O’ SCANNLAIN, Circuit Judge: In this trademark case, we must decide whether an organization dedicated to providing a secular alternative for thoseseeking recovery from alcohol and drug dependency established secondary meaning in its name sufficient to exclude othersfrom using a nearly identical mark. I This appeal involves a dispute between parties who assert competing claims for the exclusive right to use the names”Secular Organizations for Sobriety” and “SOS” in conjunction with alcohol and drug dependency meetings. Thesemeetings are designed to provide a secular alternative to programs, such as Alcoholics Anonymous, that emphasizereligious and spiritual means to recovery. The parties have all been involved in what they describe as a grass rootsmovement to develop and encourage these secular alternatives. The movement began in the 1980s, and the parties beganorganizing meetings on an informal and voluntary basis some time before any of them adopted a specific legal frameworkor asserted any formal claims of ownership. This appeal is an outgrowth of the parties’ attempts to assert legal claims tothe marks used in connection with the secular sobriety movement. In the early and mid-1980s, James Christopher began advocating a secular approach to self-help groups formed tosupport persons with drug and alcohol problems who wished to become sober. In 1984, in an article published in thequarterly journal Free Inquiry, Christopher initially dubbed the movement “SSG” for “Secular Sobriety Groups.” FreeInquiry was the publication of an organization called the Council for Democratic and Secular Humanism (“CODESH” ).At the suggestion of Paul Kurtz, the editor of Free Inquiry, the movement later came to be called the “SOS movement” or”Secular Organizations for Sobriety.” The first appearance of those terms in any document associated with CODESHoccurred in the spring of 1988 with the publication of Volume 1, Number 1, of the SOS National Newsletter. In March 1988, Janis Goodall organized the first SOS-type meeting in the San Francisco Bay Area, in El Cerrito.Goodall maintained frequent contact with and received assistance from Christopher. On May 25, 1988, the San FranciscoChronicle published an article about the El Cerrito meeting, referring to the terms “SOS” and “Secular Organizations forSobriety” multiple times. Christopher was identified as the founder of this movement, but CODESH was not mentioned. Shortly thereafter, in early 1988, the local groups that made up the SOS movement in California grew in number due inlarge part to the efforts of individual organizers like Goodall and Hubert Michael Lenihan. At this point in time, there wasno central office or governing organization for the movement. Christopher did operate what was referred to as the “SOSNational Clearinghouse” out of his apartment in Los Angeles with an answering machine and a post office box. Thisclearinghouse produced a newsletter, with some financial support from CODESH beginning in 1988, but Christopherrepeatedly emphasized the independence of the various SOS groups. In one issue of the newsletter, he wrote: The SOS National Clearinghouse is not a “central office” from which all edicts flow. Nor does it control the actions and operations of the local groups. The SOSClearinghouse acts as a facilitator for the movement, addressing individual questions, preparing resource material for useon the local level, and getting the word out to the media, treatment professionals, and others concerned with recovery. SOS Nat’ l Newsletter Vol. 3, No. 2. The SOS movement was informally structured with great autonomy of the local groups and no acknowledgments bindingthose groups together into a national organization. Anyone who wished to establish such a group could do so simply byplacing an advertisement in a newspaper and arranging for a place to convene. By 1990, approximately twenty SOSgroups operated in Northern California on a volunteer basis, drawing moral support and guidance from Christopher’ sbooks and the SOS newsletter. Christopher and CODESH encouraged such independent operations. In the spring of 1990, area representatives from Northern California grew increasingly disaffected with Christopher andCODESH because of the pace of the movement’ s growth and Christopher’ s lack of organization. Accordingly, theserepresentatives — including Goodall and Defendants Nancy Clark and Michael Lenihan — held meetings to discussorganizational concerns. One such meeting, in June 1990, was attended by Christopher. At that meeting, therepresentatives, including Goodall, expressed their dissatisfaction with Christopher and his recent acceptance of a salariedposition with CODESH. Christopher did not renounce his ties to CODESH and, after the meeting, moved to Buffalo,New York, to work for CODESH. He did not communicate with the Northern California groups again until late 1992. After Christopher’ s departure, the Northern California groups voted in July 1990 to proceed with regional organization inorder to help the organization grow. They formally incorporated as a non-profit membership corporation, under