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Abstract:
Documents from the lawsuit by the NSA vs. the New Mexico covenant-breaker group "The National Spiritual Assembly of the Baha'is of the United States of America Under the Hereditary Guardianship, Inc." for their use of Baha'i names and titles.
Notes:
See also a World Intellectual Property Organization dispute re coventant-breakers' use of the domain uhj.net.

National Spiritual Assembly of the Bahá'ís of the United States vs. New Mexico Covenant-Breakers

published in United States Patent Quarterly, 150, pages 346-356
1966
The case below, as written, is the legal opinion and judgment of the Federal District Court for the Northern District of Illinois issued in 1966. This is the Federal court's legal recognition of the legitimate Bahá'í Faith in the United States and beyond, namely that which is under the control of the Universal House of Justice and the National Spiritual Assembly of the Bahá'ís of the United States.

Initially, the New Mexico Covenant breaking group brought a suit against the National Spiritual Assembly of the Bahá'ís of the United States for title to the Bahá'í Temple in Wilmette and all other properties owned by the NSA throughout the United States. The NSA counter-sued ("counter-claimed") against the New Mexico group for setting up a fraudulent "National Spiritual Assembly" and using Bahá'í trademarks without permission. The NSA won the counter-claim; the New Mexico group suit was tossed out.

Two separate fraudulent groups in the United States continue to ignore the Federal judgment of 1966 using Bahá'í trademarks. A cursory look at telephone directories since 1966 in which the image of the Bahá'í Temple or use the word "Bahá'í" used by these groups bears this out. Their websites continue this violation and provide legal evidence and sufficient proof of their intent to defy not only secular court justice, but also a strict Bahá'í religious law which commands the faithful Bahá'í to obey the government and violate no law or court decision. [-R.S.]


[page 346]

District Court, N.D. Illinois, E. Div.

The National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship, Inc.
v.
The National Spiritual Assembly of the Bahá'ís of the United States of America, Inc.

No. 64 C 1878
Decided June 28, 1966

Trademarks

1. Parties to suit - In general (Section 49.1)
Unincorporated voluntary religious association has legal capacity to bring action for trademark infringement in its common name inasmuch as it is enforcing a substantive right existing under federal trademark laws.

2. Infringement - In general (Section 67.431)
Religious association is entitled to be free of confusion caused by rival association's use of first association's trademarks; confusion damages first association by loss of potential members and donations and by fact that public attributes second association's extreme religious dogma to first association.

3. Registration - Effect (Section 67.747)
Registration gives later users constructive notice under 15 U.S.C. 1072 of registrant's claim of ownership of registered marks.

Action by The National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship, Inc., against The National Spiritual Assembly of the Bahá'ís of the United States of America, Inc., wherein defendant counterclaims for unfair competition and trademark infringement. Judgement for defendant on counterclaim.

Donald S. Frey, Evanston, Ill., for plaintiff.
Jerome Gilson, Dean A. Olds, Theodore T. Scudder, III, William H.
Alexander, and Hume, Groen, Clement
& Hume, all of Chicago, Ill., for defendant.
Austin, District Judge.

Findings of Fact

1. This civil action consists of a counterclaim based upon asserted unfair competition, trademark infringement, dilution of the distinctive quality of counterclaimant's trademarks and trade names, and likelihood of injury to the business reputation of counterclaimant. The action originally began when The National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship, Inc. (hereafter called the New Mexico group) filed a complaint against the against The National Spiritual Assembly of the Bahá'ís of the United States of America (hereafter called the NSA). the NSA filed the present counterclaim against the plaintiff and subsequently, on March 23,1965, the original complaint as amended was dismissed.

2. A second complaint was thereafter filed by the New Mexico group against the NSA in The National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship, Inc. v. The National Spiritual Assembly of the Bahá'ís of the United States of America, 65 C 1647. This complaint as amended was also dismissed, on March 8, 1966. No appeals were taken from either dismissal. the only issues remaining between the parties arise from the counterclaim filed by the NSA in this action.

3. Counterclaimant NSA is not an Illinois not-for-profit corporation, as the caption indicates. It is instead an unincorporated voluntary religious association comprised of nine individual members. Its principal place of business is in Wilmette, Illinois, and its members reside in California, Connecticut, Illinois, Texas, Indiana, and Washington, D.C.

4. Counter-Defendant, the New Mexico group is a not-for-profit corporation which was organized under the laws of New Mexico on March 7, 1964. Its principal place of business is in New Mexico.

