In the

United States Court of Appeals

For the Seventh Circuit ____________

No. 02-1381

TE-TA-MA TRUTH FOUNDATION—FAMILY OF URI, INC.,

Plaintiff-Appellant,

v.

WORLD CHURCH OF THE CREATOR,

Defendant-Appellee.

____________

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

No. 00 C 2638—Joan Humphrey Lefkow, Judge.

____________

ARGUED JUNE 4, 2002—DECIDED JULY 25, 2002

____________

Before COFFEY, EASTERBROOK, and WILLIAMS, Circuit

Judges.

EASTERBROOK, Circuit Judge. The “Church of the Creator” and the “World Church of the Creator” have irreconcilable creeds. The Church of the Creator (the operating

name of TE-TA-MA Truth Foundation—Family of URI,

Inc.) believes in universal love and respect. Its Sacred

Mandate reads:
2 No. 02-1381

CHURCH OF THE CREATOR®

Supports the Family Unification of Mankind

In All Aspects Of The Whole.

We of Like Mind Join Harmoniously In

Oneness, Knowing That There Is Only

One Creator-Source.

The Many In One Dedicate Our Physical

Embodiments To The God Expression

In Form, Bringing Forth By Example

To This Planet Earth

Love, Light and Peace.

Therefore, Once Decreeing

DIVINE RIGHT ORDER®

In All Thoughts – All Things, Our

Universe Automatically Aligns Into

Manifestation of Heaven On Earth.

Through The Priesthood of Melchizedek

We Are One In The Body Of Jesus Christ.

As Above So Below.

The Church’s web site <http://www.churchofthecreator.org>

provides additional details, including the text of the Divine

Right Order. World Church of the Creator, by contrast, does

not worship God but instead depicts the “white race” as the

“Creator” and calls for the elimination of Jews, blacks, and

what it labels “mud races.” Its slogan is: “Dedicated to the

Survival, Expansion, and Advancement of the White Race”.

The World Church of the Creator’s beliefs are explicated

more fully in Nature’s Eternal Religion, a book by its

founder, Ben Klassen, and on its web site <http://www.

wcotc.com>. The Church of the Creator is a recognized

religious charity. The World Church of the Creator, as a

racist group, is not entitled to that benefit, see Bob Jones

University v. United States, 461 U.S. 574 (1983), and has

had its charitable status revoked by both state and federal

governments. See Church of the Creator, Inc. v. CIR, 707

F.2d 491 (11th Cir. 1983); People ex rel. Ryan v. World
No. 02-1381 3

Church of the Creator, 198 Ill. 2d 115, 760 N.E.2d 953

(2001) (discussing related issues following the loss of state

tax-exempt status in 1995). (Note the change from “Church

of the Creator, Inc.” to “World Church of the Creator,” an

unincorporated association. This is apparently part of a

judgment-proofing strategy after a court held in 1994 that

Klassen’s organization must pay damages for orchestrating a murder. Mansfield v. Pierce, 1998 U.S. App. LEXIS

17086 (4th Cir. July 27, 1998), supplies details. Klassen

committed suicide in 1993, and Matt Hale became “Pontifex

Maximus” of the reconstituted organization in 1996.)

What has led to this litigation between the two organizations is the little ® symbol attached to Church of the

Creator. (To promote clarity, from now on we refer to the

Church of the Creator as “the Foundation” and the World

Church of the Creator as “the World Church.”) Klassen

founded and named his group in 1973, while the Foundation did not begin using “Church of the Creator” until 1982.

But the Foundation was first to take advantage of the

federal trademark-registration system, seeking protection

in 1987 for its name and symbol (a radiant dove centered on

a six-pointed star with a multi-colored background):
4 No. 02-1381

The Patent and Trademark Office (PTO) granted the Foundation’s application in 1988, though it required the Foundation to disclaim any right to the word “church.” See Trademark Registration No. 1,496,724. Five years passed, during

which Klassen’s group did not protest this registration. The

PTO then accepted and filed a declaration that the mark

had become incontestable under 15 U.S.C. §1065—which

means that it may be enforced, without proof of secondary

meaning, even if it is a descriptive name for the qualities or

characteristics of a good or service. See Park ’N Fly, Inc. v.

Dollar Park and Fly, Inc., 469 U.S. 189 (1985). When the

Foundation began to receive protests about its supposedly

racist creed—complaints demonstrating confusion between

the two groups—it set out to enforce its incontestable mark

by seeking an injunction against the World Church’s use of

what is obviously a confusingly similar name. The groups’

symbology differs, as the World Church’s banner shows:

But the Foundation’s mark includes the name as well as

the graphic presentation.