the nameof SOS-West Secular Organizations for Sobriety, Inc. (“SOS-West” ), in January 1991. One month later, in February1991, Christopher and CODESH incorporated Secular Organizations for Sobriety, Inc. (“SOS Inc.” ) without input fromany of the local groups. SOS Inc. was controlled through a board of directors composed entirely of CODESH members,including Christopher. No Northern California SOS groups are members of SOS Inc. or CODESH. They have neverpaid dues to SOS Inc., signed any charters or agreements with SOS Inc., or voted to authorize SOS Inc. or CODESH toact on their behalf. In October 1990, a few months before the two entities incorporated, and without the knowledge of the NorthernCalifornia SOS groups, CODESH applied to the Patent and Trademark Office (“PTO” ) for federal registration of theterm “Secular Organizations for Sobriety.” When CODESH applied to register the mark, it knew that the term had beenused openly and freely by many local SOS groups in Northern California since early 1988. The PTO issued the federalregistration of “Secular Organizations for Sobriety” to CODESH on August 18, 1992. On August 25, 1994, CODESHassigned the mark and goodwill to SOS Inc. SOS-West obtained a California state trademark registration for “SOS WestSecular Organizations for Sobriety, Inc.” on March 17, 1993. SOS Inc. has recently relocated to California from NewYork to solicit funds and members. On October 31, 1994, Plaintiffs-Appellants SOS Inc. sued Defendants-Appellees Hubert Michael Lenihan, NancyClark, John Ullrich, and SOS-West for trademark infringement and unfair competition in violation of the Lanham Act, 15U.S.C. � � 1114, 1125(a), and for violation of similar provisions of the California Business and Professions Code, Cal.Bus. & Prof. Code � � 14300, 14330. SOS Inc. sought an injunction to bar SOS-West from using the marks “SecularOrganizations for Sobriety,” “SOS,” and “SOS-West.” Lenihan, Clark, Ullrich, and SOS-West deny SOS Inc.’ s claim to a valid mark and counterclaim for violations ofCalifornia Business & Professions Code provisions governing unlawful use of corporate names, � � 14415, 14402, andunfair competition, � 17200. Defendants Appellees further counterclaim for cancellation of SOS Inc.’ s federal trademarkregistration and fraudulent trademark registration under 15 U.S.C. � 1120, and seek injunctive relief. The United States District Court held a four-day bench trial in February 1997 and, on August 27, 1997, issued itsFindings of Fact and Conclusions of Law. The court ruled against SOS Inc. on all of its claims, and granted an injunctionin favor of SOS-West forbidding SOS Inc. from using the disputed marks in Northern California, but rejected SOS-West’s counterclaim to cancel SOS Inc.’ s federal registration. The district court entered a final judgment on February 27, 1998. SOS Inc. filed a timely notice of appeal, and SOS-West filed a timely cross-appeal. II SOS Inc. challenges the final judgment entered by the district court after trial. Specifically, SOS Inc. challenges two of thedistrict court’ s findings of fact; we review such findings for clear error. See, e.g., Pacific Telesis Group v. InternationalTelesis Communications, 994 F.2d 1364, 1367 — 68 (9th Cir. 1993). In other words, we must accept the trial court’ sfindings unless we are left with the definite and firm conviction that a mistake has been made. Id. SOS Inc. has not directlychallenged the district court’ s conclusions of law, but to the extent that its appeal implicates legal conclusions, this courtreviews them de novo. See, e.g., Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902,906 (9th Cir. 1995). III In order for SOS Inc. to prevail on its trademark claim, it must demonstrate that it was the first user of the disputedmarks or, in the alternative, that if SOS-West was using the marks first, it was doing so as a related entity and the benefitsof any such use should therefore inure to SOS Inc. The district court found against SOS Inc. in its post-trial August 26,1997 Findings of Fact and Conclusions of Law, determining that SOS-West established prior use. We agree. It is clear that neither party had established any rights to the marks prior to early 1988. Although the phrases “SecularOrganizations for Sobriety” and “SOS” may have been conceived before that time, neither term was used in commerceuntil early 1988. A fundamental tenet of trademark law is that use of a mark in commerce in connection with products orservices creates rights under state and federal law. See 2 J. Thomas McCarthy, McCarthy on Trademarks and UnfairCompetition � 16.01 (4th ed. 1996) (“The way to obtain rights in a business symbol is to actually use it as a mark.” ).Second, the members of SOS West were the only parties in Northern California actively using the mark there as of 1988.Indeed, at that time, SOS Inc. did not even exist, and would not for another three years. An identifying mark is capable of being protected under the trademark laws if it is either inherently distinctive or if it isdescriptive and has acquired distinctiveness through secondary