A church can register a US trademark just as any other business can.
Like any other business, a church’s business name, product name, logo, or slogan must meet the criteria for registration with the US Patent and Trademark Office (USPTO).
What is trademark registration, first, and why would a church register a trademark?
This Article will address these questions and then discuss the requirements for US trademark registration. It will finally discuss the process of trademark registration and what steps a church must take to secure its intellectual property and branding rights.
What Is a Trademark for a Church?
A trademark, generally, is a “mark” used “in trade.” That is, it is a word, term, name, graphic design, or anything else that is used to identify your church as a source of a product or service. A trademark is a “source-identifier,” in short.
A church provides goods or services as does any other enterprise.
Further, the transaction of your church’s product or service to consumers (“in trade”) must reach across state lines.
That is, you must use your name, logo, or slogan in interstate commerce to register it as a trademark at the Federal level.
This is because the Commerce Clause of the US Constitution only allows the Federal government to extend its jurisdiction over commercial transactions when they are “interstate” transactions. Otherwise, a transaction that simply occurs within Michigan or some other state is “intrastate.” It is regulated by the State of Michigan, for example.
Thus, the trademark for your church identifies your church as the source of your product or service to consumers across state lines.
Trademark Registration Application Classes for Churches
An enterprise does not have to be for-profit in order to register a trademark in the US.
The trademark registration requirement that a mark be continuously used in interstate commerce means that the mark be used to identify your church as the source of a product or service, yes. However, it does not mean that there is some minimum amount of money that you need to charge for that product or service.
A trademark registration application does, on the other hand, require that you identify which products or services you are providing to consumers in association with the name or logo.
In fact, the USPTO charges a filing fee for the trademark registration application based on the number of Classes included in the application.
What are Classes, you ask? Every product or service that a church or anyone else could offer to consumers is divided into 45 different “International Classes.” You must file a trademark registration application in at least 1 Class but can file in more than 1. (You must simply be prepared to pay higher filing fees to do so.)
So what Classes for which products or services would a church include in a trademark registration application?
What Products or Services Does a Church Offer?
A church, temple, shul, mosque, or other house of worship can offer any number of goods or services in interstate commerce. This may seem counterintuitive given the usual image of a person standing at a podium offering religious instruction. But churches and other houses of worship can offer many additional goods or services as well.
However, let’s start with that “usual image.” There are at least 2 Classes implicated by that “dude at a podium” church ideation.
First, the service of conducting religious ceremonies or sermons falls neatly into Class 45, “Personal, legal, and social services.”
Likewise, providing religious instruction falls into Class 41, “Educational services.”
Does your church maintain a website providing religious information? The service of providing such a website falls into Class 45 as well.
How about books or pamphlets sold? Those products would fall under Class 16, “Paper and printed material products.”
What about t-shirts, hoodies, or even vestments or other religious garments? Wearing apparel and clothing fall under Class 25.
Does your church choir perform concerts or go on tour? Sell CDs or other music media? How about crucifix jewelry or other religious ornamentation?
Let’s not forget charitable endeavors and missions in which a church may be active … Collecting donations for those in need is certainly a “service” supporting trademark registration for a church.
Even more Classes exist to cover those and any other products or services that a church, mosque, temple, or other house of worship may provide.
Church Trademarks Must Be Unique
One of the primary hurdles for a church wishing to register its name in particular as a trademark is the requirement that the trademark be unique.
In this context, the word “unique” invokes the requirement of source identification. That is, a proposed name or logo or slogan must be sufficiently unique to identify your church as the source of its products or service.
For a church, this may provide a unique challenge. After all, how many different “St. Johns” can you think of?
Increasingly, however, new churches are forming with less “Saint-centric” naming patterns. These may be newer churches, independent from any worldwide organization. Whatever they are, this author has spotted an increasing number of yard signs sporting more unique church names around suburban Metro Detroit, Michigan. Many of these churches have names invoking natural elements, for instance.
Such names, unless likely to confuse relative to prior registered trademarks (see below) are sufficiently unique to register with the USPTO.
