First Independent Church of Scientology has filed a new trademark application.
First Independent Church of Scientology has filed a new trademark application.
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4805:4inrk7.2.2
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Word Mark FIRST INDEPENDENT CHURCH OF SCIENTOLOGY
Goods and Services IC 045. US 100 101. G & S: SPIRITUAL MINISTRY SERVICES
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 01.01.02 - Star - a single star with four points
24.13.25 - Cross, ankh; Cross, Maltese; Other crosses, including ankh, Maltese
26.01.21 - Circles that are totally or partially shaded.
Serial Number 86905517
Filing Date February 11, 2016
Current Basis 1B
Original Filing Basis 1B
Owner (APPLICANT) FONDA, James R. INDIVIDUAL UNITED STATES 655 N. Central Avenue, 17th Floor Glendale CALIFORNIA 91203
Attorney of Record Raymond R. Tabandeh
Description of Mark The color(s) light blue and dark blue is/are claimed as a feature of the mark. The mark consists of A larger circular shape with darker blue circumference, a smaller circular shape with lighter blue circumference located inside the larger circular shape, a cross shape inside of the smaller circular shape with white outer perimeter and darker blue inner perimeter, the cross shape having a star shape of the same colors at its crossing. The words FIRST INDEPENDENT CHURCH OF SCIENTOLOGY in dark blue being located to the right of the circular design.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE
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A non-final office action has also been issued with regard to this application:
http://tsdr.uspto.gov/#caseNumber=86905517&caseType=SERIAL_NO&searchType=statusSearch
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US Serial Number: 86905517
Application Filing Date: Feb. 11, 2016
Filed as TEAS RF: Yes Currently TEAS RF: Yes
Register: Principal
Mark Type: Service Mark
Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.
Status Date: Mar. 18, 2016
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http://tsdr.uspto.gov/documentviewer?caseId=sn86905517&docId=OOA20160318160137#docIndex=1&page=1
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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 3/18/2016
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
PRIOR-FILED APPLICATION(S)
The filing dates of pending U.S. Application Serial Nos. 86336991, 86336984, 86339615, 86336978, 86335732, 86336981, 86336980, 86336979, 86335735, 86338294, 86339617 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).
See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208
et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4674470, 4533003, 2717563, 2678135, 1342353, 1329474, 1318717, 1306997, 1540928, and 0898018. Trademark Act Section 2(d), 15 U.S.C. §1052(d);
see TMEP §§1207.01
et seq. See the enclosed registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.
See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing
On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the
du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260;
In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003);
see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.
See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);
In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01
et seq.
Comparison of the Marks
The applicant’s mark is FIRST INDEPENDENT CHURCH OF SCIENTOLOGY.
The registrant’s marks include the typed drawing, SCIENTOLOGY, and an entire family of marks prominently including the wording, SCIENTOLOGY -- owned by the same entity.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”
In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing
In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007));
In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.
See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);
In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.
See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. In this case the wording, “SCIENTOLOGY,” is the distinctive and dominant wording in creating a commercial impression.
Adding a term to a registered mark, for instance, merely descriptive terminology, “first independent church,” generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).
See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar);
In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar);
In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
The overall commercial impression of the marks is the same.
Comparison of the Services
The applicant’s services are “spiritual ministry services.”
The registrant’s goods and services include religious and ministerial services, education and information in the field of religion and philosophy, and books, films, videos, booklets, pamphlets, etc., in the field of the registrant’s services.
The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion.
See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000);
Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting
7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the respective parties that is required to support a finding of likelihood of confusion.
In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009);
In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
In this case, the goods and services are related religious and ministry goods and services. The marks create the impression that the goods and services emanate from a common source. Consumers are likely to be confused into thinking that the applicant’s and registrant’s services emanate from the same source.
Registration is therefore denied.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Applicant should note the following additional ground for refusal.
REFUSAL – FALSE ASSOCIATION
Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with the religion or Church of Scientology. Although religion or Church of Scientology is not connected with the services provided by applicant under the applied-for mark, Scientology is so famous that consumers would presume a connection. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §1203.03, (c). See generally Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).
Under Trademark Act Section 2(a), the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols” is prohibited.
In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013). To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:
(1) The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.
(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.
(3) The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.
(4) The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.
In re Pedersen, 109 USPQ2d at 1188-89;
In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i);
see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).
If applicant’s goods and/or services are of a type that the named person or institution sells or uses, and the named party is sufficiently famous, then it may be inferred that purchasers of the goods and/or services would be misled into making a false connection of sponsorship, approval, support or the like with the named party.
See, e.g.,
In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1647-48 (TTAB 2015) (holding ROYAL KATE used with applicant’s consumer products, including fashion products, suggested a connection with Kate Middleton would be inferred because evidence showed that Kate Middleton, by virtue of being the wife of Prince William of the British Royal family, has become a celebrity and fashion trend-setter the media reports on, including the clothes she wears, what she does, and what she buys);
In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (holding WESTPOINT used with applicant’s firearms suggested sponsorship, approval, support or the like from West Point because evidence showed that West Point is a well-known U.S. Military Academy).
