United States District Court, N.D. Alabama, Western Division
DAVID PROCTOR, UNITED STATES DISTRICT JUDGE
last few decades, parties, courts, and commentators have
emphasized the value of private alternative dispute
resolution as a substitute for litigation in public courts.
The Apostle Paul may have been ahead of his time in this
area, although for different “policy” reasons. In
his first letter to the Church at Corinth, he warned the
Church not to take their lawsuits before secular courts. I
Cor. 6:1 (New Living Translation) (“When one of you has
a dispute with another believer, how dare you file a lawsuit
and ask a secular court to decide the matter instead of taking it
to the believers!”). Despite this admonition, the
parties in this case -- two ministry organizations -- are
embroiled in a dispute over the use of “marks”
that has found its way on to this court's docket. The
court stands ready, willing, and (hopefully) able to rule on
matter is before the court on Plaintiff The Way
International's Motion for Summary Judgment (Doc. # 32).
The Motion has been fully briefed. (Docs. # 37-41, 45).
Summary of Relevant Facts
facts are in dispute, they are stated in the manner most
favorable to the non-movant, and all reasonable doubts about
the facts have been resolved in favor of the non-movant.
See Fitzpatrick v. City of Atlanta, 2 F.3d 1112,
1115 (11th Cir. 1993); Info. Sys. & Networks Corp. v.
City of Atlanta, 281 F.3d 1220, 1224 (11th Cir. 2002).
These are the “facts” for summary judgment
purposes only. They may not be the actual facts that could be
established through live testimony at trial. See Cox. v.
Adm'r U.S. Steel & Carnegie, 17 F.3d 1386, 1400
(11th Cir. 1994). Having said that, a review of the record
shows that the facts relevant to this motion are not
genuinely in dispute. The parties certainly have a dispute.
But it is not factual in nature.
The Way International is a non-denominational Biblical
research, teaching, and fellowship ministry with an
international membership. (Doc. # 32-5 ¶ 3, p. 1).
Originally incorporated in 1947, The Way International
changed its corporate name to The Way, Inc. in 1955, and
subsequently to The Way International in 1974. (Doc. # 32-5
¶ 5, p. 2). Plaintiff currently operates eleven separate
fellowships with about 200 followers in the State of Alabama,
including two separate fellowships in Birmingham. (Doc. #
32-5 ¶ 5, p. 2).
International has used the mark THE WAY for over sixty years
and the mark THE WAY INTERNATIONAL for over forty years in
connection with the provision of its religious educational
services, publications, and related goods and services in the
United States and throughout the world. (Doc. # 32-5 ¶
5, p. 2). In Alabama, where Defendants are located, The Way
International has used its marks for over forty years. (Doc.
# 32-5 ¶ 5, p. 2).
International has expended time, effort, and money promoting
its organization and its goods and services under the marks
THE WAY and THE WAY INTERNATIONAL. (Doc. # 32-5 ¶ 6, 7,
p. 2). As a result of Plaintiff's promotional efforts and
extensive use of its marks, Plaintiff has established
national and worldwide recognition of the marks, and people
involved in religious studies and fellowship associate the
marks with Plaintiff. (Doc. # 32-5 ¶ 7, p. 2).
late 1990s, The Way International began promoting its goods
and services online by launching its official website located
at TheWay.org. (Doc. # 32-5 ¶ 10, pp. 3-4). In addition,
Plaintiff has registered the following domain names:
TheWayInternational.info, TheWay.com, TheWay.net,
TheWay.info, TheWay.tv, TheWayIntl.net, TheWayIntl.org,
TheWayIntl.info; TheWayMinistry.com, TheWayMinistry.net,
TheWayMinistry.info, and WayInternational.org, which
Plaintiff uses to redirect Internet browsers to its official
website. (Doc. # 32-5 ¶ 11, p. 4; Doc. # 32-6).
International owns 16 federal trademark registrations
comprised of or containing the marks THE WAY and THE WAY
INTERNATIONAL (Doc. # 32-5 ¶ 8, p. 2). The registrations
for THE WAY and the WAY INTERNATIONAL are set forth in the
INT. CL. 41 educational services-namely, providing
religious teaching services by means of motion
pictures andslide presentations and producing and
presenting musical, dramaticomusical, and dramatic
productions and presenting works of art, publishing
of periodicals and booklets of a religious nature
INT. CL. 16 religious paperback and hardback books,
study manuals, and stationery-namely, notecards
THE WAY INTERNATIONAL
INT. CL. 16 religious paperback and hardback books;
religious brochures and study manuals; stationery,
namely, note cards, invoices, and gift certificates
THE WAY INTERNATIONAL
INT. CL. 9 audiotapes, videotapes, records, cds and
cassettes in the field of religion
THE WAY INTERNATIONAL
INT. CL. 35 retail bookstore services in the field
THE WAY INTERNATIONAL
INT. CL. 41 educational services, namely, providing
religious teaching services by means of motion
pictures and slide presentations; entertainment
services, namely, producing and presenting musical,
dramaticomusical, and dramatic productions and
presenting works of art in the field of religion;
publishing of periodicals and booklets of a
INT. CL. 9 digital materials, namely, cds, and dvds
in the field of religion; downloadable audio files,
multimedia files, written documents, audio
material, video material featuring information in
the field of religion
(Doc. # 32-7 - 32-13). The Way International actively polices
possible infringements of its marks, and takes action to
protect its marks as appropriate under the circumstances.
(Doc. # 32-5 ¶ 15, p. 4).
began operating a nondenominational Biblical ministry in
October or November 2014. (Doc. # 23 ¶ 23). Defendants
Pastor Mason and Ms. Mason selected the name “The
Church Of The Way International” for their ministry.
