u/AtrademarkLawyer

Hello all. This is my second post into my analysis of the Mormon Stories Lawsuit. Click here to see my first post.

Today I will discuss the six factors juries consider when deciding if a plaintiff has proven that the defendant has used a trademark in a way that creates a “likelihood of confusion.” Today’s TL;DR: There are six factual inquiries the jury will make to determine if John has created a likelihood of confusion. The strength of the marks, the intent of the infringer, evidence related to confusion, the similarity of products and marketing, and the degree of care by purchasers.

The main issue in this trademark dispute is a determination of whether John’s use of “Mormon Stories” is likely to confuse the consuming public into believing that there is an affiliation or an association between his podcast and the Church. Courts across the country have set up various factual inquiries that judges and juries are supposed to evaluate to determine if there is a likelihood of confusion. If this case goes to trial, the jury will receive “jury instructions” telling them that there are six factors they should consider to decide if John’s use of “Mormon Stories” has created a likelihood of confusion. The court’s jury instruction would explain the law and tell the jury they need to evaluate all of the facts relevant to each factor. Because all of these factors are fact questions for a jury, all of you, as potential jurors, can undertake your own evaluation of the facts and evaluate how you might view them. Feel free to tell me how you would rule and why!

I will talk about each factor and try to explain them.

Strength of the Marks

This factor evaluates the strength or weakness of a trademark. Stronger trademarks are more enforceable. Weaker trademarks have less room for enforcement. This factor has 3 parts.

The first part is called “conceptual strength.” This has to do with how unique the trademark is compared to the services and goods being sold under the trademark. As I mentioned in my last post, a word like “apple,” if used by a business selling fruit, doesn’t have much conceptual strength, because it is clearly associated with the product being sold. However, the word “apple,” when used to describe computers, has significant conceptual strength because the word “apple” doesn’t have anything to do with computers.

In this case, the Church’s trademarks probably have varying degrees of conceptual strength. For example, many religions use some kind of Christ figure, but the Christus Symbol used by the Church seems to be fairly unique. Similarly, I don’t really know how often others have used Light-Rays, so that may or may not be unique. The trademarks on “Mormon” likely have varying degrees of conceptual strength. I think the “Mormon Tabernacle Choir” is probably a conceptually strong trademark, because it is unique in the context of musical groups. A mark like “Mormon Messages” is likely to be conceptually weak.

The second part is called “commercial strength.” This has to do with the “marketplace recognition value of the mark.” What this means is that if an entity owning trademarks spends a great deal of time and money promoting its trademarks, then their “conceptually weak” trademarks can become stronger trademarks over time because the trademark owner has spent lots of money promoting its marks. An example of such a trademark would be “American Airlines.” When American Airlines first started to do business, it had pretty weak trademark rights because the name of its airline was essentially the continent where it was providing services as an airline. However, over time, American Airlines has become an extremely strong brand because the company has spent enormous resources promoting and protecting its brand. Case law discussing this issue notes that trademarks which are “conceptually weak” can become strong over time as more and more consumers recognize the brand.

In this case, the Church will provide the jury with a lot of information concerning the time and money it has spent promoting and protecting its brands. The jury will have to decide how to evaluate this evidence and any contrary evidence offered by John.  

The final factor relating to the strength of the Church’s trademarks relates to third party use of similar trademarks. As I mentioned in my first post, there appear to be a lot of other people using the word “Mormon” in ways that might be found to undermine the Church’s trademark rights. I haven’t tried to find all such uses, but some of the ones I have found which seem pretty relevant would include “Mormon Leaks,” “Mormon Discussions,” “Radio-Free Mormon,” “Mormon Match,” and “Mormonish.” Trademark owners have a duty to “police” their brands and stop infringers. To the extent the Church has allowed third parties to use the word “Mormon” in trademarks, a jury might conclude that the Church has devalued the strength of its own trademarks.

Similarity of the Marks

The next factor evaluates the similarity between “Mormon Stories” and the trademarks owned by the Church. Case law on this point notes that juries evaluating this issue should consider the “sight,” “sound,” and “meaning” of each side’s marks. In this case, John’s use of “Mormon Stories” has the exact same sight and sound as the Church’s trademarks on “Book of Mormon Stories.” However, I think John can argue that the “meaning” of “Mormon Stories” is very different from “Book of Mormon Stories.” John is seeking information from people who have been or are Mormons and is providing them with a platform for telling their stories. In contrast, the trademark “Book of Mormon Stories” has a very different meaning. I assume these are books and videos describing the events and characters contained in the Book of Mormon. John’s trademark also seems to have a very different meaning from many of the other trademarks owned by the Church, such as “Book of Mormon,” Mormon Battalion” and “Mormon Handicraft.” However, John’s Mormon Stories trademark would appear to have a more similar meaning to “Mormon Messages” and “Mormon Channel.” However, John’s date if first use for “Mormon Stories” predates the Church’s date of first use for “Mormon Messages,” “Mormon Channel” and several other of the Church’s Mormon Marks. This raises interesting issues that will have to be resolved by the judge in this case. Among other things, the judge will have to decide if these later marks can be used by the Church at all, given that John’s rights might be superior to those of the Church.  

Intent of the Infringer

The next factor the jury will consider is the intent of the infringer. The focus, according to case law, is whether John “had the intent to derive benefit from the reputation or good will of plaintiff.” I assume that the Church is going to argue that John’s repeated use of copyrighted materials and his use of the Christus Symbol and Light-Rays Designs might show intent to take advantage of the good-will and reputation of the Church. The Church might also have other evidence of intent. I assume that part of John’s response might be that since 2018, the Church has asked people to not call it the “Mormon Church,” so he clearly has not had any recent intent to steal the brands of the Church. The jury will have to evaluate this evidence (and whatever the Church and John actually say) and decide who wins on intent.  

