Universal Life Church Monastery Storehouse v. American Marriage Ministries

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSAL LIFE CHURCH MONASTERY
STOREHOUSE,
Appellant
v.
AMERICAN MARRIAGE MINISTRIES,
Appellee
______________________
2022-1744
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91237315.
______________________
Decided: November 22, 2023
______________________
MIKE MATESKY , II, Matesky Law PLLC, Seattle, WA,
argued for appellant.
BENJAMIN J AMES HODGES , Foster Garvey PC, Seattle,
WA, argued for appellee. Also represented by K ELLY ANN
MENNEMEIER , N ANCY V. STEPHENS .
______________________
Before CHEN, CUNNINGHAM , and STARK, Circuit Judges.
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UNIVERSAL LIFE CHURCH MONASTERY STOREHOUSE v.
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CHEN, Circuit Judge.
Universal Life Church Monastery Storehouse (ULC
Monastery) filed a trademark application seeking registra-
tion of the standard character mark GET ORDAINED for
two classes of services: (1) online retail store services; and
(2) ecclesiastical services. American Marriage Ministries
(AMM), in response, filed a notice of opposition to ULC
Monastery’s application at the Trademark Trial and Ap-
peal Board (Board), asserting that, among other things, the
application should be denied because the mark is merely
descriptive and fails to function as a mark as to both clas-
ses of services. The Board issued a final decision sustain-
ing AMM’s opposition on both grounds as to both classes of
services, even though AMM’s briefing focused solely on at-
tacking the applied-for mark in connection with ecclesias-
tical services and did not present any argument with
respect to online retail store services. The Board’s decision
did not acknowledge or address ULC Monastery’s argu-
ment that AMM, by ignoring in its briefing its grounds for
opposition as to ULC Monastery’s online retail store ser-
vices, waived any challenge to these services. ULC Monas-
tery then filed this appeal, contesting the Board’s decision
only as to the online retail store services.
After our court heard oral argument, ULC Monastery
and AMM entered into a settlement agreement with re-
spect to a collateral litigation. ECF No. 51, at 2. The par-
ties then jointly moved for entry of an order (i) reversing
and vacating the Board’s decision sustaining AMM’s oppo-
sition to registration for online retail store services, or, in
the alternative, (ii) remanding to the Board for the purpose
of considering a stipulated motion to amend the application
to remove ecclesiastical services and to vacate the Board’s
decision sustaining the opposition with respect to ULC
Monastery’s online retail store services. Id. The parties,
however, fail to establish any “equitable entitlement to the
extraordinary remedy of vacatur.” U.S. Bancorp Mortg.
Co. v. Bonner Mall P’ship, 513 U.S. 18, 26 (1994). Nor have
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the parties shown why the circumstances surrounding this
appeal necessitate an automatic remand.
After considering the parties’ joint motion and ULC
Monastery’s appeal, we conclude the proper course is to
deny the parties’ joint motion and vacate the Board’s deci-
sion for reasons identified in ULC Monastery’s appeal: the
Board’s failure to explain why AMM’s silence on online re-
tail store services did not constitute waiver.1 Because the
Board did not furnish a reasoned explanation for departing
from its established practice of deeming unargued claims
waived, we vacate the Board’s decision and remand for fur-
ther proceedings consistent with this opinion.
BACKGROUND
I. ULC Monastery’s Mark GET ORDAINED
ULC Monastery uses the mark GET ORDAINED on
websites that provide ecclesiastical services for ordaining
individuals as ministers and websites that provide online
retail store services for selling clothing, anointing oils, and
other ministerial products. ULC Monastery’s multi-class
trademark application sought registration of the mark
GET ORDAINED in two classes of services: (1) online
1 The Trademark Trial and Appeal Board Manual of
Procedures (T.B.M.P.) provides that “[i]f a party fails to ref-
erence a pleaded claim or affirmative defense in its brief,
the Board will deem the claim or affirmative defense to
have been waived.” T.B.M.P. § 801.01 (emphasis added).
