We asked our attorney and webmaster, Scott Pilutik, to help us understand what’s going on with the “First Independent Church of Scientology” and its effort to get a trademark on its name. We reported recently that tax exempt status was granted to FICoS, which is made up of former Church of Scientology members who have broken away from it and want to practice Scientology’s processes independently. But forming a small non-profit is one thing, getting trademark of a name that includes the word “Scientology” is another. Scott helps us understand what’s going on.
Many years ago an attorney who represented the Church of Scientology’s intellectual property interests (and whom I’ll not name out of professional courtesy) told me in a moment of frankness that the one thing that kept him awake at night was the possibility of a court one day finding the trademarked term “Scientology” generic. He didn’t have to explain his fear. The commercially disastrous implications of a court finding any mark generic is well understood.
By definition a mark can only be deemed generic after it has become extremely famous and thus lucrative. This cause and effect is easier to see in the retail universe, where, for example, Bayer’s “Aspirin” had become so ubiquitous a headache remedy that consumers started using the term descriptively, and the term was soon found by a court to be generic. Bayer was a victim of its own success and suffered commercially when its competitors began to sell their own brands of “aspirin.”
Though trademark law is most often wielded by commercial entities, the primary purpose of trademark law is as a consumer benefit, to protect the public from becoming confused. The benefits of trademark law are accordingly extended to non-profits as well. If you accidentally donated to “Unisef” instead of “Unicef®” you’d be understandably pissed off. Similarly, religious entities are afforded trademark protection as well, and Scientology has taken full advantage of that.
Of course, if you’ve been following along you’re already quite aware that Scientology is only ostensibly religious and primarily commercial. Their interest in amassing a huge trademark portfolio isn’t to prevent consumer confusion, it’s to prevent competitors from muscling in on their con. And Scientology’s business side is structured in line with this precept–it can set egregious prices precisely because it can crush competition with the help of intellectual property lawyers. If Scientology processes were evaluated in a true religious marketplace, auditing prices might be forced way down. Yes, Scientology is also doing many things outside intellectual property law to discourage competition, but if its trademarks are found generic a key component of its business strategy would suddenly be outside its control. And this terrifies its lawyers.
I’ve been waiting for years for someone in the Independent community to show up and challenge the Scientology® mark, and that day finally arrived approximately one year ago, November 12, 2015, when owner James R. Fonda and attorney Raymond R. Tabandeh applied with the Patent and Trademark Office (PTO) for the mark “FIRST INDEPENDENT CHURCH OF SCIENTOLOGY” (Nov. 12, 2015, serial number 86817837).
Scientology reacted quickly, filing a Letter of Protest on Feb. 9, 2016, which letter unfortunately wasn’t uploaded by PTO, but reference was made to it.
A month later, on March 18, the PTO refused the application on the basis that (1) there existed a likelihood of confusion with a number of cited Scientology marks; and (2) the applied-for mark might “falsely suggest a connection with the religion or Church of Scientology.”
The First Independent Church of Scientology responded on September 19 with a pretty good set of arguments. With respect to the PTO’s refusal on the basis of likelihood of confusion, Tabandeh argued pretty convincingly that there was no potential confusion, or at least that the potential for consumer confusion was greatly reduced because the potential consumers were “sophisticated buyers,” i.e., “…professionals, celebrities, prominent business owners and educated individuals, who are more knowledgeable than ordinary consumers and thus will not be confused [….]”
Now some of you are undoubtedly snickering at the characterization of Scientology adherents as “sophisticated buyers” given the buyer’s remorse felt by so many ex-members, but realize that the test isn’t about Scientology’s intrinsic qualities but rather whether prospective members would be able to easily distinguish between Scientology and Independent Scientology. This would be a factual question and could be determined through surveys. Purchasing thousands of dollars of religious processing isn’t an “impulse buy,” typically, as much as the Scientology is geared around making it just that. (Don’t look on the Internet, whatever you do!)
And of course, the word “Independent” right there inside the mark goes a long way to helping consumers, sophisticated and otherwise, distinguish from the fully caffeinated Scientology flavor, as it literally means “not being subject to control, or affiliated with others.”