Evidence of Confusion

The next factor relates to evidence of confusion. This evidence can come from a variety of sources. The first type of evidence comes from survey experts. It is very common in trademark disputes for lawyers to retain survey experts to conduct consumer surveys to probe whether there has been confusion. Survey evidence can be powerful. Until we know what evidence exists on this point, it is impossible to evaluate it. If you want to know more about trademark surveys, ask and I will go into more depth.

Evidence of confusion can also come from testimony. In this case, the Church’s complete elimination of the word “Mormon” from all of their websites and speech allows John to argue that confusion has been minimized by the Church’s own efforts since at least 2018. I expect the Church will respond that it has consistently used all of its trademarks--just not as the name of the Church and John has tried to take advantage of that use.

Finally, evidence of “actual confusion” is also relevant. Paragraph 54 of the Complaint contains various statements which the Church claims are evidence of actual trademark confusion. However, I don’t think that all of the things the Church points to really count as trademark confusion. Take this as an example: “I've been watching the videos to do with Teal by this channel.. but I don’t understand; is this channel run by Mormons? Or ex Mormons? Or people who are Mormons but are against radical Mormons? Or they don’t like Mormons? I don’t mean to sound rude if it does, I just don’t understand”

Trademark confusion requires customers or potential customers to think that John is associated or affiliated with the trademark owner. That is the Church. The above person, however, clearly understands that the Church is not running John’s website. What confuses this particular person is whether the website is being run by current members of the Church or people who don’t belong to the Church anymore, or by Church members who don’t like radical Mormons. To my way of thinking, this doesn’t really count as trademark confusion. To the contrary, I think it shows that this writer is NOT confused in a trademark way but is confused about whether John is pro Church or anti Church.

Another example found in paragraph 54 notes that “this happened to me. I saw the channel and I thought it was from church members.” This statement is also not, in my mind, trademark confusion. My understanding is that there are tons of Church members with Podcasts competing with John for eyeballs and ears. None of these "church members" own the trademarks.

This kind of actual confusion evidence is likely going to be a key and heavily contested contention in this lawsuit. Feel free, as potential jurors, to read all of paragraph 54 of the complaint and decide how many of these people are actually confused in a way you think is relevant to a trademark dispute.   

Similarity of Products and Marketing

To explain this factor, let me go back to the example in my first post related to a hypothetical lawsuit between Apple and Fred over Fred’s store called “Fred’s Apple Store.” Fred would argue that consumers of his products (apples) are very different from those sold by Apple (computers). Fred would thus claim that this factor favors him because his products are very different from those of Apple. Fred would also claim that both companies use very different marketing methods and sell products to very different consumers.  

In cases involving the internet, these factors become more complicated because all internet products are only a few clicks away from each other. Marketing products on the internet are also often similar, as search engines (and now AI) help us find everything on the internet. As potential jurors, feel free to tell me who you think this factor favors.

I might also add that this might be another factor which could be influenced by the Church’s decision to not call itself the “Mormon Church.” What is the proper comparison of goods and services? Sales of the Book of Mormon and products and services offered under  brands such as “Mormon Batallion”, “Mormon Handicraft” and “Mormon Channel?” Or should the comparison be between John and any goods or services offered by the Church?

Degree of Care by Purchasers

Case law on this point notes that the lower the price of an object, the less care a purchaser makes before buying a product, leaving more room for confusion. In other words, if you are buying a car, you are less likely to be confused, because you do research before you buy. In contrast, if you buy a drink at the grocery store for $2.99, you are more likely to be confused.

This factor probably favors the Church because John’s product is free. However, if you want damages, you might need to evaluate this factor by looking at the consumers who paid money to John. My assumption is that a significant portion of John’s revenue comes from people who make donations, as opposed to revenue from advertising. In that case, the degree of care among donors might be higher.

Hope you found this interesting. If you have questions, I will try and answer them. I have one more post, which will cover John’s legal defenses.

Hello all. This is my second post into my analysis of the Mormon Stories Lawsuit. Click here if you want to read the first post.

Today I will discuss the six factors juries consider when deciding if a plaintiff has proven that the defendant has used a trademark in a way that creates a “likelihood of confusion.” Today’s TL;DR: There are six factual inquiries the jury will make to determine if John has created a likelihood of confusion. The strength of the marks, the intent of the infringer, evidence related to confusion, the similarity of products and marketing, and the degree of care by purchasers.

The main issue in this trademark dispute is a determination of whether John’s use of “Mormon Stories” is likely to confuse the consuming public into believing that there is an affiliation or an association between his podcast and the Church. Courts across the country have set up various factual inquiries that judges and juries are supposed to evaluate to determine if there is a likelihood of confusion. If this case goes to trial, the jury will receive “jury instructions” telling them that there are six factors they should consider to decide if John’s use of “Mormon Stories” has created a likelihood of confusion. The court’s jury instruction would explain the law and tell the jury they need to evaluate all of the facts relevant to each factor. Because all of these factors are fact questions for a jury, all of you, as potential jurors, can undertake your own evaluation of the facts and evaluate how you might view them. Feel free to tell me how you would rule and why!

I will talk about each factor and try to explain them.