In this opinion, we adhere to the T.B.M.P.’s use of the
terms “waive” and “waiver” but note that the terms “forfeit”
and “forfeiture” may more accurately capture the scenarios
the T.B.M.P. aims to cover. See In re Google Tech. Holdings
LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (“Whereas forfei-
ture is the failure to make the timely assertion of a right,
waiver is the intentional relinquishment or abandonment
of a known right.” (internal quotation marks omitted)).
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retail store services in International Class 35 and (2) eccle-
siastical services in International Class 45.2 Opposition
Decision, 2022 WL 500926, at *1.
II. Party Arguments Before the Board
AMM filed a Notice of Opposition, asserting claims that
the mark GET ORDAINED was generic, was merely de-
scriptive, and failed to function as a mark for both sets of
2 International Class 35 relates to services for
“[a]dvertising; business management, organization and ad-
ministration; office functions.” 37 C.F.R. § 6.1 (2023). In-
ternational Class 45 relates to “[l]egal services; security
services for the physical protection of tangible property and
individuals; dating services, online social networking ser-
vices; funerary services; babysitting.” Id.
The complete listings of the services covered in ULC
Monastery’s trademark application are:
On-line retail store services featuring clothing in
the nature of shirts, hats, and stoles, stationery,
business cards, bumper stickers, license plate hold-
ers, badges, pens, pins, musical sound recordings,
bookmarks, bread, aromatic oil, portfolios, and
publications in the nature of books, hand-outs,
workbooks, manuals, brochures, and newsletters in
the fields of religion, spirituality, marriage, law,
and management in International Class 35; and
Conducting religious ceremonies; ecclesiastical ser-
vices, namely, ordaining ministers to perform reli-
gious ceremonies; providing a website featuring
information about religious belief systems in Inter-
national Class 45.
Am. Marriage Ministries v. Universal Life Church Monas-
tery Storehouse, No. 91237315, 2022 WL 500926, at *1
(T.T.A.B. Feb. 17, 2022) (Opposition Decision).
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applied-for services. Id. ULC Monastery’s answer denied
these assertions. Id. AMM and ULC Monastery then fully
briefed the case. Opposition No. 91/237,315, 88 TTABVUE
(AMM’s Main Br.); Opposition No. 91/237,315, 95
TTABVUE (ULC Monastery’s Main Br.); Opposition
No. 91/237,315, 97 TTABVUE (AMM’s Rebuttal Br.).
In its main brief, AMM raised genericness, mere de-
scriptiveness, and failure-to-function arguments that did
not explicitly refer to ULC Monastery’s online retail store
services. For its mere descriptiveness claims, AMM posited
that the phrase “get ordained” “immediately conveys the
availability of the service of ordination” and that “competi-
tors routinely and extensively use ‘get ordained’ in conjunc-
tion with their own ordination services.” AMM’s Main Br.,
88 TTABVUE 34–35. Turning to failure-to-function, AMM
asserted that ULC Monastery’s use of GET ORDAINED
cannot be separated from other source-identifying ele-
ments in ULC Monastery’s logo. Id. at 40–41.
In response, ULC Monastery explained that AMM’s
brief failed to raise any argument against the mark in con-
nection with ULC Monastery’s online retail store services.
ULC Monastery’s Main Br., 95 TTABVUE 13, 21 (“AMM
makes no claim that the GET ORDAINED mark is merely
descriptive of ULC Monastery’s online store services in
Class 35, and has therefore not met its burden with regard
to Class 35.”).
AMM’s rebuttal brief did not address ULC Monastery’s
argument that AMM had failed to carry its burden with
respect to its Class 35-specific claims. Instead, AMM re-
peated its earlier arguments tethered to ordination ser-
vices. See AMM’s Rebuttal Br., 97 TTABVUE 7–13 (“‘GET
ORDAINED,’ even if arbitrary in some contexts, is not ar-
bitrary in the context of ‘ordaining ministers.’”). AMM
then relied on its previous failure-to-function arguments
that GET ORDAINED cannot be a standalone indicator
and presented a failure-to-function theory that GET
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ORDAINED merely “convey[s] an informational message
about services that allow a person to ‘get ordained.’” Id. at
14–16.