5. Federal jurisdiction is predicated upon and exists under 15 U.S.C. Section 1121 and 28 U.S.C. SectionSection1331 and 1338. Jurisdiction also exists by virtue of diversity of citizenship between counter- defendant and counterclaimant, which for diversity purposes is a citizen of the states in which its members reside. The amount in controversy, exclusive of interests and costs, exceeds the sum of $10,000.

6. The Bahá'í Faith is a modern and independent religion. It is unaffiliated with any of the other religions of the


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world, and it has no separate denominations whatsoever. There is no clergy. Administration is through elected bodies at the local, national, and international levels. Elections are democratic in form, except that there is no campaigning or nominating. Bahá'í administrative institutions use a spiritual approach to group consultation to serve the needs of the Faith, and the administrative order may expand and adapt to changing needs. The Faith has members in over two hundred and fifty different countries, dependencies, islands, and territories.

7. The Bahá'í Faith originated in Persia with the teachings of the Bab, who foretold that God would soon make manifest a new Prophet. In 1863, Bahá'u'lláh, a Persian, proclaimed Himself to be that Prophet, and He thereafter engaged in several decades of spiritual teaching and writing. In His lifetime Bahá'u'lláh provided for ultimate establishment of The Universal House of Justice as supreme world authority of the Bahá'í Faith.

8. Bahá'u'lláh died in 1892, designating His eldest son, Abdu'l-Bahá, Spiritual Leader of the Bahá'í Faith. Abdu'l-Bahá, in turn, upon His death in 1921, designated his eldest grandson, Shoghi Effendi, as Guardian of the Faith. When Shoghi Effendi died in 1957, world spiritual authority of the Bahá'í Faith became vested in the Hands of the Cause of God, twenty- seven individuals appointed by Shoghi Effendi as Chief Stewards of the Faith who effectuated the devolution of Bahá'í spiritual authority to The Universal House of Justice. Their interim authority ended in 1963 with the formation of The Universal House of Justice, a nine-member body elected by member of The National Spiritual Assemblies throughout the world. Members presently serve for a five year term. The Universal House of Justice is the exclusive highest authority in the Bahá'í Faith throughout the world, and it has legislative powers on matters not expressly revealed in the Bahá'í scriptures. Shoghi Effendi was the only Guardian of the Bahá'í Faith, and there is no Guardian at the present time and has been none since 1957. The procedures followed by the Hands of the Cause and the succession of authority from Shoghi Effendi to The Universal House of Justice were in full accordance with the controlling documents and sacred writings and teachings of the Faith. The Universal House of Justice is located at the Bahá'í world Center on Mount Carmel, in Haifa, Israel.

9. At the national level, the supreme spiritual authority of the Bahá'í Faith is vest in National and Regional Spiritual Assemblies throughout the world. The National Spiritual Assembly is a nine-member body elected annually by delegates to a National Bahá'í Convention. The delegates are elected according to proportionate representation at annual state or similar conventions. These Spiritual Assemblies, including the NSA, are the highest repositories of spiritual authority in their various areas, owing undivided allegiance to The Universal House of Justice. At the local level, the supreme spiritual authority is vested in Local Spiritual Assemblies, each owing allegiance to the National or Regional Spiritual Assembly of its area. The Local Spiritual Assembly is a nine-member administrative body elected annually on April 21, in every city, town, or judicial district where nine or more adult Bahá'ís reside.

10. In 1891 the Bahá'í Faith was extended to the United States. In 1902 The Bahá'í Publishing Society was organized as an Illinois corporation. In 1909 NSA predecessor the Bahá'í Temple Unity, an Illinois corporation, was organized as highest spiritual authority for the United States. It was succeeded in 1925 by NSA predecessor The National Spiritual Assembly of the Bahá'ís of the United States and Canada, organized as highest spiritual authority for these two countries. In 1948, upon the formation of a separate National Spiritual Assembly for Canada, the present NSA succeeded to all good will and trademark and trade name rights pertaining to the continental United States, and ownership of these rights including registrations has without interruption continued in the NSA down to and including the present time.

11. The NSA is the highest authority of the Bahá'í Faith in the continental United States, and has been recognized and authorized as such by The Universal House of Justice and its predecessor supreme Bahá'í Faith authorities. It has sole and exclusive authority and responsibility for supervising, stimulating and unifying activities of all believers in the Bahá'í Faith in its area, including over 350 Local Spiritual Assemblies. There are eleven incorporated and at least ten unincorporated Local Spiritual Assemblies in Illinois alone, and two incorporated assemblies in New Mexico, one incorporated in 1948.

