Trademark Issue Surfaces Again
The Board of Directors minutes for October 12, 1996, reveal that issue of the service mark "PCA" is still alive.
In October 1995, the Board of Directors voted "that the chairman of the Board of Directors be authorized to contact TE Frank J. Smith and the CAPO group requesting that they cease and desist using PCA in their NEWS SERVICE since it is an unauthorized use of a registered trademark." The Board also voted that "unathorized use of the PCA trademark between meetings of the Board of Directors be noted and that in the absence of objection by any member of the Board of Directors within two weeks, the chairman will write an appropriate letter to the parties involved." The editor of the CAPO group, TE David Hall, later indicated that he had never been contacted by Mr. William F. Joseph, Jr., Chairman of the Board, and that the first he knew about his organization's being cited in the minutes was when he received the Commissioners' Handbook.
Mr. Joseph did contact Smith, however, as he was editor of this publication, which was then known as PCA News. In his response, Smith noted that he was not personally responsibility for the news service, as it operates under the auspices of a PCA congregation and therefore is an "offical PCA publication."
In March 1996, the Board adopted "the following policy for maintaining and protecting the PCA(R) mark:
"1. Presbyterian Church in America (A Corporation) grants (either expressly or tacitly) and will continue to grant local churches and presbyteries the right to use its mark PCA(R) in connection with the name of the local church for ordinary local church activities (i.e. local advertising of the church's worship services and other activities, ministries in the local church and its community, local church newsletters for its members, etc.).
"2. Presbyterian Church in America (A Corporation) requires that uses of the mark for other than ordinary local church activities be approved in advance by the Administrative Committee at the denominational level. Approval shall not be granted unless the Committee is able to assert sufficient control over the mark's use to assure the mark is only utilized in a manner consistent with the doctrinal tenets, existing ministries, and policies of the denomination.
"3. Presbyterian Church in America (A Corporation) requires that any incidents of possible trademark infringement be immediately reported to the Administrative Committee at the denominational level. The Committee will determine what appropriate action should be taken to promptly remedy the infringement." Prior to the adoption of this policy by the Board, Mr. Joseph had sent another letter, again personally addressed to Smith rather than to the owner of the news service (Affirmation Presbyterian Church), setting forth much of this position.
The Session of Affirmation Presbyterian Church responded by adopting a four page letter, for presentation to the Administrative Committee of Commissioners, putting forth why it believed its use of "PCA" was appropriate; and offering
to change the name of the news service, based on two conditions: one, that the Assemblyitself (continued on page 16)
(TRADEMARK--continued from page 9)
rather than a Board or Committee would make the request; two, that in light of the fact that a legal claim was being pressed against the news service, the Board be required to produce the documentation showing that the Corporation had authorized the registration of the initials with the federal government. Although only one of these requirements was met, namely, that the Assembly itself make the request, the Session agreed to change the name.
Research at the Patent and Trademark Office of the Department of Commerce in Crystal City, VA, compared with the minutes of the corporation, revealed that the corporation had never authorized the registration of the initials; rather, an individual on his own had done so on behalf of the corporation.
The October 1996 minutes state that the Board voted "that if we have not already approved the registry 'PCA' as a service mark, that we ratify the prior action registering the service mark."
The implications of taking this action a decade after the mark was applied for are not immediately clear. The person(s) making application must certify, under penalty of perjury, that it was authorized by the corporation or other entity for which the registration is sought.
Also not clear is the disposition of the instruction from last year's General Assembly that the Board inform the church exactly what is allegedly trademarked. Upon motion from Dr. Morton H. Smith, the original Stated Clerk of the PCA, the court wanted to find out exactly how far the law extends in protecting the denomination's initials. The minutes of the Assembly, which do not include the motion, will have to be amended at this year's meeting, in order to reflect the action.