meaning. See, e.g., Kendall-Jackson Winery, Ltd. v. E. &J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998). In this case, the terms at issue are descriptive rather thandistinctive, and SOS Inc., as plaintiff, had the burden of demonstrating that it had established secondary meaning in themarks. See Yamaha Int’ l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1578-80 (Fed. Cir. 1988). If SOS Inc. hasnever used the marks in commerce, it cannot establish this requisite secondary meaning. In fact, SOS Inc. did not use the marks at issue in commerce prior to SOS-West’ s use. First, CODESH — SOS Inc.’ spredecessor in interest — did not present any evidence of its use of the marks between 1985 and 1990. In those years,CODESH simply provided Christopher with a modicum of financial support for his newsletter, but it did not organize anySOS meetings. The first use of these marks outside of Christopher’ s inaugural newsletter took place in the spring of 1988,when Janis Goodall used them to promote the initial Northern California SOS meeting in El Cerrito. Plaintiffs did not provethat Goodall was aware of this newsletter before she held her meeting. Second, CODESH has used the terms only in its quarterly newsletter. CODESH has never held any SOS meetings inNorthern California or elsewhere and therefore has not used the marks in connection with these services. The newsletteritself was published only occasionally during the two years preceding CODESH’ s application to register the federaltrademark. This manner of use is inadequate to establish secondary meaning for the purposes of trademark protection. See15 U.S.C. � 1052(f) (requiring five years of continuous and exclusive use for prima facie evidence of the development ofsecondary meaning); Old Swiss House, Inc. v. Anheuser-Busch, Inc., 569 F.2d 1130, 1133 (C.C.P.A. 1978) (notingthat the publication of twelve articles in various publications is public exposure insufficient to have a significant impact onthe public). Thus, CODESH’ s use of the mark did not establish secondary meaning because it was not sufficiently lengthy nor was itexclusive, given the mark’ s use by SOS-West’ s predecessors. The district court was therefore correct to determine thatno evidence suggests that CODESH had established any secondary meaning in the descriptions “SOS” or “SecularOrganizations for Sobriety” as of 1988. None exists after that date either. Indeed, the record demonstrates that it was thepredecessors to SOS-West who had established secondary meaning in the mark in Northern California. Goodall, Lenihan,and their associates, invested serious time and effort into developing the marks from 1988 to the present. They workedardently and without pay to build membership, acquire meeting places, create literature, and network with other groupsand spend thousands of dollars in operating costs. The district court’ s first factual finding, attributing prior use to theSOS-West predecessors, is not erroneous at all, let alone clearly so. IV SOS Inc.’ s argument in the alternative is equally defective. SOS Inc. contends that the Northern California groups thateventually became SOS-West used the mark under the auspices of SOS Inc., and SOS Inc. should therefore be able toderive the benefit of that use, as it would if the groups were its subsidiaries, in its contentions of sustained ownership.Under the doctrine of “related companies,” the first use of a mark by a person “controlled by the registrant or applicant forregistration of the mark” shall inure to the benefit of the controlling entity. 15 U.S.C. � 1055; see also In re Wella A.G.,787 F.2d 1549, 1551 (Fed. Cir. 1986). The district court did not find that CODESH was related to the NorthernCalifornia predecessors of SOS-West and thus concluded that this doctrine was not available to SOS Inc. We agree withthe district court’ s conclusion. The related companies doctrine requires a showing of a substantial relationship between appellants and appellees. See 15U.S.C. � 1055. The record reveals very little relationship whatsoever and certainly none that satisfies the “relatedcompanies” doctrine. Not so long ago, SOS Inc. evidently agreed. In its initial complaint, SOS Inc. alleged thatSOS-West and its predecessors were never “a licensee, branch, chapter, section, division, or subdivision of plaintiffSECULAR ORGANIZATIONS FOR SOBRIETY, INC. and there is no connection between plaintiff and the saidcorporation.” Complaint at 3, � 8. Apparently upon further research, perhaps having discovered the related companiesdoctrine, SOS Inc. then filed an amended complaint alleging the precise opposite, that SOS-West “was a licensee andaffiliate of plaintiff SECULAR ORGANIZATIONS FOR SOBRIETY, INC. until approximately November 1, 1992.”First Amended and Supplemental Complaint at 4, � 8. Apart from this naked about-face, the record is replete with evidence that there was no control exerted by CODESHover the Northern California groups. Numerous documents circulated by plaintiffs demonstrate how loose were itsconnections to the meeting groups. A guidebook for SOS meeting group leaders, for