12. The NSA has both a policy and


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the duty to advance and promulgate the Bahá'í Faith in its area of the world, with the primary emphasis on expanding the number of members of the Faith. The Faith has grown steadily in this country from approximately 6,000 members in 1948 to approximately 15,000 at the present time. From 1960 to the present the total number has almost doubled.

13. The NSA disseminates information about the Faith to the general public in a wide variety of ways. Its chief vehicle is its publishing facility, The Bahá'í Publishing Trust. The Publishing Trust, directly and through its predecessors the Bahá'í Publishing Committee and the Bahá'í Publishing Society, has for decades published and distributed nationwide and in foreign countries numerous books, pamphlets, circulars, and other printed matter concerning the Faith. Many millions of such publications have been distributed gratuitously or sold, approximately 75 percent to the general public and the remainder to the members of the Faith. From 1953 to 1965 approximately 5,250,000 pieces of Bahá'í literature were distributed, and of this total approximately 4,500,000 went to the general public. Dollar sales of that portion sold ranged from $43,000 in 1953 to $120,000 in fiscal 1966.

14. Approximately one hundred and twenty-five different titles published by it are presently being distributed by the Bahá'í Publishing Trust, in addition to approximately twenty-five titles in English language materials published by the Bahá'í Publishing Trust of Great Britain and numerous foreign language works published by other Bahá'í publishing facilities throughout the world. These publications are distributed through the bookstore or directly to visitors in the Bahá'í House of Worship in Wilmette, Illinois, through Local spiritual Assemblies, through university and commercial bookstores, and have been ordered and shelved by both university and public libraries.

15. The Bahá'í house of Worship which is depicted in the following photograph, is the center of the American Bahá'í community.


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[full page photo of House of Worship in Wilmette on page 349]


[page 350]

It has attracted over 1,275,000 visitors since opening to the public in 1943. The NSA formally encourages various groups and the general public to visit the House of Worship and to obtain informational literature and other data pertaining to the Bahá'í Faith. Numerous groups have visited the House of Worship, including school, church and synagogue groups, fraternal organizations, Girl Scouts, Boy Scouts, YMCA and YWCA groups, women's clubs, camera clubs, garden clubs, and many others. Photographs and other representations of the House of Worship are used extensively on Bahá'í literature, and the public has come to identify and to associate the Bahá'í House of Worship with the Bahá'í Faith.

16. The Bahá'í Faith and the House of Worship have had increasing publicity in commercial and educational television and AM and FM radio. The NSA has also sponsored radio announcements in several states in order to bring Bahá'í information to the public. Posters, postcards, slides, audio tapes, videotapes, motion pictures, and photographs publicizing the Faith have been employed by both Bahá'í and non-Bahá'í sources. The NSA has a Public Information Department consisting of several persons whose function is to inform the public, especially the press, about the Faith. "Fact kits" are distributed for reference to newspapers throughout the United States.

17. The Bahá'í Faith and the Bahá'í House of Worship have also been publicized nationally in printed media through newspaper and magazine articles and the like. Coverage has appeared in newspapers such as the New York times, New York Herald Tribune, National Observer, Denver Post, Chicago Daily News, and the Chicago Tribune. Magazine articles about the Faith have appeared in United Airlines' Mainliner Magazine, Kiwanis Magazine, Ebony, The Reconstructionist, and the Christian Century. In most of these instances the NSA or the Bahá'í Publishing Trust has obtained permission from the publisher to reprint the articles, and they have distributed many thousands of such reprints to the public.

18. The NSA, directly and through its various committees and groups, engages in a continuing program of teaching and lecturing on the Bahá'í Faith. Panelists and lecturers are furnished to private, university, and other groups on request. The Faith also conducts Bahá'í summer Schools, open to all persons regardless of race or creed, for study of the Faith. Bahá'í owned schools are located in Eliot, Maine; Geyserville, California; and Davison, Michigan. Other schools are operated at camps or on college campuses in Colorado, New Mexico, Minnesota, South Carolina, Southern California, and Oregon. The Faith also operates the Bahá'í Home for the Aged, Wilmette, Illinois, which is open to all persons over sixty-five. The Bahá'í Service for the Blind maintains two lending libraries and provides Braille editions of the more important Bahá'í books, in addition to talking books and recorded subscriptions to the Bahá'í News. The Bahá'í News is a monthly news circular for members of the Faith, published continuously since December, 1921, when it was designated Bahá'í News Letter; it became Bahá'í News in 1930. The NSA also sponsors for the general public several nationwide special events each year. these include World Religion Day, Race Unity Day, and World Peace Day. The NSA and the Bahá'í International Community have accredited representatives at the United Nations. Contributions to the NSA and the Faith are tax-deductible.

