                            In the
United States Court of Appeals
              For the Seventh Circuit
                          ____________

No. 02-1381
TE-TA-MA TRUTH FOUNDATION—FAMILY OF URI, INC.,
                                            Plaintiff-Appellant,
                               v.

WORLD CHURCH OF THE CREATOR,
                                            Defendant-Appellee.
                         ____________
       Appeal from the United States District Court for the
         Northern District of Illinois, Eastern Division.
       No. 00 C 2638—Joan Humphrey Lefkow, Judge.
                         ____________
       ARGUED JUNE 4, 2002—DECIDED JULY 25, 2002
                      ____________



 Before COFFEY, EASTERBROOK, and WILLIAMS, Circuit
Judges.
  EASTERBROOK, Circuit Judge. The “Church of the Cre-
ator” and the “World Church of the Creator” have irreconcil-
able creeds. The Church of the Creator (the operating
name of TE-TA-MA Truth Foundation—Family of URI,
Inc.) believes in universal love and respect. Its Sacred
Mandate reads:
2                                                  No. 02-1381

             CHURCH OF THE CREATOR®
       Supports the Family Unification of Mankind
              In All Aspects Of The Whole.
         We of Like Mind Join Harmoniously In
          Oneness, Knowing That There Is Only
                   One Creator-Source.
        The Many In One Dedicate Our Physical
          Embodiments To The God Expression
          In Form, Bringing Forth By Example
                   To This Planet Earth
                  Love, Light and Peace.
               Therefore, Once Decreeing
                DIVINE RIGHT ORDER®
            In All Thoughts – All Things, Our
           Universe Automatically Aligns Into
           Manifestation of Heaven On Earth.
         Through The Priesthood of Melchizedek
        We Are One In The Body Of Jesus Christ.
                    As Above So Below.
The Church’s web site <http://www.churchofthecreator.org>
provides additional details, including the text of the Divine
Right Order. World Church of the Creator, by contrast, does
not worship God but instead depicts the “white race” as the
“Creator” and calls for the elimination of Jews, blacks, and
what it labels “mud races.” Its slogan is: “Dedicated to the
Survival, Expansion, and Advancement of the White Race”.
The World Church of the Creator’s beliefs are explicated
more fully in Nature’s Eternal Religion, a book by its
founder, Ben Klassen, and on its web site <http://www.
wcotc.com>. The Church of the Creator is a recognized
religious charity. The World Church of the Creator, as a
racist group, is not entitled to that benefit, see Bob Jones
University v. United States, 461 U.S. 574 (1983), and has
had its charitable status revoked by both state and federal
governments. See Church of the Creator, Inc. v. CIR, 707
F.2d 491 (11th Cir. 1983); People ex rel. Ryan v. World
No. 02-1381                                                3

Church of the Creator, 198 Ill. 2d 115, 760 N.E.2d 953
(2001) (discussing related issues following the loss of state
tax-exempt status in 1995). (Note the change from “Church
of the Creator, Inc.” to “World Church of the Creator,” an
unincorporated association. This is apparently part of a
judgment-proofing strategy after a court held in 1994 that
Klassen’s organization must pay damages for orchestrat-
ing a murder. Mansfield v. Pierce, 1998 U.S. App. LEXIS
17086 (4th Cir. July 27, 1998), supplies details. Klassen
committed suicide in 1993, and Matt Hale became “Pontifex
Maximus” of the reconstituted organization in 1996.)
  What has led to this litigation between the two organi-
zations is the little ® symbol attached to Church of the
Creator. (To promote clarity, from now on we refer to the
Church of the Creator as “the Foundation” and the World
Church of the Creator as “the World Church.”) Klassen
founded and named his group in 1973, while the Founda-
tion did not begin using “Church of the Creator” until 1982.
But the Foundation was first to take advantage of the
federal trademark-registration system, seeking protection
in 1987 for its name and symbol (a radiant dove centered on
a six-pointed star with a multi-colored background):
4                                                    No. 02-1381

The Patent and Trademark Office (PTO) granted the Founda-
tion’s application in 1988, though it required the Founda-
tion to disclaim any right to the word “church.” See Trade-
mark Registration No. 1,496,724. Five years passed, during
which Klassen’s group did not protest this registration. The
PTO then accepted and filed a declaration that the mark
had become incontestable under 15 U.S.C. §1065—which
means that it may be enforced, without proof of secondary
meaning, even if it is a descriptive name for the qualities or
characteristics of a good or service. See Park ’N Fly, Inc. v.
Dollar Park and Fly, Inc., 469 U.S. 189 (1985). When the
Foundation began to receive protests about its supposedly
racist creed—complaints demonstrating confusion between
the two groups—it set out to enforce its incontestable mark
by seeking an injunction against the World Church’s use of
what is obviously a confusingly similar name. The groups’
symbology differs, as the World Church’s banner shows:




