LAW OFFICE
DILLER, RAMIK & WIGHT, P. C.
PATENT & TRADEMARK CAUSES
SUITE 101
7345 MCWHORTER PLACE
ANNANDALE, VIRGINIA 22003-5647
TELEPHONE
(703) 642-5705 .................................................. . .................................................. . FACSIMILE
(703) 642-2117
March 17, 1998
Pastor Raffael Perez
Eternal Gospel SDA Church
P.O. Box 15138
West Palm Beach, Florida 33416
Re: SEVENTH-DAY ADVENTIST
SDA
U.S. reg. No. 1,177,185
Service Mark Infringement
False Designation of Origin
Unfair Competition
Dear Mr. Perez:
We are writing to you on behalf of the Seventh-day Adventist Church and the General Conference Corporation of Seventh-day Adventists whom we represent in matters involving proprietary intellectual property, including trademarks and service marks.
As I am sure you know, the General Conference Corporation of Seventh-day Adventists through the Seventh-day Adventist Church has used the name SEVENTH-DAY ADVENTIST and the legally equivalent acronym SDA since at least as early as 1860 to the present and has obtained U.S. Reg. No. 1,177,185 for the goods and services set forth therein. Needless to say, the 138 years of substantially exclusive and continuous use of SEVENTH-DAY ADVENTIST and SDA is reflective of the exclusive ownership of these names by the Seventh-day Adventist Church.
Mr. Kermit L. Netteburg had written to you on several occasions, the last being November 5, 1997. We had hoped that your "willingness to stop using the initials 'S.D.A.'" would be followed by concrete action to this end. However, the advertisements Mr. Netteburg brought to your attention in his letter of September 15, 1997 have not ceased, and the continuance thereof maintains subsisting "a great deal of confusion."
U.S. Reg. No. 1,177,185 was contested in Cancellation Nos. 17554 and 18038 (Stocker and Perry v. General Conference Corporation of Seventh-day Adventists) and the U. S. Trademark Trial and Appeal Board in its Opinion of February 15, 1996 stated:
In every instance made of record, the relevant public is exposed to the registered mark with the result that the primary significance of SEVENTH- DAY ADVENTIST to them is as an indicator of the source or origin of respondent's (Seventh-day Adventist Church) various goods and/or services.
. . . the evidence of record leads us to conclude that the primary significance to the relevant public of SEVENTH-DAY ADVENTIST is that of a trademark/service mark when used in connection with religious books and/or services.
This decision is, of course, equally applicable to the acronym "SDA" which is legally equivalent to and means the same as -- SEVENTH-DAY ADVENTIST -- .
Your use of ETERNAL GOSPEL SDA CHURCH in your advertisements, your letterhead, your telephone listing and your associated ministry implies an association with and/or approval of the Seventh-day Adventist Church. There is no association between the parties, and your use of SDA or SEVENTH-DAY ADVENTIST does not have the approval of the Seventh-day Adventist Church or the General Conference Corporation.
Pursuant to 15 U.S.C. S1114:
Any person who shall, without the consent of the registrant . . . (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided.
Even in the absence of a registration, 15 U.S.C. S1125(a) affords remedy by way of "a civil action by any person who believes that he or she is or is likely to be damaged" by third party usage of a trademark or service mark "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person."
We trust that it will be unnecessary to enjoin by way of civil action your inequitable and illegal usage of SEVENTH-DAY ADVENTIST or SDA, and that upon receipt of this letter we demand that you immediately cease and desist from using the latter expressions or any names, marks or expressions equivalent thereto in association with your advertising, activities and/or ministry.
We have advised the Seventh-day Adventist Church and the General Conference Corporation that we consider your use of SEVENTH-DAY ADVENTIST and SDA to be actionable under the Sections of Title 15 mentioned earlier herein. Accordingly, on behalf of the Seventh-day Adventist Church, we specifically demand that you immediaely:
Cease all use of SEVENTH-DAY ADVENTIST and/or SDA;
Cease all use of SEVENTH-DAY ADVENTIST and/or SDA in conjunction with your advertising, your telephone directory, your letterhead and any and all other business and ministerial activities presently performed directly by you or on your behalf utilizing either or both aforesaid Church's trademarks and service marks; and otherwise
Avoid all usage of SEVENTH-DAY ADVENTIST and/or SDA likely to be confusd with these marks as used by the Seventh-day Adventist Church.
We ask that you confirm compliance with these demands by signing the enclosed duplicate letter and returning the same to our office.
This letter is written without prejudice to all further rights of the Seventh-day Adventist Church and the General Conference Corporation, including but not by way of limitation, rights to injunctive relief to obtain the cessation of your use of SEVENTH-DAY ADVENTIST or SDA, profits, damages and any attrneys' fees necessitated by your activities.
Very truly yours,
DILLER, RAMIK & WIGHT, P.C.
______________________________
Vincent L. Ramik
Enclosed: U.S. Reg. No. 1,177,185
Agreed to by: _____________________
Date: _____________________
For: Raffael Perez, Eternal Gospel SDA Church