19. The NSA is owner of the following federal trademark registrations granted by the United States Patent Office, all of which are valid and subsisting:


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Arabic Symbol "The Greatest Name"
Registration Number 316,444
Date: August 28, 1934
Goods: Periodical Literature and Printed Books

NATIONAL SPIRITUAL ASSEMBLY OF THE BAHA'IS OF THE UNITED STATES
Registration Number: 794,080
Date: August 10, 1965
Goods: Publications - namely, books, pamphlets, periodicals, and circulars

BAHA'I
Registration Number: 556,004
Date: March 11, 1952
Goods: Publications - namely, books, periodicals, pamphlets, house organs, and news reports

BAHA'I & Design
Registration Number: 806,393
Date: March 29, 1966
Goods: Publications - namely, pamphlets and books

Bahá'í House of Worship Representation
Registration Number: 798,811
Date: November 16, 1965
Goods: Publications - namely, books, pamphlets, house organs, and circulars

These marks, symbols, and names have been used as trademarks and otherwise by the NSA or its publishing facility in interstate commerce in connection with these goods on a substantially continuous basis since the dates shown in the registrations. Prior to the actual registration, and prior to the acts of the New Mexico group here complained of, the NSA and its predecessors had established, by long and widespread use, valuable and protectible common law rights in these symbols and names used in connection with its religious activities in propagating the Bahá'' Faith. these names and symbols have been used on a variety of printed materials including Bahá'í publications, official statements of all types, and newsletters, Since 1948 the NSA letterhead has carried the designation "National Spiritual Assembly of the Bahá'ís of the United States," which designation has been used as a trademark and in a manner of a trade name as a signature on thousands of printed items. the word "Bahá'í" is the salient word in this designation, in "Bahá'í Publishing Trust" and in the names of NSA affiliated Local Spiritual Assemblies, such as "Spiritual Assembly of the Bahá'ís of Santa Fe, Inc."

20. The NSA is also owner of the following state trademark registrations, all of which are valid and subsisting and which cover various publication:

Illinois Registration:
37160
37161
37162

New Mexico Registration:
7037
7036
7035

Trademark

NATIONAL SPIRITUAL ASSEMBLY OF THE BAHA'IS OF THE UNITED STATES
BAHA'I
BAHA'I PUBLISHING TRUST

These marks and names have been in continuous use on publications distributed in Illinois and New Mexico since prior to the acts of the New Mexico group here complained of, and are in use in these and other states at the present time.

21. In 1960 an American, one Mason Remey, proclaimed unilaterally that he was "Hereditary Guardian" of the Bahá'í Faith, Successor to the Persian Shoghi Effendi. Followers of Mason Remey thereafter engaged in certain religious activities in the United States, published newsletter-circulars, and ultimately became incorporated in 1964 as "The National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship, Inc."

22. The New Mexico group upon formation embarked on a program of imitating and copying the administrative structure of the NSA and the Bahá'í Faith, and, of utilizing the names and symbols of the Bahá'í Faith. It regarded itself as the highest authority for the Bahá'í Faith in the


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United States, and it chose the name "The National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship, Inc." as the best way to inform its members, affiliates and the general public of this claimed authority. At the time it chose the name the New Mexico group was fully aware that there was an entirely unrelated organization in Wilmette, Illinois, having the name " National Spiritual Assembly of the Bahá'ís of the United States." In preparing its Articles of Incorporation and By- Laws, it obtained a copy of the NSA Declaration of Trust, published by the Bahá'í Publishing Trust, made certain interlineations and deletions, and copied the remaining portions as its own Declaration of Trust.

23. The New Mexico group and its predecessors have published a newsletter-circular since approximately 1961 under the name "The Glad Tidings." The earlier issues carried a reproduction of the Arabic design "The Greatest Name," subject of NSA federal trademark registration 316,444 and which was used prominently by the NSA on earlier issues of the Bahá'í News Letter. They also carried the legend "A Bulletin of the Bahá'ís Under the Hereditary Guardianship." With the June, 1963, issue the New Mexico group added the phrase "Published and Edited by The National Spiritual Assembly of the Bahá'ís of the United States." This latter phrase was continued in the masthead or flag of the publication until the March, 1965, issue, after the present counterclaim was filed. At that time the legend was changed to "A Bahá'í Bulletin" and the words "of America Under the Hereditary Guardianship, Inc." were added to the aforementioned phrase. Subsequently, the legend "A Bahá'í Bulletin" was dropped.

