Judge Gergel Finds in Favor of TECSC and TEC in Trademark Infringement and False Advertising Case

UPDATE: See the newest blog posting here, for a full response to today's news, including a quote from Bishop Skip Adams.

U.S. District Court Judge Richard M. Gergel today offered an Order and Opinion in favor of The Episcopal Church in South Carolina and The Episcopal Church in the federal false-advertising and trademark infringement lawsuit against the bishop of a group that left The Episcopal Church in 2012.

His 73-page decision is best summarized in the final pages:

“The time has come for this dispute to be resolved. The Defendants have every right to disassociate from the TEC and pursue their doctrine and community as they see fit, yet they may not leave with the Plaintiffs' goodwill and marks generated over the course of over two centuries. The Court is cognizant that Defendants have since associated with a new denominational organization, and there may be other marks that properly identify their affiliation with this organization and would be sufficiently distinct to not cause any confusion with or dilute TEC's marks or constitute false advertising. However, on the facts presented here, the Court finds it undisputed that the Defendants infringed on TEC and TECSC's marks, diluted TEC's marks and engaged in false advertising regarding their affiliation with TECSC and their identity. Therefore, as detailed below, the Court issues an injunction against further trademark infringement, trademark dilution, and false advertising.

IV. Conclusion
For the foregoing reasons, the Court GRANTS Plaintiffs The Right Reverend Charles G. vonRosenberg, et al. 's Motion for Summary Judgment (Dkt. No. 584). The Court GRANTS TEC's Motion for Summary Judgment (Dkt. No. 595). The Court DENIES Defendants The Right Reverend Mark J. Lawrence, et al. 's Motion for Summary Judgment (Dkt. No. 603). The Court · DENIES Defendants The Right Reverend Mark J. Lawrence, et al. 's Motion for Summary Judgment as to Genericness. (Dkt. No. 610.)

The Court further DECLARES that TEC owns its five federally registered marks (Dkt. Nos. 595-5; 595-7; 595-8; 595-9; 595-11 ; 595-64; 595-65; 595-67; 595-68) and that TECSC owns the marks designated in the state registrations (Dkt. No. 584-3).

Additionally, the Court hereby issues the following PERMANENT INJUNCTION and ENJOINS all Defendants, their officers, agents, servants, employees, associates, subsidiaries and affiliates from using the following marks or any mark confusingly similar:  

• The Protestant Episcopal Church in the United States;
• The Episcopal Church;
• The Episcopal Church Welcomes You;
• La Iglesia Episcopal, and;
• The Episcopal Shield.

The Court further enjoins Defendants their officers, agents, servants, employees, associates, subsidiaries and affiliates from using the following marks or any mark confusingly similar:

• Diocese of South Carolina;
• The Episcopal Diocese of South Carolina;
• The Protestant Episcopal Church in the Diocese of South Carolina;
• The Diocesan Seal. 

The full decision is still being studied, and more information is to come.