The court fight over the phrase ‘Bad Mormon’
U.S. Patent and Trademark Office considers application by ‘Real Housewives of Salt Lake City’ star Heather Gay. The Church of Jesus Christ of Latter-day Saints opposes it.
Last June, Heather Gay of the TV show “The Real Housewives of Salt Lake City” applied for an official trademark on the term “Bad Mormon,” which is the title of her new book and a brand she wants to print on bottles, mugs and clothing for sale.
Her application with the U.S. Patent and Trademark Office is opposed by The Church of Jesus Christ of Latter-day Saints, which holds trademarks with the office for the terms Mormon, Book of Mormon, Mormon Channel, Mormon Messages, Mormon.org and the Mormon Tabernacle Choir.
The attorney representing the church filed its opposition to the “Bad Mormon” mark in October, according to the public filing.
“Because of the deceptive nature of the mark sought to be registered by (Gay), (the church) and the goodwill symbolized by its Mormon marks will be damaged in a cognizable way and registration of applicant’s alleged mark should be denied,” wrote the church’s attorney, Michael A. Grow, who specializes in intellectual property law at the Washington, D.C., law firm ArentFox Schiff.
In December, Grow filed a motion for a 30-day extension because the sides were engaged in settlement discussions. The trademark trial and review board granted the motion, but the case now is in the discovery and disclosure stage.
“Applicant’s use or registration of Bad Mormon will tarnish and denigrate ... the church, its leaders, its members, its teachings and beliefs, and will otherwise bring opposer church into contempt and disrepute in connection with the goods and services listed in applicant’s application (that) will tarnish the goodwill symbolized by opposer’s Mormon marks,” Grow added.
President Russell M. Nelson reemphasized the use of the church’s official name over the nickname Mormon in 2018, and within a year the church had updated 95% of the its outward-facing references.
That included renaming its famous choir. Today, it is the Tabernacle Choir at Temple Square.
At the time, choir leaders said they would maintain some licensing arrangements under the classic name to retain ownership of it.
The trademark case confirmed that the church continues to follow that strategy. It won’t surrender its Mormon trademarks, Grow said in the filing.
“Even though opposer has emphasized and encouraged use of its official name, opposer has never abandoned its Mormon marks, and these marks are used in connection with a wide variety goods and services offered to adults and younger people,” he wrote.
The church is not contesting the use of the term on Gay’s new book or trying to block the book’s sale. The notice of opposition does seek to block Gay from using “Bad Mormon” to sell other items.
Gay’s application states that she would use it on “mugs, bottle openers, beer mugs, coffee mugs, drinking bottles for sports, plastic water bottles sold empty, sports bottles sold empty, squeeze bottles sold empty, travel mugs” and “clothing, namely, shirts, sweaters, hats, scarfs, pants, shorts, socks, shoes, tank tops, jackets, coats, sweat pants, sweat shorts, sweat jackets and sweat shirts.”
Her application also states she might use “Bad Mormon” as a brand for “entertainment services” like “podcasts in the field of religion, gossip, education, personal growth, current events and social issues.”
The church declined to comment, but its filing notes that it holds the rights to a raft of “Mormon marks” or trademarks.
The U.S. Patent and Trademark Office registered the term “Mormon Tabernacle Choir” to the church in 2003, for example.
Gay was raised as a Latter-day Saint, graduated from Brigham Young University and served a church mission. She subsequently left the church after a divorce and joined “Real Housewives.”
Her application for a trademark was filed by her company, Heathertainment, Inc.
Grow said in the filing that the church is seeking to protect its trademark and name rights for a term “derived from the name of an ancient prophet who compiled and created an abridgement of many historical and religious records that now comprise The Book of Mormon ...”
He said the church’s Mormon marks have been used extensively in media to identify the church, its beliefs and its services for nearly 200 years. The marks have become famous symbols of “extensive goodwill and consumer recognition” built up by the church through the choir, famous church members, its publications and videos and the “I’m a Mormon” campaign, Grow wrote.
The church successfully challenged past attempts by others to trademark the terms “real Mormon” and “Mormon royalty,” the filing stated.
The church filing said that because “Bad Mormon” is virtually identical to the church’s Mormon marks, it would dilute their distinctive quality, deprive the church of the ability to protect its reputation, persona and goodwill and make it more difficult to distinguish the church’s marks, goods and services.
“Applicant’s mark was adopted with an intent to cause confusion, tarnishment and dilution and to falsely suggest a connection or affiliation with or approval or endorsement by opposer or the church,” the filing stated.
“Likelihood of confusion is not diminished by applicant’s use of the word ‘bad’ since the teachings of (the church) are directed to all persons good and bad and one of its primary religious beliefs is that those who have committed bad acts can be redeemed through repentance and adherence to those teachings.”
Gay’s proposed trademark is trying to capitalize on the fame of the Mormon marks registered and controlled by the church and suggests a connection to the church under trademark law. “Bad Mormon” intends to create a false suggestion of connection to the church “by conveying stories of alleged former or existing members of the church behaving immorally, badly or otherwise contrary to the teachings of the church,” the filing stated.
“Bad Mormon” also is a term so close to the marks controlled by the church that allowing its use for commercial gain could cause mistaken identity or deception, especially since Gay’s products and the church’s likely would move among similar markets and consumers, the filing stated.
Gay’s attorneys responded to the church’s filing in December and denied that “Bad Mormon” will cause confusion. They asserted that the church’s marks using the word Mormon are not famous and that “Bad Mormon” is a parody that will be understood by consumers.
Discovery in the case is scheduled to close on July 19.
An oral hearing in the case is scheduled tentatively for May 2024.