But the Foundation’s mark includes the name as well as
the graphic presentation.
  Although an incontestable mark may be enforced even if
it is descriptive, it is subject to cancellation if it is or
becomes generic. Section 1065, which sets out the rules for
incontestable marks, begins: “Except on a ground for which
application to cancel may be filed at any time under para-
graphs (3) and (5) of section 1064 of this title”, and §1064(3)
permits cancellation “[a]t any time if the registered mark
becomes the generic name for the goods or services, or a
portion thereof, for which it is registered”. Thus as the
Court recognized in Park ’N Fly an incontestable mark does
not confer any rights to a phrase that was generic at the
outset or has become so through use. “A generic term is one
No. 02-1381                                                5

that refers to the genus of which the particular product is
a species.” 469 U.S. at 194. The World Church’s defense in
this suit is that “Church of the Creator” is generic: that it
names the genus of all monotheistic religions, of which
particular creeds such as Judaism, Christianity, and Islam
(and all their many subdivisions) are the species. The
Foundation replied with two procedural points: first, that
although generic status allows cancellation of a mark by
the PTO under §1064, it does not afford a defense while the
mark remains uncancelled; second, that incontestable
status provides at least a powerful presumption that the
mark is non-generic, a presumption that can be overcome
only by strong evidence of actual usage. The district judge
brushed aside both of these arguments and, relying exclu-
sively on dictionary definitions of the word “creator,” en-
tered summary judgment for the World Church. TE-TA-MA
Truth Foundation—Family of URI, Inc. v. World Church of
the Creator, 2002 U.S. Dist. LEXIS 1478 (N.D. Ill. Jan. 31,
2002).
  On appeal the Foundation repeats its contention that the
PTO,  rather than a court, is the proper forum for any con-
tention that an incontestable mark is generic. This conten-
tion, which relies principally on 15 U.S.C. §1115(b) (“To the
extent that the right to use the registered mark has become
incontestable under section 1065 of this title, the regis-
tration shall be conclusive evidence of the validity of the
registered mark”), finds some support in the language of
Sovereign Order of St. John of Jerusalem, Inc. v. Grady, 119
F.3d 1236, 1240 (6th Cir. 1997), but not in the holding of
that or any other circuit—and it is untenable. Even if a
mark must be canceled before enforcement may be denied,
trademark law does not reserve the cancellation power to
the PTO. A court may cancel a mark itself or order the
agency to do so. 15 U.S.C. §1119. So even if the sequence
must be generic status to cancellation to nonenforcement,
a court can handle all of the stages. This means that the
6                                                   No. 02-1381

generic nature of a mark may be a defense in litigation.
And if a court may order a mark canceled, an incontestable
registration is more like a bursting-bubble presumption of
non-generic-ness than like the sort of indomitable presump-
tion that the Foundation seeks. Like the district court, then,
we proceed to ask whether “Church of the Creator” is
generic.
  Unlike the district court, we conclude that this phrase is
descriptive rather than generic. Appellate review of a sum-
mary-judgment decision is plenary. Both sides moved for
summary judgment, so each was required to introduce
evidence to show that a material issue of disputed fact
remained for decision. Confronted with the Foundation’s
motion, the World Church produced—nothing but a dictio-
nary. It did not offer any evidence about how religious
adherents use or understand the phrase as a unit. It offered
only lexicographers’ definitions of the individual words.
That won’t cut the mustard, because dictionaries reveal a
range of historical meanings rather than how people use a
particular phrase in contemporary culture. (Similarly, look-
ing up the words “cut” and “mustard” would not reveal the
meaning of the phrase we just used.)
  Contemporary usage does not treat “Church of the Cre-
ator” as the name for monotheistic religion—or any other
genus of religion. If it were, then the World Church itself
would be misusing the phrase, for it is not theistic in any
traditional sense and has nothing in common with Judaism,
Christianity, or Islam. The World Church’s web site, and
much of its literature, feature one international negation
symbol (a circle with a diagonal bar) superimposed over a
Star of David and another superimposed over a cross. It
condemns the Bible as a hoax.
  A mark is “generic” when it has become the name of a
product (e.g., “sandwich” for meat between slices of bread)
or class of products (thus “church” is generic). But “Church
No. 02-1381                                                 7