III. Board’s Opposition Decision
The Board sustained AMM’s opposition to registration
of ULC Monastery’s mark with respect to both ULC Mon-
astery’s online retail store services in Class 35 and ecclesi-
astical services in Class 45. Opposition Decision, 2022 WL
500926, at *1. The Board found GET ORDAINED unreg-
istrable for being merely descriptive and for failing to func-
tion as a mark. Id. The Board did not reach AMM’s
genericness claims. Id.
As to mere descriptiveness, the Board found that the
mark GET ORDAINED is highly descriptive of both ULC
Monastery’s ecclesiastical services and online retail store
services and therefore ULC Monastery had a “commensu-
rately high” burden for showing acquired distinctiveness.
Id. at *13 (internal quotation marks omitted). Finding that
ULC Monastery failed to meet this burden for showing ac-
quired distinctiveness, the Board sustained AMM’s claims
that ULC Monastery’s mark is merely descriptive. Id. at
*16.
As to failure-to-function, the Board found that GET
ORDAINED failed to function as a mark for ULC Monas-
tery’s online retail store services and ecclesiastical services
because, “consumers will perceive the words ‘get ordained’
as conveying their ordinary meaning”—namely, “to obtain
ministerial or priestly authority, to become invested with
ministerial or priestly authority, or more simply, to become
a minister.” Id. at *8, 10.
In this appeal, ULC Monastery does not contest the
Board’s findings with respect to its Class 45 services. Ra-
ther, ULC Monastery’s appeal is limited to challenging the
Board’s determination that ULC Monastery’s mark is
merely descriptive and fails to function as a mark for its
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Class 35 services. Appellant’s Br. 2–3. We have jurisdic-
tion over ULC Monastery’s appeal under 15 U.S.C.
§ 1071(a)(1) and 28 U.S.C. § 1295(a)(4)(B).
STANDARD OF REVIEW
ULC Monastery argues that under the Board’s proce-
dures, the Board should have deemed waived AMM’s
claims that GET ORDAINED is merely descriptive of or
fails to function as a mark for ULC Monastery’s online re-
tail store services. Appellant’s Br. 14–18. We review the
Board’s failure to consider waiver under the Administra-
tive Procedure Act (APA). The APA requires us to set aside
Board actions that are “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with the law.” 5
U.S.C. § 706(2)(A); see Dickinson v. Zurko, 527 U.S. 150,
152 (1999); On-Line Careline, Inc. v. Am. Online, Inc., 229
F.3d 1080, 1084–85 (Fed. Cir. 2000). When the Board “de-
parts from [its] established precedent without a reasoned
explanation, its decision will be vacated as arbitrary and
capricious.” Fred Beverages, Inc. v. Fred’s Cap. Mgmt. Co.,
605 F.3d 963, 967 (Fed. Cir. 2010). The “reasoned explana-
tion” requirement “ordinarily demand[s] that [the Board]
display awareness that it is changing position.” F.C.C. v.
Fox Television Stations, Inc., 556 U.S. 502, 515 (2009). The
Board may not depart from its prior procedures “sub silen-
tio.” Id.; see also Dillmon v. Nat’l Transp. Safety Bd., 588
F.3d 1085, 1089 (D.C. Cir. 2009) (“This permits us to en-
sure the agency’s prior policies and standards are being de-
liberately changed, not casually ignored.” (internal
quotation marks omitted)). We “look[] only to the reasons
given by the [Board].” Fred Beverages, 605 F.3d at 967.
DISCUSSION
I.
We start with the Board’s practices regarding waiver.
Our review confirms—and the parties do not dispute—that
the Board has an established waiver practice for inter
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partes proceedings. The T.B.M.P., which describes “cur-
rent practice and procedure” for Board proceedings, pro-
vides that “[i]f a party fails to reference a pleaded claim or
affirmative defense in its brief, the Board will deem the
claim or affirmative defense to have been waived.”