Strength of the Marks

This factor evaluates the strength or weakness of a trademark. Stronger trademarks are more enforceable. Weaker trademarks have less room for enforcement. This factor has 3 parts.

The first part is called “conceptual strength.” This has to do with how unique the trademark is compared to the services and goods being sold under the trademark. As I mentioned in my last post, a word like “apple,” if used by a business selling fruit, doesn’t have much conceptual strength, because it is clearly associated with the product being sold. However, the word “apple,” when used to describe computers, has significant conceptual strength because the word “apple” doesn’t have anything to do with computers.

In this case, the Church’s trademarks probably have varying degrees of conceptual strength. For example, many religions use some kind of Christ figure, but the Christus Symbol used by the Church seems to be fairly unique. Similarly, I don’t really know how often others have used Light-Rays, so that may or may not be unique. The trademarks on “Mormon” likely have varying degrees of conceptual strength. I think the “Mormon Tabernacle Choir” is probably a conceptually strong trademark, because it is unique in the context of musical groups. A mark like “Mormon Messages” is likely to be conceptually weak.

The second part is called “commercial strength.” This has to do with the “marketplace recognition value of the mark.” What this means is that if an entity owning trademarks spends a great deal of time and money promoting its trademarks, then their “conceptually weak” trademarks can become stronger trademarks over time because the trademark owner has spent lots of money promoting its marks. An example of such a trademark would be “American Airlines.” When American Airlines first started to do business, it had pretty weak trademark rights because the name of its airline was essentially the continent where it was providing services as an airline. However, over time, American Airlines has become an extremely strong brand because the company has spent enormous resources promoting and protecting its brand. Case law discussing this issue notes that trademarks which are “conceptually weak” can become strong over time as more and more consumers recognize the brand.

In this case, the Church will provide the jury with a lot of information concerning the time and money it has spent promoting and protecting its brands. The jury will have to decide how to evaluate this evidence and any contrary evidence offered by John.  

The final factor relating to the strength of the Church’s trademarks relates to third party use of similar trademarks. As I mentioned in my first post, there appear to be a lot of other people using the word “Mormon” in ways that might be found to undermine the Church’s trademark rights. I haven’t tried to find all such uses, but some of the ones I have found which seem pretty relevant would include “Mormon Leaks,” “Mormon Discussions,” “Radio-Free Mormon,” “Mormon Match,” and “Mormonish.” Trademark owners have a duty to “police” their brands and stop infringers. To the extent the Church has allowed third parties to use the word “Mormon” in trademarks, a jury might conclude that the Church has devalued the strength of its own trademarks.

Similarity of the Marks

The next factor evaluates the similarity between “Mormon Stories” and the trademarks owned by the Church. Case law on this point notes that juries evaluating this issue should consider the “sight,” “sound,” and “meaning” of each side’s marks. In this case, John’s use of “Mormon Stories” has the exact same sight and sound as the Church’s trademarks on “Book of Mormon Stories.” However, I think John can argue that the “meaning” of “Mormon Stories” is very different from “Book of Mormon Stories.” John is seeking information from people who have been or are Mormons and is providing them with a platform for telling their stories. In contrast, the trademark “Book of Mormon Stories” has a very different meaning. I assume these are books and videos describing the events and characters contained in the Book of Mormon. John’s trademark also seems to have a very different meaning from many of the other trademarks owned by the Church, such as “Book of Mormon,” Mormon Battalion” and “Mormon Handicraft.” However, John’s Mormon Stories trademark would appear to have a more similar meaning to “Mormon Messages” and “Mormon Channel.” However, John’s date if first use for “Mormon Stories” predates the Church’s date of first use for “Mormon Messages,” “Mormon Channel” and several other of the Church’s Mormon Marks. This raises interesting issues that will have to be resolved by the judge in this case. Among other things, the judge will have to decide if these later marks can be used by the Church at all, given that John’s rights might be superior to those of the Church.  

Intent of the Infringer

The next factor the jury will consider is the intent of the infringer. The focus, according to case law, is whether John “had the intent to derive benefit from the reputation or good will of plaintiff.” I assume that the Church is going to argue that John’s repeated use of copyrighted materials and his use of the Christus Symbol and Light-Rays Designs might show intent to take advantage of the good-will and reputation of the Church. The Church might also have other evidence of intent. I assume that part of John’s response might be that since 2018, the Church has asked people to not call it the “Mormon Church,” so he clearly has not had any recent intent to steal the brands of the Church. The jury will have to evaluate this evidence (and whatever the Church and John actually say) and decide who wins on intent.  

Evidence of Confusion

The next factor relates to evidence of confusion. This evidence can come from a variety of sources. The first type of evidence comes from survey experts. It is very common in trademark disputes for lawyers to retain survey experts to conduct consumer surveys to probe whether there has been confusion. Survey evidence can be powerful. Until we know what evidence exists on this point, it is impossible to evaluate it. If you want to know more about trademark surveys, ask and I will go into more depth.

Evidence of confusion can also come from testimony. In this case, the Church’s complete elimination of the word “Mormon” from all of their websites and speech allows John to argue that confusion has been minimized by the Church’s own efforts since at least 2018. I expect the Church will respond that it has consistently used all of its trademarks--just not as the name of the Church and John has tried to take advantage of that use.

