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South Carolina Bishops Take TM Dispute to the Fourth Circuit

Friday, February 14, 2014
Feb. 12 — Four service marks registered with the South Carolina Secretary of State and owned by the Protestant Episcopal Church in the Diocese of South Carolina are at issue in a dispute between two bishops and their respective factions in an appeal filed Feb. 11 with the U.S. Court of Appeal for the Fourth Circuit, vonRosenberg v. Lawrence, No. 14-01122 (4th Cir., appeal filed Feb. 11, 2014).

One of the bishops, the Right Reverend Charles G. vonRosenberg, filed a complaint against another bishop, the Right Reverend Mark J. Lawrence, asserting Lanham Act claims of trademark infringement and false advertising against Lawrence and his followers for their continued use of the Diocese's marks following Lawrence's renouncement of his ordained ministry in The Episcopal Church. Following his renouncement, Lawrence was removed as Bishop of the Diocese and vonRosenberg was subsequently elected to the position. Lawrence and his followers, however, claimed exclusive ownership of all Diocesan property in their possession, including the service marks.

The U.S. District Court for the District of South Carolina declined to issue a preliminary injunction and declined to exercise jurisdiction over the complaint, giving deference to a pending state court action between the parties. “Bishop vonRosenberg's requests for injunctive relief and costs based on alleged violations of the Lanham Act do not limit this Court's discretion to abstain from exercising jurisdiction over the entire action under” the applicable standards, the district court said. vonRosenberg's appeal challenges the district court's decision to give deference to the state court given the existence of Lanham Act claims.

District court's order available at http://www.bloomberglaw.com/public/document/vonRosenberg_v_Lawrence_et_al_Docket_No_213cv00587_DSC_Mar_05_201.

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