Beyond the possibility of overuse or prior use, the word “unique” specifically means that a trademark cannot be merely descriptive of the services or products on offer.
Generic descriptions, in particular, are not registrable as trademarks. Nor are geographic place names, except in specific circumstances.
Thus, a church that is named “Church” will not succeed in registering that name as a trademark. Or “Detroit Religious Group.” Or anything of that sort.
No Likelihood of Confusion with Other Church Trademarks
There is nothing wrong with “St. John’s” as a prospective trademark, in theory. It is not merely descriptive or generic. A church not selling “saints.”
The real issue with such a typical (Christian) church name is that it is not unique. There is a very good chance that it has already been registered or registered many times over by other churches or other entities.
To register a trademark, whether a name, logo, or slogan, it cannot present a likelihood of consumer confusion.
That is, if the USPTO believes that a consumer, presented with your church’s trademark, will be confused as to which church is selling what product, it will not approve your application.
It is possible for identical or similar names to be registered as trademarks if they offer unrelated services or products. Two churches both names “St. John,” however, will not offer unrelated products or services.
Consumers will be likely to be confused as to which church is operating the Sunday sermon YouTube channel.
Thus, it is vital for a church seeking to register a trademark to retain an experienced Michigan trademark attorney to run a professional pre-application clearance search.
Church Trademark Clearance Searching
A pre-application trademark clearance search is perhaps the most important service a Michigan trademark attorney can provide to a church.
A good trademark lawyer will run a professional, thorough search for conflicting trademarks before you file your registration application.
This search will review not only the USPTO’s TESS database but also the trademark registries of all 50 states, business entity formation records in all 50 states, website domain name registrations, social media search results, web search results, and more.
This is important not only to understand what trademarks have already been registered by what similarly named churches but also to understand what marks have been in use in commerce longer than your church’s has.
Under US common law, the standard rule is that the right exclusive use of a trademark belongs to the person who has used it in commerce the longest—whether that person has ever filed a trademark registration or not.
If you fail to have a trademark lawyer conduct a proper clearance search, you may succeed in registering your trademark only to lose that registration later when the prior user files a cancellation proceeding against your church.
It will be a weak trademark registration.
The Trademark Registration Process for Churches
After you’ve reviewed the opinion letter containing the results of your clearance search, you will need to decide whether or not to move forward. If you decide to move forward, your trademark attorney will then draft and, with your approval, file a USPTO trademark registration application.
This begins the post-application portion of the trademark registration process.
As of this writing, the USPTO is taking more than 9 months to review new trademark registration applications.
Once your USPTO Examiner examines your application, he or she will either approve it for “publication” or issue an “Office Action” refusal.
You will likely need an experienced trademark attorney to overcome any Office Action refusals. Only a US-licensed attorney can represent you before the USPTO or respond to an Office Action on your behalf.
Once you overcome any refusals (or if none are issued), your application will proceed to the “publication” phase.
The Publication Period is a 30-day period of time during which third party trademark owners or other parties may file an “Opposition” to your registration. If this happens, your church will then be in litigation. Trademark attorney required.
If not, or if you successfully overcome any Opposition filed, your application will then proceed to either registration, if you filed an “in-use” (in commerce) application, or will be approved for registration if you filed an “intent-to-use” (not yet in commerce) application.
Once your church’s trademark is registered, you will then need to renew it every so many years to continually prove its ongoing use in commerce.
If you cease to use a trademark in commerce, you lose it.
Why Should a Church Register a Trademark? Discuss with a Michigan Trademark Attorney
Churches and other houses of worship can be complex enterprises with valuable brands.
Just like any other business.
A registered trademark gives your church the legal standing to sue infringers in Federal Court. It stops new trademark registration applications that may infringe or confuse your parishioners from registering at the USPTO level. It ensures that the brand retains and builds value.
Discuss additional trademark registration benefits and to discuss your own church’s potential trademark registration with an experienced Michigan trademark attorney.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios in all industries and in all states with trademark registration, trademark renewal, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration, Letter of Protest, or Opposition success.