Finally, evidence of “actual confusion” is also relevant. Paragraph 54 of the Complaint contains various statements which the Church claims are evidence of actual trademark confusion. However, I don’t think that all of the things the Church points to really count as trademark confusion. Take this as an example: “I've been watching the videos to do with Teal by this channel.. but I don’t understand; is this channel run by Mormons? Or ex Mormons? Or people who are Mormons but are against radical Mormons? Or they don’t like Mormons? I don’t mean to sound rude if it does, I just don’t understand”

Trademark confusion requires customers or potential customers to think that John is associated or affiliated with the trademark owner. That is the Church. The above person, however, clearly understands that the Church is not running John’s website. What confuses this particular person is whether the website is being run by current members of the Church or people who don’t belong to the Church anymore, or by Church members who don’t like radical Mormons. To my way of thinking, this doesn’t really count as trademark confusion. To the contrary, I think it shows that this writer is NOT confused in a trademark way but is confused about whether John is pro Church or anti Church.

Another example found in paragraph 54 notes that “this happened to me. I saw the channel and I thought it was from church members.” This statement is also not, in my mind, trademark confusion. My understanding is that there are tons of Church members with Podcasts competing with John for eyeballs and ears. None of these "church members" own the trademarks.

This kind of actual confusion evidence is likely going to be a key and heavily contested contention in this lawsuit. Feel free, as potential jurors, to read all of paragraph 54 of the complaint and decide how many of these people are actually confused in a way you think is relevant to a trademark dispute.   

Similarity of Products and Marketing

To explain this factor, let me go back to the example in my first post related to a hypothetical lawsuit between Apple and Fred over Fred’s store called “Fred’s Apple Store.” Fred would argue that consumers of his products (apples) are very different from those sold by Apple (computers). Fred would thus claim that this factor favors him because his products are very different from those of Apple. Fred would also claim that both companies use very different marketing methods and sell products to very different consumers.  

In cases involving the internet, these factors become more complicated because all internet products are only a few clicks away from each other. Marketing products on the internet are also often similar, as search engines (and now AI) help us find everything on the internet. As potential jurors, feel free to tell me who you think this factor favors.

I might also add that this might be another factor which could be influenced by the Church’s decision to not call itself the “Mormon Church.” What is the proper comparison of goods and services? Sales of the Book of Mormon and products and services offered under  brands such as “Mormon Batallion”, “Mormon Handicraft” and “Mormon Channel?” Or should the comparison be between John and any goods or services offered by the Church?

Degree of Care by Purchasers

Case law on this point notes that the lower the price of an object, the less care a purchaser makes before buying a product, leaving more room for confusion. In other words, if you are buying a car, you are less likely to be confused, because you do research before you buy. In contrast, if you buy a drink at the grocery store for $2.99, you are more likely to be confused.

This factor probably favors the Church because John’s product is free. However, if you want damages, you might need to evaluate this factor by looking at the consumers who paid money to John. My assumption is that a significant portion of John’s revenue comes from people who make donations, as opposed to revenue from advertising. In that case, the degree of care among donors might be higher.

Hope you found this interesting. If you have questions, I will try and answer them. I have one more post, which will cover John’s legal defenses.

 

Hi all,

I posted the below on the Exmormon subreddit earlier today. I have been asked to post it here as well. Hope you find this of interest.

I am a Salt Lake City-based lawyer with a legal practice that is heavily focused on trademark infringement litigation. I would guess that in my 30 plus years of experience I have been involved in well over 100 trademark cases. I thought you all might be interested in a deep dive into the Mormon Stories lawsuit, from my perspective. I am also happy to host an AMA if any of you want to ask me questions about any of the below. I can provide proof of identity to the moderators, if needed.

My goal is to provide an even-handed analysis that will allow you all to draw your own conclusions regarding the merits of this dispute.

When lawyers file pleadings with courts, they usually refer to the parties by short names, so it is easy to know who is who. Consistent with that, I will plan to call the plaintiffs the “Church.” I will refer to the defendants as “John” in reference to John Dehlin. I know these names may not be consistent with other references to one of these entities on this subreddit, but I think it will be the easiest way to sort through the facts and law relevant to this dispute. I will also refer to various paragraphs in the Complaint filed by the Church. Here is a link to the Complaint.

I plan to file three different posts about this lawsuit. This post will cover trademark basics and what I learned from reviewing public trademark files. The next post, which I will file in a few days, will discuss the six factors juries must consider when they evaluate whether there is a “likelihood of confusion.” The final post will discuss the various defenses that the law provides to defendants like John Dehlin.

TL;DR for today’s post: The Church owns almost all of the federally registered trademarks using the word “Mormon.” Normally that would suggest very strong trademark rights, but that might not be the case for reasons discussed below.

Trademark Basics

A trademark is a word or symbol that has come to be associated with and is used to identify a business. If I mention the phrase “golden arches,” most of you are going to think of hamburgers because the owner of that trademarked symbol has spent hundreds of millions of dollars marketing and promoting its brand. All of McDonalds’ promotional activities have taken something that used to be meaningless and made it into a brand of immense value. The golden arches and the name McDonalds are both great examples of trademarks.

There are some words and phrases, called “generic” words and phrases, that cannot be trademarked by themselves. An example would be the word “apple.” You can obtain a trademark on the word “apple” if you sell computers, but if all you sell are apples, then it would be unfair to provide you with a trademark on the word “apple” because it is a “generic” word that everyone who sells apples needs to be able to use.

However, Jenny might be able to get a trademark on “Jenny’s Apple Emporium,” even if Jenny only sells apple-based products, because there is a distinction between the word “apple” and the whole of Jenny’s trademark. However, in such circumstances, Jenny likely has weak trademark rights and might not be able to prevent a competitor from opening a store called "Fred’s Apple Wholesaler" because both companies can use the generic term “apple” to let customers know that is what they are selling.