24. Approximately 25,000 issues of "The Glad Tidings" bearing these designations were published in and mailed throughout the United States including to recipients in Illinois and New Mexico, from Santa Fe, New Mexico during 1963 and 1964. Approximately 1,000 of each issue were so distributed, except that in August, 1964, the total number of each issue distributed was raised to 3,000. The New Mexico group has approximately 170 members in the United States. For purposes of circulating "The Glad Tidings" the New Mexico group has taken names and addresses from various directories published by the NSA, from the NSA Bahá'í News, from personal lists of members of the Bahá'í Faith, and from other sources.

25. The New Mexico group also has published beginning in March, 1963, a periodical entitled "Bahá'í round Robin." These were first published in Largo, Florida, and since August, 1963, in Las Vegas, New Mexico. One hundred and fifty copies of each issue were published, and copies were distributed to addresses located in both New Mexico and Illinois, among other places.

26. The New Mexico group also organized a public relations office "Bahá'í News Bureau," located in Roswell, New Mexico. The Bahá'í News Bureau issued several press releases covering the general activities of the New Mexico group and concerning the litigation filed by the New Mexico group against the NSA. These news releases bore the name "Bahá'í News Bureau" and other designations such as "National Bahá'í Assembly" and "National Spiritual Assembly of the Bahá'ís of the United States Under the Hereditary Guardianship." A press release was issued November 7, 1964, and distributed by the Bahá'í News Bureau to the Chicago Daily News, Tribune, American, and Sun Times. It was also sent to the Christian Science Monitor, New York times, Los Angeles Times, St. Louis Globe Democrat, and Washington Post. In addition, copies of the release were sent to Newsweek, Life, and Time Magazines.

27. The letterhead adopted and used by the New Mexico group consisted of the prominent caption "National Spiritual Assembly, Bahá'ís of the United States." and directly beneath this designation in smaller type the phrase "Under the Hereditary Guardianship."

28. Under the Articles of Incorporation of the New Mexico group, the New Mexico corporation has jurisdiction and authority over the activities of its members and followers, including the so-called Local Spiritual Assemblies affiliated with the New Mexico group. Prior to actual formation of the New Mexico corporation, several such assemblies existed and were active on behalf of the group which ultimately incorporated. On September 19, 1960, eight members of the Spiritual Assembly of the Bahá'ís of Quincy, Inc., notified the NSA of their withdrawal from the Bahá'í Faith administrative order and the pledging of their allegiance to Mason Remey.

29. Subsequently, the Quincy, Illinois, New Mexico group affiliate advertised in the Quincy Herald Whig, a local newspaper, using a representation of


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the Bahá'í House of Worship in the form provided by the NSA to its affiliates for press release an advertising purposes. Upon being notified by the NSA that the use of the House of Worship representation was not authorized by it, the Quincy Herald Whig discontinued use in the advertising. Advertising continued with the headline "Bahá'í World Faith" and the designation "Bahá'ís Under the Hereditary Guardianship." The Quincy group also published and distributed several informational pamphlets pertaining to the Bahá'í Faith. These included "History and Principles of the Bahá'í World Faith" and "The Spirit of the Bahá'í Revelation." Each of these pamphlets bore the designation "Published by the Spiritual assembly of the Bahá'ís of Quincy, Illinois," and on a separate line there appeared the phrase "Under the Guardianship."

30. These groups under the control and jurisdiction of the New Mexico group and which are not affiliated with the NSA have advertised in the Denver Post, the Santa Fe New Mexican, the boulder, Colorado, Daily Camera, and have entered listings in various telephone directories. In certain such directories groups affiliated with the NSA are also listed. In the Quincy, Illinois, telephone directory under "Churches - Bahá'í" there are listed "Bahá'í World Faith, Melrose Township" and Bahá'ís Under the Guardianship." In the Boulder, Colorado, Daily Camera, in an announcement pertaining to church services under the caption "Bahá'í", appear listings for "Bahá'í Community of Boulder" and "Boulder Bahá'í Group." One of these is an NSA affiliate and the other a New Mexico group affiliate.

