Friday, June 06, 2014

LDS grapples with dating service in a "Mormon Match"

Anthony Zurcher at BBC news reports the following:

You may have thought that there's such a thing as the "Mormon Church", but really there isn't. It's officially the "Church of Jesus Christ of Latter-day Saints, or "LDS" for short; and its members are latter-day saints. But because of their religious text entitled the Book of Mormon the common appellation is "Mormon Church", and the members are informally known as "Mormons". In fact, they're almost exclusively known as "Mormons" outside of their own church.

It seems that the LDS objected when a dating website called "Mormon Match" tried to trademark the name "Mormon Match". The LDS argues that it holds ownership of a family of trademarks, each of which includes the word "Mormon", and to allow a commercial venture to use it in a trademark would dilute the non-identical trademarks owned by the LDS and damage the Church.

The BBC story is in error when it claims that the LDS "has a trademark on the word". They link to the trademark document for "", which is distinct from "Mormon". According to the LDS, they did try to get a trademark on the word "Mormon", but they were denied by the USPTO, as "Mormon" is a generic word. They gave up trying in 2007. According to the Church, Mormon Match filed for trademark, the Church filed an official objection, and it is Mormon Match that sued the Church. So this is a bit more subtle than the BBC story implies, and even their title is inaccurate.

Now, the LDS objects to the trademark of "Mormon Match" despite the fact that the website in question exists to match Mormons with like-minded individuals (aka other Mormons), and it's not at all clear how they'd do that if not allowed to simply describe their services. This is also despite the fact that the website contains on its landing page the following disclaimer:


You might think that they could use another word, like "Latter-day Saints", but that's actually the official title, so if anything that would be worse. Or perhaps they could come up with some completely new word to describe the membership, but that wouldn't be informative, and could quickly become pejorative. This might not be appreciated by the members. It would be like naming your Italian dating service, "Wop Swap 'n' Shop".

By contrast, mainstream Christians of all stripes would like Christians to meet other Christians, and no one would think twice about describing their dating service as being "for Christians". Yet the LDS have a problem with it. Very odd.

To be fair, here is the LDS' position as stated by church spokesman Eric Hawkins:
"We have made repeated attempts to resolve the issue without litigation, as we have in many comparable disputes over the years, including similar trademark applications. The objection of the church is that a for-profit business is trying to deceptively capitalize on the church’s name and image to promote a product that has no affiliation with the church. By attempting to trademark the name, the group seeks to claim exclusive rights to use a term that is clearly associated with the church."
I technically have no horse in this race, not being Mormon, nor having stock in the website. But I do like the English language, and I like being able to use it without being arbitrarily sued. And I do love little logical conundrums, so I find myself wondering how I'd argue the case.

I think I'd do it like this:

But first... I had a very clever case plotted out as to why the LDS can't trademark "Mormon". That was done after having read the BBC article, and before I found out the USPTO had already denied that trademark. So all of that cleverness is lost to the bit bucket. There remains this boring little list of obviousness.  *sigh* At least I got to clear up the BBC's misinformation.
  1. The use of the term on the "Mormon Match" website poses no problem of confusion with the LDS. Not only are their products different, they clearly label themselves as not being affiliated or endorsed by the LDS so as to remove remaining doubt, should any exist. The mere use of the word "Mormon" does not provide adequate grounds for objection, as their activities occupy different domains. For example, the term "Apple" is simultaneously trademarked by a computer company, a record label, a rubber products company, a publisher, and numerous other companies.
  2. This aside, there exists no other term that adequately describes a Mormon, or Latter-Day Saint, other than those over which the Church claims trademark. This lack of alternatives reduces the term "Mormon" to a common word in the language. Its use by Mormon Match is purely descriptive and without alternative. The use of this common word in LDS trademarks therefore poses inadequate grounds for objection. It is, after all, a common word; the generic term for a member of the Church of Jesus Christ of Latter-day Saints, for whom the website's services are specifically intended.
  3. This aside, the Church's object that Mormon Match is attempting to "deceptively capitalize on the church’s name and image to promote a product that has no affiliation with the church" holds no water. On the contrary, Mormon Match is attempting to blatantly and openly market to church members a service that has no affiliation with the Church. They make no secret about the fact that they are not affiliated with the Church nor do they hide that their service is for Mormons. And the fact that this is "a product that has no affiliation with the church" cuts straight to the issue of "domain", as stated in point #1, so we may take this clause as a concession of that point. There is no barrier of law, ethics, or morals to prevent Mormon Match from offering their service to Mormons. So what else would you call them?
  4. This aside, the Church's objection to the use of the word "Mormon" in someone else's trademark amounts to a de facto claim on the word "Mormon" itself, which is exactly what has already been denied by the USPTO. As the USPTO has already rejected that claim, so should the objection to the use of the word by Mormon Match be rejected. It is equivalent to the word "Chicken" or "Steak" being claimed as exclusive trademarks by competing restaurants, and is contrary to Trademark law.
In short, Mormon Match operates in a distinct domain, describing itself using a common word that is appropriately and properly applied without malice, deception, or confusion, and should be allowed the trademark to trademark their name without further objection.


This leaves the question of why Mormon Match would have sued the LDS and refused an out-of-court settlement. A clue to that lies in the Church's own statement:
"We have made repeated attempts to resolve the issue without litigation, as we have in many comparable disputes over the years, including similar trademark applications..."
They do this a lot. To a lot of people who can't afford to defend themselves. If their logic fails here, then it fails for others.

Sometimes it's not just your business interests that are at stake. Sometimes it's the principle. As the Electonic Frontier Foundation's Corynne McSherry said in a statement. "Trademarks are supposed to be used to protect from unfair competition, not to stifle a small business or to control language." And as stated in the EFF's amicus brief:
"By granting Eller’s motion now, this Court will help ensure not only that Eller’s business can survive, but also that other similarly situated persons, from entrepreneurs to authors, filmmakers, cartoonists, songwriters, and other creators will not feel pressured or succumb to meritless infringement claims."

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