T.B.M.P. intro., § 801.01. This waiver practice has further
developed through several of the Board’s binding, prece-
dential decisions.3
The Board’s precedential decision in General Mills, Inc.
v. Fage Dairy Processing Industry S.A. is instructive. 100
USPQ2d 1584 (T.T.A.B. 2011) (precedential). There, the
Board deemed opposition claims directed to one class in a
multi-class application as waived when there was an “ab-
sence of arguments in opposers’ brief as to anything other
than [goods in the non-waived class].” Id. at 1588 n.1. In
finding waiver, the Board indicated that in an opposition
proceeding for a multi-class application, “[e]ach interna-
tional class stands on its own, for all practical purposes like
a separate application, and [the Board] must make deter-
minations for each separate class.” Id.; accord Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1102
(CCPA 1976). The Board thus has an established practice
3 See, e.g., Coca-Cola Co. v. Meenaxi Enterprise., Inc.,
2021 WL 2681898, at *2–3 (T.T.A.B. 2021) (precedential)
(determining that pleaded claims other than misrepresen-
tation of source were waived because they were not pur-
sued in the trial brief); Alcatraz Media, Inc. v. Chesapeake
Marine Tours, Inc., 107 USPQ2d 1750, 1753 (T.T.A.B.
2013) (precedential) (determining that petitioner’s pleaded
descriptiveness and geographical descriptiveness claims
not argued in brief were waived); T.B.M.P § 801.01 n.6 (col-
lecting precedential T.T.A.B. decisions on waiver); see also
T.B.M.P. § 101.03 (“Proceedings before the Board are also
governed, to a large extent, by precedential decisions in
prior cases . . . includ[ing] those of the Board itself . . . .”).
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of considering certain unargued claims to be waived and
has applied this practice to consider claims directed to one
class in a multi-class application to be waived.
ULC Monastery’s application covered both online retail
store services in Class 35 and ecclesiastical services in
Class 45. Neither the mere descriptiveness nor failure-to-
function arguments in AMM’s trial briefs referred to ULC
Monastery’s online retail store services in Class 35. AMM’s
Main Br., 88 TTABVUE 33–34; AMM’s Rebuttal Br., 97
TTABVUE 14–16. And despite ULC Monastery’s clear ad-
monitions that AMM’s opening trial brief failed to address
ULC Monastery’s Class 35 services, AMM in rebuttal did
not once mention these services in its mere descriptiveness
discussion. See ULC Monastery’s Main Br., 95 TTABVUE
21; AMM’s Rebuttal Br., 97 TTABVUE 10–13. Further-
more, AMM’s main brief and rebuttal brief were dotted
with other indicia of AMM’s intent not to address its
Class 35-specific claims.4 We thus agree with ULC Monas-
tery’s reading of AMM’s trial briefing as having failed to
argue or refer to AMM’s Class 35-specific claims.
Finally, we turn to the Board’s action on appeal: the
Board’s decision to consider whether ULC Monastery’s
4 See AMM’s Main Br., 88 TTABVUE 29 (“[S]o long
as AMM proves by a preponderance of the evidence that
GET ORDAINED is generic, is merely descriptive, or fails
to function as a trademark for at least one of the services
in Class 45—e.g., the claimed service of ‘ordaining minis-
ters to perform religious ceremonies’—registration must be
refused for Class 45 in its entirety.”); AMM’s Main Br., 88
TTABVUE 1, 43 (only referring to Class 45 ordination ser-
vices); AMM’s Main Br., 88 TTABVUE 30–33 (presenting
genericness arguments centered on the ordinary meaning
of the phrase “get ordained” in the context of Class 45 ordi-
nation services); AMM’s Rebuttal Br., 97 TTABVUE 7–10
(same).
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mark in connection with Class 35 services failed to function
as a mark and was merely descriptive. We cannot reconcile
the Board’s established waiver practice with that decision.
Despite the Board’s practice of deeming unargued claims
waived and despite the failure of AMM’s briefs to refer to
its Class 35-specific claims, the Board adjudicated these
claims without explaining why it did not consider them
waived.
In sum, we determine that (1) the Board has an estab-
lished practice of considering unargued claims to be
waived, (2) AMM did not refer to or argue any Class 35-
specific claims in its trial briefs, and (3) the Board consid-
ered the Class 35-specific services but did not explain why
it did not consider these claims to be waived in view of its
established waiver practice. We accordingly hold that the
Board acted arbitrarily and capriciously by departing from
its established practice without providing a reasoned ex-
planation for the departure.5 For that reason, we vacate
the Board’s decision as to ULC Monastery’s Class 35-spe-
cific services.