Although an incontestable mark may be enforced even if

it is descriptive, it is subject to cancellation if it is or

becomes generic. Section 1065, which sets out the rules for

incontestable marks, begins: “Except on a ground for which

application to cancel may be filed at any time under paragraphs (3) and (5) of section 1064 of this title”, and §1064(3)

permits cancellation “[a]t any time if the registered mark

becomes the generic name for the goods or services, or a

portion thereof, for which it is registered”. Thus as the

Court recognized in Park ’N Fly an incontestable mark does

not confer any rights to a phrase that was generic at the

outset or has become so through use. “A generic term is one
No. 02-1381 5

that refers to the genus of which the particular product is

a species.” 469 U.S. at 194. The World Church’s defense in

this suit is that “Church of the Creator” is generic: that it

names the genus of all monotheistic religions, of which

particular creeds such as Judaism, Christianity, and Islam

(and all their many subdivisions) are the species. The

Foundation replied with two procedural points: first, that

although generic status allows cancellation of a mark by

the PTO under §1064, it does not afford a defense while the

mark remains uncancelled; second, that incontestable

status provides at least a powerful presumption that the

mark is non-generic, a presumption that can be overcome

only by strong evidence of actual usage. The district judge

brushed aside both of these arguments and, relying exclusively on dictionary definitions of the word “creator,” entered summary judgment for the World Church. TE-TA-MA

Truth Foundation—Family of URI, Inc. v. World Church of

the Creator, 2002 U.S. Dist. LEXIS 1478 (N.D. Ill. Jan. 31,

2002).

On appeal the Foundation repeats its contention that the

PTO, rather than a court, is the proper forum for any contention that an incontestable mark is generic. This contention, which relies principally on 15 U.S.C. §1115(b) (“To the

extent that the right to use the registered mark has become

incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the

registered mark”), finds some support in the language of

Sovereign Order of St. John of Jerusalem, Inc. v. Grady, 119

F.3d 1236, 1240 (6th Cir. 1997), but not in the holding of

that or any other circuit—and it is untenable. Even if a

mark must be canceled before enforcement may be denied,

trademark law does not reserve the cancellation power to

the PTO. A court may cancel a mark itself or order the

agency to do so. 15 U.S.C. §1119. So even if the sequence

must be generic status to cancellation to nonenforcement,

a court can handle all of the stages. This means that the
6 No. 02-1381

generic nature of a mark may be a defense in litigation.

And if a court may order a mark canceled, an incontestable

registration is more like a bursting-bubble presumption of

non-generic-ness than like the sort of indomitable presumption that the Foundation seeks. Like the district court, then,

we proceed to ask whether “Church of the Creator” is

generic.

Unlike the district court, we conclude that this phrase is

descriptive rather than generic. Appellate review of a summary-judgment decision is plenary. Both sides moved for

summary judgment, so each was required to introduce

evidence to show that a material issue of disputed fact

remained for decision. Confronted with the Foundation’s

motion, the World Church produced—nothing but a dictionary. It did not offer any evidence about how religious

adherents use or understand the phrase as a unit. It offered

only lexicographers’ definitions of the individual words.

That won’t cut the mustard, because dictionaries reveal a

range of historical meanings rather than how people use a

particular phrase in contemporary culture. (Similarly, looking up the words “cut” and “mustard” would not reveal the

meaning of the phrase we just used.)

Contemporary usage does not treat “Church of the Creator” as the name for monotheistic religion—or any other

genus of religion. If it were, then the World Church itself

would be misusing the phrase, for it is not theistic in any

traditional sense and has nothing in common with Judaism,

Christianity, or Islam. The World Church’s web site, and

much of its literature, feature one international negation

symbol (a circle with a diagonal bar) superimposed over a

Star of David and another superimposed over a cross. It

condemns the Bible as a hoax.