In contrast, if Fred wanted to call his store “Fred’s Apple Store," Jenny probably could not stop him, but Fred might face litigation from the Apple computer company, because that brand has enormous value and brand recognition, and a court might prevent even an apple selling store from calling itself something so similar to "The Apple Store" because of all the previous good will and brand recognition of the Apple Corporation. This is an important issue in this case. And the way the courts view the word “Mormon” will matter a great deal. We will talk about it more in a minute.

There are two different kinds of trademarks that are relevant to this dispute. The first are what are called “common law trademarks,” and next are what are called “registered trademarks.” Let me explain what these terms mean.

 Common Law Trademarks

A trademark owner acquires rights in its trademarks by using them to provide goods or services to customers. These trademarks develop based on usage and are often called “common law” trademarks because they developed under case law and not statute-based law.

Federally Registered Trademarks

If a trademark owner wants enhanced rights in its trademarks, it can file trademark applications with a branch of the U.S. government called the United States Patent and Trademark Office. I am going to call these people the “Trademark Office.” In its federal trademark application, the trademark owner must identify the types of goods and services for which its trademark will be used. This is because different trademark owners can use the same word to describe different kinds of products. For example, Delta Airlines and Delta Faucets both coexist without confusion because of the very different nature of the products and services offered by each company.

The trademark owner must also identify their “date of first use” in the trademark application. This is because trademark use gives a trademark owner priority over other people who have a later date of first use.

Before a trademark application is approved by the Trademark Office, the application goes through a process where a “trademark examiner” employed by the Trademark Office evaluates the trademark. The trademark examiner compares the trademark to other trademarks already registered and makes determinations about whether the owner of the trademark should be granted a federally registered trademark.

The entire trademark examination process is public. Trademark lawyers call this process a trademark’s “prosecution history.” The prosecution history of every trademark is found on uspto.gov, in the file related to that particular trademark. I discuss some of these files below.

Because federally registered trademarks go through this rigorous application process, the law tells courts that federally registered trademarks have a “presumption of validity.”

The Church’s Trademarks

In this case, the Church has identified 16 different trademarks which it thinks are relevant to this dispute. The Church claims to have both common law and federally registered trademark rights in all of these trademarks. All of these trademarks are mentioned in paragraph 28 of the Complaint. One of the trademarks is on the word “Mormon.” This trademark is for “educational services” that are related to “the fields of history and religion.” The Complaint also mentions 12 additional trademarks that use the word “Mormon.” In the Complaint, the Church refers collectively to all of its “Mormon” trademarks as a “family of marks.” See paragraph 19.

Under the law, having a “family of trademarks” provides the Church with the ability to accuse infringers of using all of these different trademarks, or parts of them, in any infringement lawsuit. In other words, the Church claims John is infringing one or all of these Mormon Marks. However, in order to have a family of marks, the “purchasing public” has to be under the impression that all uses of the family come from the same source. As examples, “Mc”, for hamburgers and “i” for computer products are part of two well-known families of trademarks. Most consumers know that “Mc” relates to McDonalds and iPhones and iPads come from Apple. The question in this case is going to be if the consuming public understands that all trademark uses of “Mormon” come from a single source. In trademark cases, evidence on this point usually comes from survey evidence, but it could also come from evidence relating to extensive use of the word “Mormon” by people and entities not affiliated with the Church.

In addition to the Mormon Marks, the Church also identifies two trademarks on its use of the “Christus Symbol” statue and one trademark for what it calls the “Light-Rays Design Mark.” See ¶ 28. According to the Complaint, John has apparently used the Christus Symbol and the Light-Rays Design Mark, in addition to the Mormon Marks.

The History of the Mormon Trademark Family

There is a lot of publicly available information related to federally registered trademarks. You can find this information at uspto.gov. If you want to know more about the Church’s trademark portfolio, go to uspto.gov, click on “trademarks,” and then click on “search trademarks.” Here is a link to the search page.

When I searched this database the other day, there appeared to be 89 trademark applications that had been filed and contained the word “Mormon.” Most of those applications are no longer valid and are identified as “dead” in this database. It appears that the Church owns almost all of the “live” trademarks making use of the word “Mormon.” In fact, I think there are only three marks using the word Mormon that are not owned by the Church. These are trademarks are for “Jack Mormon,” “Mormon Whiskey,” and “Mormon Women for Ethical Government.”

My review of the Church’s efforts to obtain trademark rights has revealed a really fascinating story. That story starts in September of 2002, when the Church filed a trademark application seeking to trademark the word “Mormon” for “religious services, namely, operating places of assembly for worship and gatherings; ministerial services, namely providing religious worship services and conducting church sponsored programs.”

The prosecution history for this trademark is located in the uspto.gov database I mention above. The prosecution history files I discuss next are located in the “dead” trademark the Church filed on the word “Mormon.” Scroll down until you find the heading: Prosecution history and documents.

In an “office action” dated November 24, 2003, a trademark examiner told the Church that “There is no trademark or service mark for ‘CHRISTIANITY,’ ‘JUDAISM,’ ‘PROTESTANT,’ ‘METHODIST,’ ‘PRESBYTERIAN,’ or ‘EPISCOPALIAN’ for providing religious worship services and church-related social programs and philanthropies.” The trademark examiner attached a printout showing that such marks are not allowed and then noted that “there is not even a pending application bearing the name of a religion. This is not for lack of gumption in applying for such a mark but rather the acknowledgement that such a mark would be unregistrable as generic for religious services. None of the widely accepted names for religions or sects of religions would be perceived as a trademark for providing worship services or church-related social services.”