II.
On remand, the Board should explain its decision re-
garding waiver of AMM’s Class 35 claims and, in particu-
lar, square its decision with the practices and procedures
articulated in the T.B.M.P. and in its prior precedential de-
cisions.6 For example, the T.B.M.P. explicitly states, “If a
5 Because AMM withdrew its appellate briefing,
ECF No. 51, at 1, this opinion does not address the merits
of AMM’s arguments in that briefing.
6 The parties represented that, on remand, they in-
tend to file a joint motion to vacate the opposition as to
ULC Monastery’s application with respect to online retail
store services. ECF No. 51, at 2. We understand our
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party fails to reference a pleaded claim or affirmative de-
fense in its brief, the Board will deem the claim or affirm-
ative defense to have been waived.” T.B.M.P. § 801.01.
And the Board in numerous inter partes proceedings has
mentioned a party’s failure to identify, pursue, argue, or
discuss a claim as a sufficient basis for finding that this
party waived the claim.7 In this opinion, we are not decid-
ing if the Board may have a basis for deeming AMM’s
decision to vacate the Board’s decision as it relates to online
retail store services moots the need for such a motion. We
express no views as to the merits of any other motions that
the parties intend to file with the Board to facilitate termi-
nation of this opposition.
7 See, e.g., Illyrian Imp., Inc. v. ADOL Sh.p.k., 2022
USPQ2d 292, *3 n.3 (T.T.A.B. Mar. 29, 2022) (precedential)
(“Inasmuch as Opposer, in its brief, identifies only likeli-
hood of confusion and fraud as the issues before us, we
deem the other purported claims waived.”); Coca-Cola Co.,
2021 WL 2681898, at *1 (“The other pleaded claims that
Petitioner did not address in its briefing are waived.”);
WeaponX Performance Prods. v. Weapon X Motorsports,
Inc., 126 USPQ2d 1034, 1036 (T.T.A.B. 2018) (preceden-
tial) (“Opposer did not pursue this claim at trial or argue it
in its trial brief, and it is accordingly waived.”); Alcatraz
Media, 107 USPQ2d at 1753 (“Insofar as petitioner has not
argued the descriptive or geographically descriptive claims
in its brief, we find, in accordance with the Board’s usual
practice, that those claims have been waived.”); Corpo-
racion Habanos, S.A. v. Guantanamera Cigars Co., 86
USPQ2d 1473, 1474 (T.T.A.B. 2008) (precedential) (“Be-
cause opposer has not discussed its Section 2(e)(1) claim in
its brief, we consider opposer to have waived any such
claim.”); Knight Textile, 75 USPQ2d at 1314 n.4 (“[O]pposer
has not presented any argument in its briefs in support of
this pleaded ground, and therefore is deemed to have
waived it.”).
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opposition to ULC Monastery’s Class 35 application not to
be waived, or for excusing any waiver. Nor are we deciding
the merits of whether ULC Monastery’s application should
be granted with respect to Class 35.
If the Board on remand reconsiders ULC Monastery’s
Class 35-specific services, the Board should ensure that its
analysis has a basis in the record. The Board’s decision
laid out a summary of the relied-on evidence of record. Op-
position Decision, 2022 WL 500926, at *4–7. While this ev-
idence relates to ULC Monastery’s ecclesiastical services,
the Board did not explain its pertinence to ULC Monas-
tery’s online retail store services. Moreover, the Board’s
findings specific to online retail store services lack any ci-
tations to the record. Id. at *7, 11, 13. On remand, for its
mere descriptiveness and failure-to-function analyses with
respect to ULC Monastery’s online retail store services, the
Board should “assure that the requisite findings are made,
based on evidence of record” and “explain the reasoning by
which the findings are deemed to support” the Board’s de-
cision. Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364,
1368 (Fed. Cir. 2017).
CONCLUSION
For the foregoing reasons, we vacate the Board’s deci-
sion with respect to ULC Monastery’s Class 35 services and
remand for further proceedings consistent with this opin-
ion.
VACATED AND REMANDED
COSTS
No costs.
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