instance, included the followingpassage: All statements made in this handbook are meant only as guidelines, as suggestions for your consideration. If your group is started on an autonomous basis, free from anyinhibiting entanglements, it can continue to experiment, to modify, to innovate as it grows. You, its members, are free toshape your meetings to fit your needs. SOS Guidebook at 1. Again, there were no articles or bylaws binding the local groups to any national organization, and nofinancial connection between the entities. SOS Inc.’ s claim of an implied license is utterly devoid of merit. We reject it anduphold the district court’ s rulings on these trademark claims. V As for SOS-West’ s counterclaim to cancel SOS Inc.’ s federal trademark, we are unable to render a decision on thispoint because of the absence of an initial ruling on the matter by the district court. Having assumed that its injunction hadsettled the matter, the district court chose not to address the issue of a federal trademark. We agree with SOS-West’ sargument, however, that the resolution of the cancellation claim in its favor would have granted it rights and remedies nototherwise provided by the claims the district court resolved. Had SOS-West prevailed on its trademark cancellation claim, it would have enjoyed greater legal benefits than it receivedfrom the mere determination that it had established prior use. See Wiener King, Inc. v. Wiener King Corp., 615 F.3d512, 522-25 (C.C.P.A. 1980). Those additional benefits do, indeed, insulate its cancellation claim from mootness. See,e.g., Murphy v. Hunt, 455 U.S. 478, 481 (1982). Had the district court proceeded to rule upon the cancellation claimand done so in SOS-West’ s favor, SOS-West would consequently be able to expand its use of the marks beyond itscurrent boundaries. See 4 McCarthy � � 26:40, 26:53. The district court’ s ruling, as it now stands, allows for SOS-Westto use the marks, but only in the area in which it had established prior use. SOS-West is correct, then, to argue thatprevailing on a cancellation claim affords it greater benefits than on the claims on which it did succeed. Those additionalbenefits mean that the federal cancellation claim is not moot and that the district court should have decided the question. Although the record contains a helpful collection of facts relevant to SOS-West’ s trademark cancellation claim, we arenot confident that the record is fully developed on that issue. We therefore remand this claim to the district court for furtherappropriate proceedings and entry of judgment accordingly. VI The evidence in the record persuades us that the district court did not clearly err in ruling against SOS Inc. and in favor ofSOS-West on the issue of prior use. We are even more convinced that the district court ruled correctly in determining thatno implied license existed between the parties. We conclude, therefore, that SOS-West sufficiently demonstrated prior useof the marks “SOS” and “Secular Organizations for Sobriety” to establish secondary meaning in them and, accordingly, weaffirm the district court. As to SOS-West’ s counterclaim, however, we remand the matter to the district court to permit itto make its own ruling. AFFIRMED IN PART; REMANDED IN PART. Costs in favor of SOS-West. :::FOOTNOTES:::
FN1 The panel unanimously finds this case suitable for decision without oral argument. See Fed. R. App. 34(a).
Secular Organizations for Sobriety v. Ullrich SECULAR ORGANIZATIONS FOR SOBRIETY, INC., Plaintiff-counter- defendant-Appellant, v. JOHN E. ULLRICH; DOLLY MANZI; ROCKY V. ORTEGA, Defendants-Appellees, HUBERT MICHAEL LENIHAN; NANCY CLARK; SOS WEST, SECULAR ORGANIZATIONS FORSOBRIETY, INC., Defendants-counter- claimants-Appellees. No. 98-15143 D.C. No. CV-94-03803-SI SECULAR ORGANIZATIONS FOR SOBRIETY, INC., Plaintiff-counter- defendant-Appellee, v. JOHN E. ULLRICH; DOLLY MANZI; ROCKY V. ORTEGA, Defendants, and HUBERT MICHAEL LENIHAN; NANCY CLARK, Defendants-counter-claimants, v. SOS WEST, SECULAR ORGANIZATIONS FOR SOBRIETY, INC., Defendant-counter- claimant-Appellant. No. 98-15317 D.C. No. CV-94-03803-SYI SECULAR ORGANIZATIONS FOR SOBRIETY, INC., Plaintiff-counter- defendant-Appellee, v. JOHN E. ULLRICH; DOLLY MANZI; ROCKY V. ORTEGA, Defendants, HUBERT MICHAEL LENIHAN; NANCY CLARK, Defendants-counter-claimants, and SOS WEST, SECULAR ORGANIZATIONS FOR SOBRIETY, INC., Defendant-counter- claimant-Appellant. No. 98-15407 United States Court of Appeals for the Ninth Circuit D.C. No. CV-94-03803-SI Appeals from the United States District Court for the Northern District of California Susan Yvonne Illston, District Judge,Presiding Submitted February 14, 2000
[FOOTNOTE 1] San Francisco, California Before: Betty B. Fletcher, William C.Canby, Jr., and Diarmuid F. O’ Scannlain, Circuit Judges. COUNSEL James L. Monroe, Canton, New York, for the plaintiff-counter-defendant- appellant-cross-appellee. Bernard A. Burk, M. Patricia Thayer, Duane R. Valz, Howard, Rice, Nemerovski, Canady, Falk & Rabkin, SanFrancisco, California, for the defendant-counter-claimant- appellee-cross-appellant. Filed May 25, 2000