After that office action was received, the Church continued to fight for a while trying to obtain a trademark on “Mormon” for religious services. However, the Church eventually gave up and instead filed a continuation application seeking instead to obtain a trademark on the word “Mormon” for “educational services” in the fields of “history and religion.” That trademark was eventually granted and is the only trademark the Church presently owns on the single word “Mormon.”

These findings could become very important to this case. It seems clear that the Trademark Office thinks the word “Mormon” is “generic” if you are talking about “religious services,” just like the word “apple” is generic when you are talking about fruit. It also means that the word “Mormon,” when used for something adjacent to religious services, like “educational services” relating to “history and religion" can be a trademark.

These are interesting issues that will be developed as this case continues. And I should note that the judge assigned to this case is not bound by what the Trademark Office has decided and could decide this issue differently.

The next thing I learned from my review of the Trademark Office’s files is that in 2024, the Church started the process of registering trademarks that seem related to a decision to sue John for trademark infringement.

In August of 2024, Church filed two trademark applications on “Book of Mormon Stories.” If you want to sue John, it would be great to turn your common law trademark rights on "Book of Mormon Stories” into federally registered trademarks. This is because John’s use of “Mormon Stories” falls completely within your trademark. Those trademark applications were filed by the same trademark lawyers that are representing the Church in this lawsuit. And it appears that prior to 2024, the Church used different trademark lawyers. The Church’s current trademark lawyers also filed a trademark application on “Mormon Battalion” in 2024 and on “Book of Mormon Videos” in that same timeframe. These filings suggest to me that the Church’s efforts to bring this lawsuit probably started sometime in 2024 and they retained new lawyers to help with these efforts.

I should add, however, that there is nothing wrong with what the Church has done. Almost every trademark lawyer is going to advise their client that it is a good idea to turn common law trademarks into registered trademarks before you start to enforce your trademark rights.

Next, it also appears that the Church has at least sometimes used procedures available in the Trademark Mark Office to prevent various trademark applicants from obtaining federally registered trademarks on marks using the word “Mormon.” Some of the applicants who tried to obtain federal registrations and then stopped the process include names many of you might recognize, including “Mormon Leaks,” “Bad Mormon,” “Mormon Discussions,” “Radio-Free Mormon,” and “Mormonish.” With respect to at least some of the “dead” registrations which use the word “Mormon,” it appears the Church has used processes available to trademark owners to try and prevent others from obtaining federally registered trademarks. I have not looked into this issue extensively, but it will likely be something John's lawyers will want to evaluate.  

One interesting thing about this is that even though all of the above trademark applicants have “dead” federal trademark registrations, all of them appear to continue to use their “common law” trademarks rights to provide goods and services to the American public. They thus have continued “common law” rights in their trademarks but have chosen to not federally register their rights. As we will discuss in my next post, many of these common law rights could be very relevant to this lawsuit.

The final thing of interest that I learned from looking at these trademark files is that John actually has a “date of first use” for “Mormon Stories” that predates the date of first use for many of the marks in the Church’s “Family of Marks.” According to the Complaint, John started using “Mormon Stories” in 2005. However, the date of first use for many of the Church’s trademarks is later than that. For example, in the trademark files I looked at, the date of first use for “Mormon Messages” and “Mormon Channel” is 2009. Similarly, the date of first use for “Book of Mormon Videos” is 2019. Many, but not all, of the first use dates for “Mormon Battalion” are also later than John’s first use date.

This creates some interesting legal issues that the judge in this case will need to resolve. First, John’s prior use of “Mormon Stories” might impact the Church’s claim that it has a family of trademarks. All of the above uses of Mormon, such as “Mormon Discussions” also impacts the Church’s claim that it has a family of trademarks. If several of McDonalds competitors start using “Mc” to sell products, and McDonalds hasn’t stopped these uses, a court might find that McDonalds no longer has a family of trademarks on “Mc.” 

Second, John’s prior use of Mormon Stories and all of the other prior uses noted above, might allow John to file a counterclaim seeking to invalidate at least some of the Church’s family of trademarks because John’s rights and these other trademark rights holders have superior rights that predate the Church’s use of its later trademarks.    

That is all for today! If you have questions, I will try to answer them.

I am a Salt Lake City-based lawyer with a legal practice that is heavily focused on trademark infringement litigation. I would guess that in my 30 plus years of experience I have been involved in well over 100 trademark cases. I thought you all might be interested in a deep dive into the Mormon Stories lawsuit, from my perspective. I am also happy to host an AMA if any of you want to ask me questions about any of the below. I can provide proof of identity to the moderators, if needed.

My goal is to provide an even-handed analysis that will allow you all to draw your own conclusions regarding the merits of this dispute.

When lawyers file pleadings with courts, they usually refer to the parties by short names, so it is easy to know who is who. Consistent with that, I will plan to call the plaintiffs the “Church.” I will refer to the defendants as “John” in reference to John Dehlin. I know these names may not be consistent with other references to one of these entities on this subreddit, but I think it will be the easiest way to sort through the facts and law relevant to this dispute. I will also refer to various paragraphs in the Complaint filed by the Church. Here is a link to the Complaint.

I plan to file three different posts about this lawsuit. This post will cover trademark basics and what I learned from reviewing public trademark files. The next post, which I will file in a few days, will discuss the six factors juries must consider when they evaluate whether there is a “likelihood of confusion.” The final post will discuss the various defenses that the law provides to defendants like John Dehlin.