31. In March, 1962, the Quincy New Mexico group affiliate published a pamphlet called The Impending World Catastrophe. This group identified itself as "The National Spiritual Assembly of the Bahá'ís of Quincy, Illinois, U.S.A., Under the Hereditary Guardianship." The pamphlet also stated that further information was available at the "Quincy Bahá'í Library." In this pamphlet the Bahá'í Faith through Mason Remey is said to foretell an impending shift in the earth's crust which would cause a catastrophe. This catastrophe was predicted to occur "very soon." "It may come at any time after April, 1963." In a similar publication issued by the New Mexico group affiliate "Bahá'ís of Santa Fe Under the Hereditary Guardianship" the catastrophe prediction ascribed to the Bahá'í Faith was in part as follows:

"This global catastrophe will cause certain land areas of the Earth's surface to rise above their present levels while others will disappear below the newly formed seas. These inundations will result in the annihilation of all human life in the submerged regions and this Death and Destruction will be augmented by the sudden extreme changes in temperature at the new Arctic and Antarctic areas. There will be other attending conditions such as earthquakes, the opening up of volcanoes and the crumbling-up of mountain ranges; - all of which, taken together, make up a terrifying picture of the coming of the dreadful day of The lord as prophesied in Holy Writ and which is now being confirmed through scientific studies of these movements of the Earth's crust."

"The fear that the end is near is spreading amongst the peoples of all the world. those who seek physical safety at the high altitudes above sea level will in all probability be safe from the inundations; however, this does not guarantee that they will not suffer greatly. It is prophesied that two-thirds of the people of the world will be killed!"

32. Subsequently, in 1962 the Joplin (Missouri) Globe, the Denver Rocky Mountain News, and the Chicago American ran articles stating that the Bahá'í Faith had predicted that the world would soon be inundated and that only high ground was safe. The American article carried the headline "Disaster after April Forecast by Bahá'í." A smaller headline stated "Records are removed from shrine in Wilmette to Santa Fe as safety precaution against major flood." The article went on to state that "leaders of the Bahá'í Faith are convinced that a great catastrophe will befall the world soon after next April."

33. This article was the result of confusion of the New Mexico group or predecessors with the NSA and the Bahá'í Faith. The NSA does not subscribe to the religious doctrine that the world is shortly to be inundated because of an imminent shifting of the earth's crust. The NSA did not remove any records from the Bahá'í House of Worship to Santa Fe. the NSA was in no way responsible for the article, and it was, with the Bahá'í Faith, greatly embarrassed by the adverse comments stated in the article and subsequently. The article stated that "Four


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leading scientist here disagree with the Bahá'í prediction." Dr. Julian Goldsmith, acting dean of the department of geophysical sciences of the University of Chicago, was reported as saying:

"No one can make a prediction of this kind within many generations of humans. Most of the so-called science cited in these excerpts (articles by the Bahá'ís) has been placed in an inverted pyramid to prove a point."

Upon being informed that the Bahá'í Faith did not espouse the religious doctrine ascribed to it, Dr. Goldsmith stated that "I have always admired the principles behind the Bahá'í Faith, and am, therefore much relieved to know that no hysterical action has resulted from what I consider to be foolishly unsound `predictions.'" For several weeks after the Chicago American article appeared, visitors to the Bahá'í House of Worship inquired about the Bahá'í belief that a disaster was going to occur the following April. This confusion caused substantial irreparable the Bahá'í Faith, the NSA, and their reputation, standing, and good will.

34. Addition cases of actual confusion between the NSA and its affiliates and the New Mexico group and its affiliates occurred when several statements for New Mexico group advertising were sent to NSA affiliate groups by the Denver Post under the description "Bahá'í Faith Current Charges" and "Bahá'í Library Current Charges." In addition, the religion editor of the Denver Post was confused in her belief that an individual affiliate of the New Mexico group was a spokesman for the Bahá'í Faith.

35. In its original complaint in this action and in the complaint in 65 C 1647 the New Mexico group claimed that it was entitled to the Bahá'í House of worship and to all other Bahá'í funds and properties. It claimed that the NSA was a trespasser, and asked the Court to enjoin the NSA possession of the House of Worship and to order delivery of possession to the New Mexico group. the complaint also sought $100,000 in costs and attorneys' fees. The New Mexico group has contended and has expressly stated that there can be only one properly constituted and authorized Bahá'í Faith.

36. The New Mexico group is not connected with the NSA and has no permission or authority from the NSA or the Universal house of Justice to use the trademarks, names, and other symbols of the NSA or to exercise any Bahá'í Faith ecclesiastical authority.