The fact that purchasers would realize, at some point after purchase, that no connection exists between the listed goods and/or services and the person or institution falsely connected, is not relevant. The focus is on “the initial reaction or impact of the mark when viewed in conjunction with the applicable goods or services.”
In re U.S. Bicentennial Soc’y, 197 USPQ 905, 906 (TTAB 1978) (internal punctuation omitted) (quoting
In re Nat’l Intelligence Acad., 190 USPQ 570, 572 (TTAB 1976)).
In this case, the dominant portion of the applicant’s mark is “Scientology,” the same as the renowned Church of Scientology. The mark would be immediately associated with Scientology such that it would point uniquely and unmistakably to the institution of Scientology. The Church of Scientology is not connected with the applicant. See attached blog article downloaded from the Religious Liberty League’s website,
http://religiouslibertyleague.org/new-legal-entity-first-independent-church-of-scientology/.
Scientology is of such a nature that a connection with such person or institution would be presumed when applicant's mark is used on its goods and/or services. Scientology was coined and was established as a religion by founder L. Ron Hubbard over fifty years ago. The famous author of the New York Times best seller,
Dianetics, "found himself studying the human spirit to answer the question of who or what was operating the mind. With this basic and elementary discovery of the human spirit, a new subject was founded: Scientology." See the attached information from
www.scientology.org. According to the Scientology website, it has grown to over 11,000 churches, missions and affiliated groups across the United States and 167 countries. See attached information from the registrant’s website. See also, attached BusinessInsider article documenting the celebrities who are members of the institution who also help to make it a famous institution. Finally, see attached articles downloaded from various new outlets discussing Scientology. A connection with the Church of Scientology would be presumed because the applicant’s ministry is in the field of Scientology.
In conclusion, the evidence demonstrates that (a) the Church of Scientology is a well-known and recognized particular institution, (b) that the use of the “Scientology” wording in the applicant’s mark unmistakably points to that institution, (c) that the institution identified in the mark is not connected with the services performed by applicant under the mark, and (d) that the Church of Scientology is so famous that a connection with such institution would be presumed when applicant's mark is used on its services.
Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with the religion or Church of Scientology
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant responds to the refusal(s), applicant must also respond to the requirement set forth below.
DISCLAIMER REQUIRED
Applicant must disclaim the wording, “First Independent Church,” because it is laudatory and merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark.
See 15 U.S.C. §§1052(e)(1), 1056(a);
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting
In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
The wording, “first,” in the mark is akin to “original.” “Marks that are merely laudatory and descriptive of the alleged merit of a product [or service] are . . . regarded as being descriptive” because “
elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); TMEP §1209.03(k).
The Trademark Trial and Appeal Board has held that the word “original” used alone or paired with descriptive wording is merely laudatory and descriptive of goods or services being the first of their kind. See In re Ervin, 1 USPQ2d 1665, 1666 (TTAB 1986) (holding THE “ORIGINAL” merely laudatory and descriptive of applicant’s scorer for playing euchre as the first of its kind); Gen. Foods Corp. v. Ralston Purina Co., 220 USPQ 990, 994 (TTAB 1984) (holding ORIGINAL BLEND merely laudatory and descriptive of applicant’s cat food comprising a first-of-its-kind combination of ingredients). The word, “first,” is merely laudatory and descriptive of being the earliest, or best, of its kind. See attached dictionary definition.
The wording, “independent church,” merely describes a self-governing religious institution. See attached dictionary definitions. The combination of terms, “first independent church” is laudatory and merely descriptive of an original self-governing religious institution.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. See attached examples of other uses of “first independent” in connection with churches.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “FIRST INDEPENDENT CHURCH” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go tohttp://www.uspto.gov/trademarks/law/disclaimer.jsp.
DESCRIPTION OF THE COLORS IN THE MARK/COLOR CLAIM
Applicant must amend the color claim and mark description to identify all the colors in the mark drawing. See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii). The following colors have been omitted from the color claim: white. In addition, the following colors have been omitted from the mark description: white.
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete mark description for a mark depicted in color must identify all the literal and design elements in the mark and specify where the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. However, if black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
The following color claim and mark description are suggested, if accurate:
Color claim: “The colors light blue, dark blue, and white are claimed as a feature of the mark.”
Mark description: “The mark consists of the following: A larger dark blue circle, a thin white circle, a smaller lighter blue circle shape located inside the larger circular shape, a cross shape inside of the smaller circular shape with white outer perimeter and darker blue inner perimeter, the cross shape having a star shape of the same colors at its crossing. The words FIRST INDEPENDENT CHURCH OF SCIENTOLOGY in dark blue being located to the right of the circular design.”
RESPONSE GUIDELINES
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/rscb/
Robin S. Chosid-Brown
Trademark Examining Attorney
Law Office 102
571-272-9252
[email protected]
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail [email protected]. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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