TL;DR for today’s post: The Church owns almost all of the federally registered trademarks using the word “Mormon.” Normally that would suggest very strong trademark rights, but that might not be the case for reasons discussed below.

Trademark Basics

A trademark is a word or symbol that has come to be associated with and is used to identify a business. If I mention the phrase “golden arches,” most of you are going to think of hamburgers because the owner of that trademarked symbol has spent hundreds of millions of dollars marketing and promoting its brand. All of McDonalds’ promotional activities have taken something that used to be meaningless and made it into a brand of immense value. The golden arches and the name McDonalds are both great examples of trademarks.

There are some words and phrases, called “generic” words and phrases, that cannot be trademarked by themselves. An example would be the word “apple.” You can obtain a trademark on the word “apple” if you sell computers, but if all you sell are apples, then it would be unfair to provide you with a trademark on the word “apple” because it is a “generic” word that everyone who sells apples needs to be able to use.

However, Jenny might be able to get a trademark on “Jenny’s Apple Emporium,” even if Jenny only sells apple-based products, because there is a distinction between the word “apple” and the whole of Jenny’s trademark. However, in such circumstances, Jenny likely has weak trademark rights and might not be able to prevent a competitor from opening a store called "Fred’s Apple Wholesaler" because both companies can use the generic term “apple” to let customers know that is what they are selling.

In contrast, if Fred wanted to call his store “Fred’s Apple Store," Jenny probably could not stop him, but Fred might face litigation from the Apple computer company, because that brand has enormous value and brand recognition, and a court might prevent even an apple selling store from calling itself something so similar to "The Apple Store" because of all the previous good will and brand recognition of the Apple Corporation. This is an important issue in this case. And the way the courts view the word “Mormon” will matter a great deal. We will talk about it more in a minute.

There are two different kinds of trademarks that are relevant to this dispute. The first are what are called “common law trademarks,” and next are what are called “registered trademarks.” Let me explain what these terms mean.

 Common Law Trademarks

A trademark owner acquires rights in its trademarks by using them to provide goods or services to customers. These trademarks develop based on usage and are often called “common law” trademarks because they developed under case law and not statute-based law.

Federally Registered Trademarks

If a trademark owner wants enhanced rights in its trademarks, it can file trademark applications with a branch of the U.S. government called the United States Patent and Trademark Office. I am going to call these people the “Trademark Office.” In its federal trademark application, the trademark owner must identify the types of goods and services for which its trademark will be used. This is because different trademark owners can use the same word to describe different kinds of products. For example, Delta Airlines and Delta Faucets both coexist without confusion because of the very different nature of the products and services offered by each company.

The trademark owner must also identify their “date of first use” in the trademark application. This is because trademark use gives a trademark owner priority over other people who have a later date of first use.

Before a trademark application is approved by the Trademark Office, the application goes through a process where a “trademark examiner” employed by the Trademark Office evaluates the trademark. The trademark examiner compares the trademark to other trademarks already registered and makes determinations about whether the owner of the trademark should be granted a federally registered trademark.

The entire trademark examination process is public. Trademark lawyers call this process a trademark’s “prosecution history.” The prosecution history of every trademark is found on uspto.gov, in the file related to that particular trademark. I discuss some of these files below.

Because federally registered trademarks go through this rigorous application process, the law tells courts that federally registered trademarks have a “presumption of validity.”

The Church’s Trademarks

In this case, the Church has identified 16 different trademarks which it thinks are relevant to this dispute. The Church claims to have both common law and federally registered trademark rights in all of these trademarks. All of these trademarks are mentioned in paragraph 28 of the Complaint. One of the trademarks is on the word “Mormon.” This trademark is for “educational services” that are related to “the fields of history and religion.” The Complaint also mentions 12 additional trademarks that use the word “Mormon.” In the Complaint, the Church refers collectively to all of its “Mormon” trademarks as a “family of marks.” See paragraph 19.

Under the law, having a “family of trademarks” provides the Church with the ability to accuse infringers of using all of these different trademarks, or parts of them, in any infringement lawsuit. In other words, the Church claims John is infringing one or all of these Mormon Marks. However, in order to have a family of marks, the “purchasing public” has to be under the impression that all uses of the family come from the same source. As examples, “Mc”, for hamburgers and “i” for computer products are part of two well-known families of trademarks. Most consumers know that “Mc” relates to McDonalds and iPhones and iPads come from Apple. The question in this case is going to be if the consuming public understands that all trademark uses of “Mormon” come from a single source. In trademark cases, evidence on this point usually comes from survey evidence, but it could also come from evidence relating to extensive use of the word “Mormon” by people and entities not affiliated with the Church.

In addition to the Mormon Marks, the Church also identifies two trademarks on its use of the “Christus Symbol” statue and one trademark for what it calls the “Light-Rays Design Mark.” See ¶ 28. According to the Complaint, John has apparently used the Christus Symbol and the Light-Rays Design Mark, in addition to the Mormon Marks.

The History of the Mormon Trademark Family

There is a lot of publicly available information related to federally registered trademarks. You can find this information at uspto.gov. If you want to know more about the Church’s trademark portfolio, go to uspto.gov, click on “trademarks,” and then click on “search trademarks.” Here is a link to the search page.

When I searched this database the other day, there appeared to be 89 trademark applications that had been filed and contained the word “Mormon.” Most of those applications are no longer valid and are identified as “dead” in this database. It appears that the Church owns almost all of the “live” trademarks making use of the word “Mormon.” In fact, I think there are only three marks using the word Mormon that are not owned by the Church. These are trademarks are for “Jack Mormon,” “Mormon Whiskey,” and “Mormon Women for Ethical Government.”