CONCLUSIONS OF LAW

1. There being independent grounds for federal jurisdiction, the counterclaim stands as a separate and independent action under Rule 13 of the Federal Rules of Civil Procedure. Judgement is rendered on the counterclaim pursuant to Federal Rules 13 (i) and 54 (b), the court having jurisdiction so to do where the claims of the opposing party have been dismissed. within Federal Rule 54 (b) the Court expressly determines that there is no reason for delay and expressly directs the entry of judgement on the counterclaim.

[1] 2. the NSA has legal capacity to bring the counterclaim in its common name under Federal Rule 17 (b), inasmuch as it is enforcing a substantive right existing under the trademark laws of the United States.

3. the NSA is owner of the following federal trademarks registrations, which are validly sustaining and in full force and effect, and of the good will appurtenant thereto in connection with a wide variety of publications: 316,444: 556,004; 794,080; 798,811; and 806,393.

4. The NSA is owner of the following Illinois trademark registrations, which are validly subsisting and in full force and effect, and of the good will appurtenant thereto in connection with a wide variety of publications: 37160, 37161, 37162.

5. The NSA is the record owner of the following New Mexico trademark registrations, which are validly subsisting and in full force and effect, and of the good will appurtenant thereto in connection with a wide variety of publications: 7035, 7036, 7037.

6. By virtue of their widespread activities, extensive dissemination of publications, and national publicity, the NSA and the Bahá'í Faith have established invaluable and protectible good will among the general public in increasingly greater numbers. The public has come to recognize the designations "Bahá'í", "National Spiritual Assembly of the Bahá'ís of the United States," "Bahá'í Publishing Trust," representations of the Bahá'í house of Worship, the Arabic design "The Greatest Name," and related terms and symbols, as identifying the NSA and the Bahá'í Faith as administered by the NSA, and no other. These terms and symbols, because of their long and widespread use and dissemination, have attained secondary meaning as relating to and identifying the NSA and the Bahá'í


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Faith as administered by the NSA as the source of numerous publications and religious activities.

7. The NSA's rights to the marks, names, and symbols "National Spiritual Assembly of the Bahá'ís of the United States," Bahá'í Publishing Trust," Bahá'í," representations of the Bahá'í House of Worship, and the Arabic design "The Greatest Name" in connection with the religious activities and publications antedates and is superior to any rights of the New Mexico group to use these marks, names, and symbols in connection with religious activities and publications. The NSA is legally entitled to the protection of these designations.

[2] 8. The use by the New Mexico group and its affiliates of the symbols and names "National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship," "Bahá'í News Bureau," "Bahá'í Round Robin," "the Arabic design "The Greatest Name," representations of the Bahá'í House of Worship, "Bahá'í," and other similar designations which include the word "Bahá'í," has caused actual confusion, and is likely to cause further confusion, deception and mistake. The use of the phrases "Under the Guardianship" or "Under the Hereditary Guardianship" does not reduce or minimize the likelihood of confusion.

9. When publicity about the Bahá'í Faith appears, many inquiries about the Faith are received by the NSA from the general public, and many inquirers ultimately join the Faith. One example was a young sailor who read the above-mentioned Ebony article and who contacted the NSA stating the Bahá'í Faith was just what he was looking for. The NSA and the Bahá'í Faith are legally entitled to continue expanding membership, and are entitled to be free from interference and probable loss of potential members to the New Mexico group because of the use of confusingly similar names and symbols. the general public is likely to assume or believe that the New Mexico group is affiliated with or connected with the NSA, and is likely to join the New Mexico group intending to join the Bahá'í Faith and to attribute publications, press releases and the like originating from the New Mexico group as emanating from the NSA and the Bahá'í Publishing Trust.

10. In connection with the New Mexico group proselyting Bahá'í Faith members with the Glad Tidings, the Faith and the NSA are legally entitled to be free from probable loss of donations or contributions or loss of membership arising from the confusingly similar terms and designations used by the New Mexico group.

11. The unauthorized use of the NSA's trademarks, names, and symbols will enable the New Mexico to trade upon and appropriate to themselves the valuable good will acquired by the NSA in the use of such marks, names, and symbols. The NSA as a religious association is entitled to the protection of the laws pertaining to unfair competition, trademark infringement, dilution and injury to business reputation to the same extent as a non-religious litigant. The good will created by the NSA is, by virtue of the comparative youth of the Bahá'í Faith especially in need of protection. the general public is becoming more and more aware of the Bahá'í Faith, and the growth of the Faith would be irreparably impaired if extreme religious dogma espoused by the New Mexico group were thought to originate with the NSA. The NSA has no control over the actions or doctrines which would, if attributed to the NSA, severely damage the NSA and the Bahá'í Faith in their spiritual progress.

