Trademark Overreach in Religious Brand Disputes: Drafting Lessons from the Mormon Stories Lawsuit

What the Mormon Stories Trademark Dispute Is Actually About

The Church of Jesus Christ of Latter-day Saints has sued the operator of the long-running "Mormon Stories" podcast, alleging that use of the word "Mormon" in the show's title infringes its registered trademarks. The Electronic Frontier Foundation has urged the court to dismiss the claim, arguing that the podcast's use is a classic case of nominative fair use: the word is used to describe the subject matter, not to pass off the podcast as an official church product. Whatever the court ultimately decides, the dispute is a vivid illustration of a wider problem in brand enforcement: organisations that hold broad trademark portfolios sometimes pursue claims that the law was never designed to support, and in doing so they invite reputational and legal blowback.

For in-house counsel and brand owners, the lesson is not simply "don't overreach." The deeper lesson is that the risk of overreach usually originates in how rights were claimed and licenced in the first place, long before litigation began.

The Clause That Created the Exposure: Overbroad Scope Definitions

Trademark licences and brand-usage policies frequently define the protected mark in the widest possible terms. Counsel drafting on behalf of brand owners understandably want maximum coverage. But when the scope definition includes common descriptive or denominative words, those words cannot reliably be locked away from commentary, criticism or factual reference. Courts in most common-law and civil-law jurisdictions recognise that a trademark cannot be used as a tool to suppress legitimate descriptive use.

In this dispute, the core vulnerability is that "Mormon" has functioned for generations as a widely understood adjective describing a community, a culture and a body of doctrine. A scope clause that treats such a term as exclusively proprietary sets up a mismatch between what the contract claims and what the law actually protects. That mismatch is expensive to litigate and, as the EFF's intervention shows, tends to attract third-party scrutiny that amplifies reputational damage.

What a Tighter Contract Would Have Said

A well-drafted trademark licence or brand-usage policy intended to protect a religious or cultural organisation should do three things that the current posture appears to lack.

First, it should contain a descriptive and nominative use carve-out. This is a clause that explicitly acknowledges the organisation's marks may be used by third parties to identify the organisation itself, its doctrine or its community, provided the use does not suggest official endorsement or affiliation. Paradoxically, including this carve-out in internal policy actually strengthens enforcement against genuinely infringing uses, because it makes the boundary legible.

Second, the permitted-use schedule should distinguish between commercial exploitation of the mark (merchandise, competing services, confusingly similar branding) and editorial or commentary use. These are categorically different risks, and conflating them in a single enforcement programme produces the kind of overbroad claim that attracts EFF-style intervention.

Third, any cease-and-desist template derived from the licence or policy should require internal sign-off against a checklist that includes a likelihood-of-confusion analysis and a fair-use screen. Many trademark disputes that end in costly dismissals or adverse publicity could have been filtered out at the letter stage if the checklist existed.

How Nominative Fair Use Works, and Why It Matters for Drafting

Nominative fair use is the doctrine that permits a party to use another's trademark to refer to the trademark owner's own goods or services, provided: the product or service in question is not readily identifiable without using the mark; no more of the mark is used than necessary; and the use does not suggest sponsorship or endorsement. The doctrine is well established in United States law and has analogues in EU and UK trade mark jurisprudence.

For contract drafters, the practical implication is that any clause purporting to restrict third-party use of a mark must be tested against this doctrine before it is deployed. A licence clause or cease-and-desist demand that ignores nominative fair use is not just legally fragile: it signals to opposing counsel and to courts that the enforcement programme is untethered from legal reality. That signal weakens the organisation's position across its entire portfolio.

The Reputational Calculus: When Enforcement Becomes a Liability

Brand disputes involving religious organisations, cultural communities or public-interest journalism carry an elevated reputational risk that purely commercial trademark cases do not. When an institution with significant public trust sues a podcast operator who is clearly discussing that institution's own subject matter, the optics shift rapidly. The EFF's involvement in the Mormon Stories case has generated coverage that associates the organisation with censorship rather than legitimate IP protection.

This is a calculus that brand counsel must present to leadership before enforcement action is authorised. The question is not only "do we have a legal claim?" but also "what does pursuing this claim signal about how we treat commentary and criticism?" Organisations that can answer both questions confidently are in a far stronger position than those who focus exclusively on the first.

How to Avoid the Same Exposure: A Practical Drafting Checklist

The following steps, taken during the drafting and policy-setting phase, reduce the risk of ending up in the Mormon Stories position.

1. Audit descriptiveness before you register. If a term functions as a common descriptor for a community or category, consider whether registration adds enforceable value or simply creates a false sense of exclusivity.

2. Build fair-use acknowledgements into brand guidelines. Written guidelines that explicitly permit nominative and editorial use create goodwill and reduce the volume of spurious enforcement requests that reach legal.

3. Separate enforcement tiers in your IP policy. Tier one covers confusing commercial use. Tier two covers unauthorised licensing. Tier three covers descriptive or commentary use, which should normally be monitored rather than pursued.

4. Review cease-and-desist templates against a likelihood-of-confusion checklist that requires the drafter to identify the specific public likely to be confused, the channels of trade involved and the degree of similarity. If the analysis cannot be completed, the letter should not be sent.

5. Model the reputational downside. For any enforcement action involving a media outlet, commentator or civil-society organisation, require a short memo on the public-interest dimension before proceedings are issued.

These are not radical reforms. They are the kind of structured governance that distinguishes organisations that manage brand risk from those that create it.