My review of the Church’s efforts to obtain trademark rights has revealed a really fascinating story. That story starts in September of 2002, when the Church filed a trademark application seeking to trademark the word “Mormon” for “religious services, namely, operating places of assembly for worship and gatherings; ministerial services, namely providing religious worship services and conducting church sponsored programs.”

The prosecution history for this trademark is located in the uspto.gov database I mention above. The prosecution history files I discuss next are located in the “dead” trademark the Church filed on the word “Mormon.” Scroll down until you find the heading: Prosecution history and documents.

In an “office action” dated November 24, 2003, a trademark examiner told the Church that “There is no trademark or service mark for ‘CHRISTIANITY,’ ‘JUDAISM,’ ‘PROTESTANT,’ ‘METHODIST,’ ‘PRESBYTERIAN,’ or ‘EPISCOPALIAN’ for providing religious worship services and church-related social programs and philanthropies.” The trademark examiner attached a printout showing that such marks are not allowed and then noted that “there is not even a pending application bearing the name of a religion. This is not for lack of gumption in applying for such a mark but rather the acknowledgement that such a mark would be unregistrable as generic for religious services. None of the widely accepted names for religions or sects of religions would be perceived as a trademark for providing worship services or church-related social services.”

After that office action was received, the Church continued to fight for a while trying to obtain a trademark on “Mormon” for religious services. However, the Church eventually gave up and instead filed a continuation application seeking instead to obtain a trademark on the word “Mormon” for “educational services” in the fields of “history and religion.” That trademark was eventually granted and is the only trademark the Church presently owns on the single word “Mormon.”

These findings could become very important to this case. It seems clear that the Trademark Office thinks the word “Mormon” is “generic” if you are talking about “religious services,” just like the word “apple” is generic when you are talking about fruit. It also means that the word “Mormon,” when used for something adjacent to religious services, like “educational services” relating to “history and religion" can be a trademark.

These are interesting issues that will be developed as this case continues. And I should note that the judge assigned to this case is not bound by what the Trademark Office has decided and could decide this issue differently.

The next thing I learned from my review of the Trademark Office’s files is that in 2024, the Church started the process of registering trademarks that seem related to a decision to sue John for trademark infringement.

In August of 2024, Church filed two trademark applications on “Book of Mormon Stories.” If you want to sue John, it would be great to turn your common law trademark rights on "Book of Mormon Stories” into federally registered trademarks. This is because John’s use of “Mormon Stories” falls completely within your trademark. Those trademark applications were filed by the same trademark lawyers that are representing the Church in this lawsuit. And it appears that prior to 2024, the Church used different trademark lawyers. The Church’s current trademark lawyers also filed a trademark application on “Mormon Battalion” in 2024 and on “Book of Mormon Videos” in that same timeframe. These filings suggest to me that the Church’s efforts to bring this lawsuit probably started sometime in 2024 and they retained new lawyers to help with these efforts.

I should add, however, that there is nothing wrong with what the Church has done. Almost every trademark lawyer is going to advise their client that it is a good idea to turn common law trademarks into registered trademarks before you start to enforce your trademark rights.

Next, it also appears that the Church has at least sometimes used procedures available in the Trademark Mark Office to prevent various trademark applicants from obtaining federally registered trademarks on marks using the word “Mormon.” Some of the applicants who tried to obtain federal registrations and then stopped the process include names many of you might recognize, including “Mormon Leaks,” “Bad Mormon,” “Mormon Discussions,” “Radio-Free Mormon,” and “Mormonish.” With respect to at least some of the “dead” registrations which use the word “Mormon,” it appears the Church has used processes available to trademark owners to try and prevent others from obtaining federally registered trademarks. I have not looked into this issue extensively, but it will likely be something John's lawyers will want to evaluate.  

One interesting thing about this is that even though all of the above trademark applicants have “dead” federal trademark registrations, all of them appear to continue to use their “common law” trademarks rights to provide goods and services to the American public. They thus have continued “common law” rights in their trademarks but have chosen to not federally register their rights. As we will discuss in my next post, many of these common law rights could be very relevant to this lawsuit.

The final thing of interest that I learned from looking at these trademark files is that John actually has a “date of first use” for “Mormon Stories” that predates the date of first use for many of the marks in the Church’s “Family of Marks.” According to the Complaint, John started using “Mormon Stories” in 2005. However, the date of first use for many of the Church’s trademarks is later than that. For example, in the trademark files I looked at, the date of first use for “Mormon Messages” and “Mormon Channel” is 2009. Similarly, the date of first use for “Book of Mormon Videos” is 2019. Many, but not all, of the first use dates for “Mormon Battalion” are also later than John’s first use date.

This creates some interesting legal issues that the judge in this case will need to resolve. First, John’s prior use of “Mormon Stories” might impact the Church’s claim that it has a family of trademarks. All of the above uses of Mormon, such as “Mormon Discussions” also impacts the Church’s claim that it has a family of trademarks. If several of McDonalds competitors start using “Mc” to sell products, and McDonalds hasn’t stopped these uses, a court might find that McDonalds no longer has a family of trademarks on “Mc.” 

Second, John’s prior use of Mormon Stories and all of the other prior uses noted above, might allow John to file a counterclaim seeking to invalidate at least some of the Church’s family of trademarks because John’s rights and these other trademark rights holders have superior rights that predate the Church’s use of its later trademarks.    

That is all for today! If you have questions, I will try to answer them.