Finally, Tabandeh argues that the term “Scientology” has become generic and is thus no longer entitled to trademark protection, because (a) the Church of Scientology uses the term without the ® notice; and (b) Church of Scientology uses the term generically, suggesting, for instance, that it holds a definition: “knowing how to know,” and using it as an adjective (e.g., Scientology processing, Scientology beliefs and practices, Scientology newsroom). He argues that on Scientology’s website, visitors…
“…understand the terms Scientology and Scientologist refer to the genus of services for ‘Religious and Ministerial [and spiritual] Services,’ and not the specific services or goods provided by [the Independent Church of Scientology].”
The Electronic Frontier Foundation only last year interceded on behalf of a company called the “Mormon Mental Health Association” when its trademark was rejected along similar lines. Its argument, laid out in a December 15, 2015, letter from EFF attorney Vera Ranieri, ring perfectly true here:
…the term “Mormon” has an established original, descriptive, primary meaning and my client is free to use it in that sense.
MMHA does not use the term “Mormon” as a mark, but instead to refer to and describe the community it serves. There is no other term that MMHA can employ that would convey the same meaning.
The letter includes mention that the MMHA doesn’t endorse or agree with the views of the LDS Church, holder of the “Mormon” mark they’re alleged to have infringed, and that other non-LDS-affiliated organizations use the term.
Getting back to the FICOS, Tabandeh delivers the most intriguing argument toward the end as part of the genericism argument, one that will have the most appeal when (and hopefully if) it is appealed.
[T]o grant an exclusive right to registrant for use of the generic name of a religion would be equivalent to creating a monopoly in that particular religion, which is also against the First Amendment rights of free exercise of religion.
I would expand this argument to include not just the First Independent Church of Scientology’s free exercise rights, but also the the establishment clause, because here you have the PTO explicitly putting its finger on one side of the scale in what is essentially a religious conflict, by allowing the first comer to flourish commercially and placing an impossible, existence-prohibitive burden on its competitor. By the first amendment the government cannot prefer one religion to another and that’s exactly what the PTO is doing here, its presumed non-intent notwithstanding.
So where are things now? The PTO, while barely commenting on FICOS’s argument, denied its appeal on October 18. This means that FICOS has until December 18 to file for a rehearing, or until December 20 to file a civil action. [See update, below.]
— Scott Pilutik
UPDATE: It’s been brought to my attention that there is an error in my article regarding filing dates. Because the matter was only suspended, response deadlines are moot. My mistake, I apologize.
The same source that pointed out the aforementioned mistake also suggested another mistake of mine in alleging that “FICoS must obtain trademarks.” Since I didn’t actually say any such thing, I have nothing to apologize for. Of course FICoS can operate without obtaining the trademark and simply wait for the CoS to sue them for infringement, which lawsuit will arrive as sure as the rain. Good luck to the FICoS. — Scott
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Learn about Scientology with our numerous series with experts…
BLOGGING DIANETICS: We read Scientology’s founding text cover to cover with the help of L.A. attorney and former church member Vance Woodward
UP THE BRIDGE: Claire Headley and Bruce Hines train us as Scientologists
GETTING OUR ETHICS IN: Jefferson Hawkins explains Scientology’s system of justice
SCIENTOLOGY MYTHBUSTING: Historian Jon Atack discusses key Scientology concepts
Other links: Shelly Miscavige, ten years gone | The Lisa McPherson story told in real time | The Cathriona White stories | The Leah Remini ‘Knowledge Reports’ | Hear audio of a Scientology excommunication | Scientology’s little day care of horrors | Whatever happened to Steve Fishman? | Felony charges for Scientology’s drug rehab scam | Why Scientology digs bomb-proof vaults in the desert | PZ Myers reads L. Ron Hubbard’s “A History of Man” | Scientology’s Master Spies | Scientology’s Private Dancer | The mystery of the richest Scientologist and his wayward sons | Scientology’s shocking mistreatment of the mentally ill | Scientology boasts about assistance from Google | The Underground Bunker’s Official Theme Song | The Underground Bunker FAQ
Our Guide to Alex Gibney’s film ‘Going Clear,’ and our pages about its principal figures…
Jason Beghe | Tom DeVocht | Sara Goldberg | Paul Haggis | Mark “Marty” Rathbun | Mike Rinder | Spanky Taylor | Hana Whitfield