(Doc. # 23 ¶ 24). Defendants registered with the Alabama
Secretary of State under the name “The Church Of The
Way International.” (Doc. # 32-14).
Pastor Mason registered and owns the internet domain name
thechurchofthewayinternational.org (the “Domain
Name”). (Doc. # 23 ¶ 25; Doc. # 32-15). Defendants
are using the Domain Name in connection with the website at
the following URL:
http://thechurchofthewayinternational.org. (Doc. #
23 ¶ 42; Doc. # 32-16). Defendants provide prayer,
worship, and outreach services, offer religious teaching
materials including a series of audio CDs, and solicit
charitable contributions. (Doc. # 23 ¶ 23; Doc. #
to receiving the letters from the Plaintiff's attorney
requesting that Defendants stop using Plaintiff's marks,
Defendants had never heard of Plaintiff (Doc. # 39 ¶ 7)
and they deny having any intent to profit from the use of
Plaintiff's marks. (Doc. # 39 ¶ 12).
have used (and continue to use) “The Church Of The Way
http://thechurchofthewayinternational.org to promote
and advertise their services and products, including
religious teaching services, and also to solicit monetary
contributions. (Doc. # 23 ¶ 27; Doc. # 32-16).
Defendants have not obtained any authorization from The Way
International to use its marks. (Doc. # 23 ¶ 22; Doc. #
32-5 ¶ 18, p. 5). After Defendants received
Plaintiff's letter demanding that the Defendants cease
use of “The Church Of The Way International” and
Defendants continued to use the marks and Domain Name, and
their use of them has continued. (Doc. # 23 ¶ 28; Doc. #
April 29, 2016, the same day that Plaintiff filed its Motion
for Summary Judgment, Defendants filed a Trademark/Service
Mark Application with the United States Patent and Trademark
Office, Serial Number: 87019245, seeking to register the mark
“The Church Of The Way International.” (Doc. #
Summary Judgment Standard
Federal Rule of Civil Procedure 56(c), summary judgment is
proper “if the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to
any material fact and that the moving party is entitled to
judgment as a matter of law.” Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986). The party asking for
summary judgment always bears the initial responsibility of
informing the court of the basis for its motion and
identifying those portions of the pleadings or filings that
it believes demonstrate the absence of a genuine issue of
material fact. Celotex, 477 U.S. at 323.
Once the moving party has met its burden, the Rule requires
the non-moving party to go beyond the pleadings and -- by
pointing to affidavits, or depositions, answers to
interrogatories, and/or admissions on file -- designate
specific facts showing that there is a genuine issue for
trial. See id. at 324.
substantive law will identify which facts are material and
which are irrelevant. See Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). All reasonable doubts
about the facts and all justifiable inferences are resolved
in favor of the non-movant. See Fitzpatrick v. City of
Atlanta, 2 F.3d 1112, 1115 (11th Cir. 1993). A dispute
is genuine “if the evidence is such that a reasonable
jury could return a verdict for the nonmoving party.”
Anderson, 477 U.S. at 248. If the evidence is merely
colorable, or is not significantly probative, summary
judgment may be grated. See id., at 249.
faced with a “properly supported motion for summary
judgment, [the non-moving party] must come forward with
specific factual evidence, presenting more than mere
allegations.” Gargiulo v. G.M. Sales, Inc.,
131 F.3d 995, 999 (11th Cir. 1997). As Anderson v.
Liberty Lobby, Inc. teaches, Rule 56(c) “does not
allow the plaintiff to simply rest on [her] allegations made
in the complaint; instead, as the party bearing the burden of
proof of trial, [s]he must come forward with at least some
evidence to support each element essential to [her] case at
trial.” Anderson, 477 U.S. at 252. “Mere
allegations” made by a plaintiff are insufficient.
judgment is mandated “against a party who fails to make
a showing sufficient to establish the existence of an element
essential to that party's case, and on which that party
will bear the burden of proof at trial.” Celotex
Corp., 477 U.S. at 322. “Summary judgment may be
granted if the non-moving party's evidence is merely
colorable or is not significantly probative.”
Sawyer v. Southwest Airlines Co., 243 F.Supp.2d
1257, 1262 (D. Kan. 2003) (citing Anderson, 477 U.S.
the summary judgment stage the judge's function is not
himself to weigh the evidence and determine the truth of the
matter but to determine whether there is a genuine issue for
trial.” Anderson, 477 U.S. at 249.
“Essentially, the inquiry is ‘whether the
evidence presents a sufficient disagreement to require
submission to the jury or whether it is so onesided that one
party must prevail as a matter of law.'”
Sawyer, 243 F.Supp.2d at 1262 (quoting
Anderson, 477 U.S. at 251-52); see also LaRoche
v. Denny's, Inc., 62 F.Supp.2d 1366, 1371 (S.D. Fla.
1999) (“The law is clear … that suspicion,
perception, opinion, and belief cannot be used to defeat a
motion for summary judgment.”).
Complaint contains five counts against Defendants: (1)
Federal Trademark Infringement under 15 U.S.C. §
1114(1); Federal Unfair Competition under 15 U.S.C. §
1125(a)(1); (3) Federal Cybersquatting under 15 U.S.C. §
1125(d)(1); (4) Alabama Common Law Trademark Infringement and
Unfair Competition; and (5) Unlawful & Deceptive Trade
Practices Under Ala. Code ' 8-19-5. (Doc. # 1). The court
addresses each of these claims, in turn. After careful
review, and for the ...