll’s ex-wife stated that she had been

“in association” with Coll from 1962 to 1985 and that, “[w]hile

there was a Board of Directors, [her] late husband was always in

complete control of [IPM] and its use of the mark, INNER

PEACE MOVEMENT.” Coll Decl. ¶ 2. In addition, in his 2001

declaration, quondam IPM president Robert Conrad averred that

he had been involved in the IPM program since July 1973 and

that Coll “shut[] down the Board of Directors,” kept IPM

“dormant for 4-5 years: from July 1979 to July of 1983 or 1984”

and founded the “INNER PEACE MOVEMENT Association . . .

to replace [IPM] during its period of dormancy.” Conrad Decl.

¶¶ 3, 6. Conrad further stated that Coll “controlled the use of the

INNER PEACE MOVEMENT mark and merchandizing through

multiple distribution channels.” Id. ¶ 6. According to Conrad,

Coll’s control “extended even to . . . giving specific permission

for each traveling leader and lecturer as to their use of the mark

in merchandizing their lectures and courses.” Id. ¶ 11. Finally,

letters that Coll wrote to the USPTO in response to requests for

“clarification” of his trademark registration applications indicate

that he controlled the content of the materials the Non-Profits

used under the disputed marks. See, e.g., JA 41 (“The applicant,

Dr. Francisco Coll, is the Founder and Director of the PEACE

COMMUNITY CHURCH. There exists a verbal understanding

between the applicant and the Peace Community Church that any

and all materials (being, books, tapes, letterhead, envelops [sic],

brochures, etc.), be reviewed and approved by the applicant prior

to use by the Peace Community Church, which mark is the logo

for said corporation.”); id. at 51 (“The applicant as Founder of

the, the [sic] Inner Peace Movement, determines the materials

the Corporation consistently uses.”); id. at 55 (“The applicant as

President & Founder of the Peace Community Church

determines the materials the Corporation consistently uses.”).
11

6

In 1998, the IPM Board amended its by-laws to provide: “The

Founder Dr. Francisco Coll shall have an absolute and overriding

power of veto on any decision made by the Executive Committee at

all times and in all circumstances.” JA 62; see also JA 59 (meeting

minutes).

These documents put into dispute whether or not Coll controlled

the use of the Non-Profits’ marks from the marks’ first use and

therefore preclude summary judgment on the ownership issue.6

The district court also erroneously found on the evidence

before it that Coll necessarily registered the marks in a

representative capacity on behalf of the Non-Profits. It is not

dispositive, as the court believed, that “[w]hen Dr. Coll

registered the trademarks in 1993, he signed the applications as

‘founder’ and/or ‘president’ of IPM and PCC.” Summ. J. Order

2. The application forms themselves contain indicia that Coll

intended to register the marks in his individual capacity. In

them, Coll identified himself—“Dr. Francisco Coll”—as the

“Applicant” and checked the box next to “Individual” rather than

“Corporation.” See, e.g., JA 30 (IPM service mark application),

33 (PCC service mark application). In light of the contradictory

inferences to be drawn from the applications, summary judgment

was inappropriate. 

B. TRO Costs

The Estate also contends the district court erred in requiring

that the Estate pay the cost of mailing the remedial notices

mandated by the TRO. In deciding whether to grant preliminary

injunctive relief, the district court “must consider whether: (1)

the party seeking the injunction has a substantial likelihood of

success on the merits; (2) the party seeking the injunction will be

irreparably injured if relief is withheld; (3) an injunction will not

substantially harm other parties; and (4) an injunction would

further the public interest.” CSX Transp., Inc. v. Williams, 406

F.3d 667, 670 (D.C. Cir. 2005). “The test is a flexible one. ‘If
12

the arguments for one factor are particularly strong, an injunction

may issue even if the arguments in other areas are rather weak.’ ”

Id. (quoting CityFed Fin. Corp. v. Office of Thrift Supervision,

58 F.3d 738, 747 (D.C. Cir. 1995)). “We review the district

court’s weighing of the four factors under the abuse of discretion

standard . . . .” Id. We find no abuse of discretion here.

The TRO did not involve the trademark infringement counts

but rather the Non-Profits’ counterclaim for deceptive trade

practices under section 43(a) of the Lanham Act. Applying the

four injunction factors, the district court concluded that (1) the

Non-Profits had shown a likelihood of success on the merits

because promoting the Osceola, Iowa congress as including a

meeting of the board of directors of “Inner Peace Movement®”

was “likely to be a violation of the Lanham Act, 15 U.S.C.

§ 1125(a),” (2) “immediate and irreparable harm will be incurred

if [the Estate] or those in active concert with them continue to

interfere with the annual meeting of the board of directors of

Inner Peace Movement, Inc.,” (3) the Estate would not be

harmed by issuance of the TRO and (4) injunctive relief was in

the public interest. TRO 1-2. In making these determinations,

the court did not abuse its discretion. The potential for harm to

IPM in the absence of the TRO—the disruption of corporate

business resulting from confusion over the site of the official

IPM board meeting—was both significant and irreparable.

Further, the Non-Profits’ likelihood of success on their deceptive

trade practices counterclaim was substantial. Section 43(a) of

the Lanham Act imposes civil liability on any person who “uses

in commerce any word, term, name, symbol, or device, or any

combination thereof . . . which . . . is likely to cause confusion,

or to cause mistake, or to deceive as to the affiliation,

connection, or association of such person with another person, or

as to the origin, sponsorship, or approval of his or her goods,

services, or commercial activities by another person.” 15 U.S.C.

§ 1125(a)(1)(A). The Estate’s conduct in promoting the

competing “Inner Peace Movement” board meeting at least
13

arguably met the statutory criteria. Finally, the Estate was not

likely to be harmed by the TRO—except to the extent it was

prevented from deceiving persons into attending its own meeting

rather than IPM’s—and the public interest was served because

the deception was mitigated. Because the district court did not

abuse its discretion in issuing the TRO, we reject the Estate’s

challenge to the award of costs thereunder.

Because there remain disputed issues of fact regarding

whether Coll controlled the trademarks under the related

companies doctrine and in what capacity he registered the marks,

neither the Estate nor the Non-Profits are entitled to summary

judgment under Federal Rule of Civil Procedure 56. We

therefore reverse the district court’s March 25, 2004 order

insofar as it granted summary judgment to the Non-Profits on the

Estate’s two trademark claims (Counts I and II). For the same

reason, we affirm the order’s denial of the Estate’s partial

summary judgment motion on the two trademark claims. We

further affirm the district court’s June 27, 2001 temporary

restraining order imposing costs on the Estate because the district

court did not abuse its discretion therein. Finally, we remand to

the district court for further proceedings.

So ordered.