of the Creator” is descriptive, like “lite beer.” It does not
name the class of monotheistic religions. In the contempo-
rary United States, variations on “Church of [Deity]” are
used to differentiate individual denominations, not to de-
note the class of all religions. The list is considerable:
Church of God; Church of God (Anderson, Indiana); First
Church of God; Worldwide Church of God (see Worldwide
Church of God v. Philadelphia Church of God, Inc., 227
F.3d 1110 (9th Cir. 2000)); Church of God in Christ; As-
sembly of God; Korean Assembly of God; Church of the
Nazarene; Church of Christ; United Church of Christ;
Disciples of Christ; Church of Christ, Scientist; Church of
Jesus Christ of Latter Day Saints. There is room for ex-
tension with Church of Our Savior, Church of the Holy
Spirit, Church of the Holy Trinity, Church of Jehovah, and
so on. Yet all of these are recognizable as denominational
names, not as the designation of the religion to which the
denominations belong. No Jewish, Islamic, Baha’i, or Uni-
tarian group would say that it belongs to a “Church of the
Creator”; and a Christian congregation would classify itself
first into its denomination (e.g., Baptist, Lutheran, Russian
Orthodox, Society of Friends), then into one of the major
groupings (Roman Catholic, Orthodox, and Protestant), and
finally into Christianity, but never into a “Church of the
Creator.” No one called or emailed a Baptist church to
complain about its complicity in the hate-mongering of the
World Church of the Creator; people recognized the name
as denominational, and that’s why protests ended up in the
Church of the Creator’s in box.
  What is more, as these lists show, using “Church of the
Creator” as a denominational name leaves ample options for
other sects to distinguish themselves and achieve sep-
arate identities. It is not remotely like one firm appropriat-
ing the word “sandwich” and thus disabling its rivals from
explaining to consumers what’s to eat. When the line be-
tween generic and descriptive terms is indistinct—as it is,
8                                                  No. 02-1381

for example, with a phrase such as “liquid controls,” see
Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934
(7th Cir. 1986)—it is helpful to ask whether one firm’s
exclusive use of the phrase will prevent a rival from naming
itself and describing its product. (As far as the Lanham Act
is concerned, a denomination is a producer and religious
services and publications are products. Neither side has
questioned the application of trademark laws to religion.)
Because there are so many ways to describe religious
denominations, there is no risk that exclusive use of
“Church of the Creator” will appropriate a theology or
exclude essential means of differentiating one set of beliefs
from another.
   The World Church has a fallback argument: that recog-
nizing a trademark in “Church of the Creator” violates the
first amendment. Yet as San Francisco Arts & Athletics,
Inc. v. United States Olympic Committee, 483 U.S. 522
(1987), observed when rejecting a similar contention, the
Constitution itself authorizes Congress to create rights of
this kind. Cf. Harper & Row, Publishers, Inc. v. Nation
Enterprises, 471 U.S. 539 (1985). Trademark rights promote
the aims of the first amendment by enabling producers of
the spoken and written word to differentiate themselves. If
multiple businesses use the same (or confusingly similar)
names, the result is cacophony rather than discussion or
debate. If every candidate on the ballot ran under the same
name, this would do more to befuddle the voters than to
promote the candidates’ freedom of expression. Cf. Grimes
v. Smith, 585 F. Supp. 1084 (N.D. Ind. 1984), affirmed, 776
F.2d 1359 (7th Cir. 1985). It is questionable whether the
World Church is a religion (not all philosophical beliefs are
religious), but, if it is, still Congress need not exempt
religions from generally applicable laws. See Employment
Division v. Smith, 494 U.S. 872 (1990). The World Church
has every right to a distinctive name; it does not have
No. 02-1381                                              9

a constitutional right to use some other denomination’s
incontestable trademark.
  By this time, a reader familiar with the Lanham Act may
have grown frustrated by our inattention to what must
seem the most obvious argument on behalf of the World
Church: prior use. Ben Klassen published Nature’s Eternal
Religion, and adopted the name “Church of the Creator,” in
1973, nine years before the Foundation began using that
phrase. Section 1065 provides that even incontestable
marks must yield to “a valid right acquired under the law
of any State or Territory by use of a mark or trade name
continuing from a date prior to the date of registration
under this chapter of such registered mark”. Yet the World
Church has not urged prior use as a defense, presumably
because of the reorganization designed to avoid paying the
judgment mentioned in this opinion’s opening paragraph.
The corporation that adopted the name “Church of the
Creator” in 1973 no longer exists; the organization “World
Church of the Creator” formed in 1996 is junior to the
Foundation. It turns out that tactics adopted to avoid pay-
ing for one’s wrongs have collateral costs.
  The judgment of the district court is reversed, and the
case is remanded with instructions to enter an appropriate
judgment in favor of the Foundation.

A true Copy:
        Teste:

                       ________________________________
                       Clerk of the United States Court of
                         Appeals for the Seventh Circuit



                   USCA-97-C-006—7-25-02