A mark is “generic” when it has become the name of a

product (e.g., “sandwich” for meat between slices of bread)

or class of products (thus “church” is generic). But “Church
No. 02-1381 7

of the Creator” is descriptive, like “lite beer.” It does not

name the class of monotheistic religions. In the contemporary United States, variations on “Church of [Deity]” are

used to differentiate individual denominations, not to denote the class of all religions. The list is considerable:

Church of God; Church of God (Anderson, Indiana); First

Church of God; Worldwide Church of God (see Worldwide

Church of God v. Philadelphia Church of God, Inc., 227

F.3d 1110 (9th Cir. 2000)); Church of God in Christ; Assembly of God; Korean Assembly of God; Church of the

Nazarene; Church of Christ; United Church of Christ;

Disciples of Christ; Church of Christ, Scientist; Church of

Jesus Christ of Latter Day Saints. There is room for extension with Church of Our Savior, Church of the Holy

Spirit, Church of the Holy Trinity, Church of Jehovah, and

so on. Yet all of these are recognizable as denominational

names, not as the designation of the religion to which the

denominations belong. No Jewish, Islamic, Baha’i, or Unitarian group would say that it belongs to a “Church of the

Creator”; and a Christian congregation would classify itself

first into its denomination (e.g., Baptist, Lutheran, Russian

Orthodox, Society of Friends), then into one of the major

groupings (Roman Catholic, Orthodox, and Protestant), and

finally into Christianity, but never into a “Church of the

Creator.” No one called or emailed a Baptist church to

complain about its complicity in the hate-mongering of the

World Church of the Creator; people recognized the name

as denominational, and that’s why protests ended up in the

Church of the Creator’s in box.

What is more, as these lists show, using “Church of the

Creator” as a denominational name leaves ample options for

other sects to distinguish themselves and achieve separate identities. It is not remotely like one firm appropriating the word “sandwich” and thus disabling its rivals from

explaining to consumers what’s to eat. When the line between generic and descriptive terms is indistinct—as it is,
8 No. 02-1381

for example, with a phrase such as “liquid controls,” see

Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934

(7th Cir. 1986)—it is helpful to ask whether one firm’s

exclusive use of the phrase will prevent a rival from naming

itself and describing its product. (As far as the Lanham Act

is concerned, a denomination is a producer and religious

services and publications are products. Neither side has

questioned the application of trademark laws to religion.)

Because there are so many ways to describe religious

denominations, there is no risk that exclusive use of

“Church of the Creator” will appropriate a theology or

exclude essential means of differentiating one set of beliefs

from another.

The World Church has a fallback argument: that recognizing a trademark in “Church of the Creator” violates the

first amendment. Yet as San Francisco Arts & Athletics,

Inc. v. United States Olympic Committee, 483 U.S. 522

(1987), observed when rejecting a similar contention, the

Constitution itself authorizes Congress to create rights of

this kind. Cf. Harper & Row, Publishers, Inc. v. Nation

Enterprises, 471 U.S. 539 (1985). Trademark rights promote

the aims of the first amendment by enabling producers of

the spoken and written word to differentiate themselves. If

multiple businesses use the same (or confusingly similar)

names, the result is cacophony rather than discussion or

debate. If every candidate on the ballot ran under the same

name, this would do more to befuddle the voters than to

promote the candidates’ freedom of expression. Cf. Grimes

v. Smith, 585 F. Supp. 1084 (N.D. Ind. 1984), affirmed, 776

F.2d 1359 (7th Cir. 1985). It is questionable whether the

World Church is a religion (not all philosophical beliefs are

religious), but, if it is, still Congress need not exempt

religions from generally applicable laws. See Employment

Division v. Smith, 494 U.S. 872 (1990). The World Church

has every right to a distinctive name; it does not have
No. 02-1381 9

a constitutional right to use some other denomination’s

incontestable trademark.

By this time, a reader familiar with the Lanham Act may

have grown frustrated by our inattention to what must

seem the most obvious argument on behalf of the World

Church: prior use. Ben Klassen published Nature’s Eternal

Religion, and adopted the name “Church of the Creator,” in

1973, nine years before the Foundation began using that

phrase. Section 1065 provides that even incontestable

marks must yield to “a valid right acquired under the law

of any State or Territory by use of a mark or trade name

continuing from a date prior to the date of registration

under this chapter of such registered mark”. Yet the World

Church has not urged prior use as a defense, presumably

because of the reorganization designed to avoid paying the

judgment mentioned in this opinion’s opening paragraph.

The corporation that adopted the name “Church of the

Creator” in 1973 no longer exists; the organization “World

Church of the Creator” formed in 1996 is junior to the

Foundation. It turns out that tactics adopted to avoid paying for one’s wrongs have collateral costs.

The judgment of the district court is reversed, and the

case is remanded with instructions to enter an appropriate

judgment in favor of the Foundation.

A true Copy:

Teste: 

 ________________________________

Clerk of the United States Court of

Appeals for the Seventh Circuit 

USCA-97-C-006—7-25-02