12. The right to use the Bahá'í symbols, names, and marks inheres in the Bahá'í Faith, not in its members. When individuals are not or cease to be members, use by them of the designations of the Faith is misleading and deceptive. There is only one Bahá'í Faith. The NSA is duly authorized by the Universal house of Justice as the highest authority for the Faith in continental Unites States and is entitled to exclusive use of the marks and symbols of the Faith.

13. No question of religious liberty is involved. The New Mexico group has the right to organize and worship according to its dictates, but it has no right in doing so to utilize names and marks which will enable it to appropriate the good will which has been earned by an unrelated organization and to subject the general public to confusion, deception, and mistake.

14. Use by the New Mexico group of "National Spiritual Assembly of the Bahá'ís of the United States Under the Hereditary Guardianship, Inc." and similar terms infringes NSA Federal Registration No. 794,080, and constitutes unfair competition at common law; use of the word "Bahá'í News Bureau," "Bahá'í" in "Bahá'í Round Robin," ," and the like in-


[page 356]

fringes NSA Federal Registration No. 556,004 and constitutes unfair competition at common law; use of the representation of the Bahá'í House of Worship and the Arabic design "The Greatest Name" infringes NSA Federal Registration No. 798,811 and 316,444 and constitutes unfair competition at common law. Infringement of these federal registrations exists under 15 U.S.C. Section 1114 (1). the use of these names and symbols by the New Mexico group and its affiliates constitutes infringement under the Illinois Trademarks Act, Ill. Rev. Stat. Ch. 140 Section 8 et seq. and the New Mexico Trademarks Act, New Mexico Statutes 1953 (anno.) Section 49-4-7 et seq. (1963 Supp.).

15. By virtue of use by the New Mexico group and its affiliates of "National Spiritual Assembly of the United States of America Under the Hereditary Guardianship, Inc.," "Bahá'í Round Robin," " Bahá'í News Bureau," and trademark representations of the Bahá'í House of Worship and the Arabic design "The Most Great Name," and similar terms, there exists within Ill. Rev. Stat. Ch. 140 Section 22 a likelihood of injury to the NSA business reputation and of dilution of the distinctive quality of the marks and trade names utilized by the NSA as indicated above.

[3] 16. At the time it or its predecessors began using the above-identified symbols and names, the New Mexico group or its predecessors had constructive notice under 15 U.S.C. Section 1072 of the NSA claim of ownership of Federal Trademark Registrations 556,004, 316,444, 794,080, 798,811, and 806,393.

17. The New Mexico group has control and authority over its so-called Local Spiritual Assemblies and groups and individuals affiliated with it. These Local Spiritual Assemblies and affiliated groups are acting in concert with and under the control and authority of the New Mexico group in connection with religious activities, including advertising and publications.

18. The NSA is entitled to an injunction enjoining the New Mexico group, its officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them, including affiliated Local Spiritual Assemblies, groups, and individuals, or any of them, from use in their activities of the designations "National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship, Inc.," "Bahá'í News Bureau," "Bahá'í," trademark representations of the Bahá'í House of Worship, the Arabic symbol "The Greatest Name," and any other designation which by colorable imitation or otherwise is likely to be mistaken for or confused with the NSA's name or marks as indicated above or is likely to create the erroneous impression that the New Mexico group's religious activities, publications, or doctrines originate with the NSA or are endorsed by or are in any way connected with the NSA, and from otherwise competing unfairly with the NSA or infringing the rights of the NSA.

JUDGEMENT

It is ordered, adjudged and decreed that the counter-defendant, The National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship, Inc., its officers, agents, servants, employees, attorneys, and all persons in active concert or participation with them, including affiliated Local Spiritual Assemblies, groups, and individuals, or any of them, be and they are hereby enjoined from using in their activities the designations " National Spiritual Assembly of the Bahá'ís of the United States of America Under the Hereditary Guardianship, Inc.," "Bahá'í News Bureau," "Bahá'í Round Robin," "Bahá'í," trademark representations of the Bahá'í house of Worship, the Arabic design "The Greatest Name," and any other designation which, by colorable imitation or otherwise is likely to be mistaken for or confused with the counterclaimant's religious activities, publications or doctrines originate with counterclaimant, and from otherwise competing unfairly with counterclaimant's rights.

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