NOTE TO THE FILE
Sent to TICRS as Serial Number: 76712451SERIAL NUMBER: 76712450
DATE: 01/25/2013
NAME: jwilliston
NOTE:
Searched: Discussed ID with:
Google Senior Atty
Lexis/Nexis Managing Atty
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked: Discussed Geo. Sig. with:
Geographic significance Senior Atty
Surname Managing Atty
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone X Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: Ed Lanquist [mailto:edl@iplawgroup.com]
Sent: Friday, January 25, 2013 3:27 PM
To: Williston, Jennifer
Cc: Ed Lanquist
Subject: RE: U.S. Trademark Application Serial Nos. 76712908; 76712846; 76712737; 76712454; 76712451; and 76712450
Thank you for your email.
Our client can live with all of your proposed changes.
Thank you and please contact us with any questions.
Edward D. Lanquist, Jr.
Waddey & Patterson, P.C.
1600 Division Street, Suite 500
Nashville TN 37203
615-242-2400
615-242-2221 (fax)
edl@iplawgroup.com
NOTICE: This message (with any attachments) is confidential and may constitute an attorney-client or other privileged communication. If you have received this message in error, please notify me immediately by telephone and by electronic mail. Thank you.
From: Williston, Jennifer [mailto:Jennifer.Williston@USPTO.GOV]
Sent: Thursday, January 24, 2013 7:22 PM
To: Ed Lanquist
Subject: U.S. Trademark Application Serial Nos. 76712908; 76712846; 76712737; 76712454; 76712451; and 76712450
Re: U.S. Trademark Application Serial No. 76712908 for the mark ONE CONVERSATION;
U.S. Trademark Application Serial No. 76712846 for the mark LEATHER TOUCH;
U.S. Trademark Application Serial No. 76712737 for the mark BIBLE STUDIES FOR LIFE;
U.S. Trademark Application Serial No. 76712454 for the mark MY STUDY BIBLE;
U.S. Trademark Application Serial No. 76712451 for the mark VITAL TRUTH; and
U.S. Trademark Application Serial No. 76712450 for the mark BUILDIT
Dear Ed,
Further to the message I left with your assistant Joan, I have reviewed the above-referenced applications that you filed for LifeWay Christian Resources of the Southern Baptist Convention and there are a number of issues that must be addressed; however, most should be able to be resolved by Examiner’s Amendment. As such, please let me know if it is acceptable to amend the applications via Examiner’s Amendment as noted below, or, where an identification is at issue, if you have alternative language that would be acceptable.
U.S. Trademark Application Serial No. 76712908 for the mark ONE CONVERSATION
· The wording “downloadable applications” and “downloadable religious materials” is overly broad and must be further clarified.
o Applicant must specify the type of “application” and, if the phrase “downloadable applications” refers to computer software, must specify both the field and function of the software. For example, the wording “downloadable software in the nature of a mobile application for reviewing religious texts and commentary” would be acceptable or “downloadable computer software applications in the nature of religious software which {please specify function of the software}
o Applicant must also specify the nature of its of “downloadable religious materials;” For example, wording such as “downloadable digital religious materials, namely, downloadable audio and video files in the field of religion” would be acceptable
· If accurate, this identification of goods may be amended to “downloadable software in the nature of a mobile application for reviewing religious texts and commentary, compact discs featuring religious materials; and downloadable digital religious materials, namely, downloadable audio and video files in the field of religion” in International Class 9. Please let me know if you authorize an Examiner’s Amendment that reflects the above amendment or includes other language that resolves the above issues with the indefinite wording
U.S. Trademark Application Serial No. 76712846 for the mark LEATHER TOUCH
· It is presumed that applicant’s goods, namely, bibles are made of leather or are leather bound. As such, the term LEATHER is descriptive of applicants goods and must be disclaimed.
· Accordingly, please let me know if it is acceptable to enter an Examiner’s Amendment that enters the following disclaimer statement: “No claim is made to the exclusive right to use “LEATHER” apart from the mark as shown.”
U.S. Trademark Application Serial No. 76712737 for the mark BIBLE STUDIES FOR LIFE
· Applicant must claim ownership of its prior registration for the mark BIBLICAL SOLUTIONS FOR LIFE in U.S. Reg. No. 2873492
· Applicant must indicate that its International Class 9 goods are downloadable or “recorded on electronic media;” merely specifying that the books are electronic is unacceptable because the identification could refer to electronic books that are recorded or downloadable, which are appropriately classified as a good in International Class 9 or the “provision of online publications in the nature of non-downloadable electronic books,” which are appropriately classified as a service in International Class 41.
· In International Class 9 and International Class 16, the phrase “religious workbooks and curriculum” appears, which is acceptable as currently written because the field of the curriculum has not been specified and the phrase could be read to encompass religious curriculum, as well as curriculum that falls into a separate field. As such, this phrase should be amended to “religious workbooks and curriculum in the field of religion” if accurate
· The word “BlueRay” refers to a registered trademark and must be deleted or amended to indicate the generic name for such products
· Please let me know if an Examiner’s Amendment can be issued that makes the following statement: “Applicant is the owner of U.S. Registration No. 2873492” and amends the identification of goods in International Class 9 and 16 as follows “Downloadable Electronic books about religion and bible study, downloadable electronic religious workbooks and downloadable electronic curriculum in the field of religion; Digital materials, namely, prerecorded audio and video, namely, audiotapes, videotapes, compact disc CDs, compact disc DVDs, MP3s, in the field of religion, all featuring religion and Bible study, religious workbooks and curriculum in the field of religion” in International Class 9; “Books about religion and Bible study, religious workbooks and curriculum in the field of religion” in International Class 16.
U.S. Trademark Application Serial No. 76712454 for the mark MY STUDY BIBLE
· The phrase “Providing an interactive website which is accessible through computers and mobile devices and is integrateable with permitted third-party compatible applications” is overly broad and could refer to any website. If the purpose of a website is to provide information, a website is classified by the subject matter of the information provided on the website. For example, “Providing an interactive website which is accessible through computers and mobile devices and is integrateable with permitted third-party compatible applications featuring information about religion” would be appropriately classified in International Class 45. If a website features technology that performs a specific function, those services would be classified in International Class 42. I’d recommend deleting this overly broad language as I believe it is encompassed by the remaining language in the identification “Providing an interactive website which features technology enabling users to enter and access a customizable personal home content page wherein the user can set tool management options, enter personal information, and create, edit and manage personalized notifications and annotations consisting of highlighting and bookmarking, and of adding notes which are downloadable to a pdf, text, or word processing format, and of adding content-to-content shortcut links, which notifications and annotations then subsist as private content within a database library consisting of free and purchased content featuring Bibles, religious commentaries, academic books, dictionaries, videos, video clip lists and books and cross reference tools, and are shareable to social website feeds” Alternatively, the language can be amended to “Providing an interactive website which is accessible through computers and mobile devices and is integrateable with permitted third-party compatible applications featuring information about religion” in International Class 45; however a specimen showing use of these services would be required, along with the required fee of $375 for adding a class to the application.
· The wording, “STUDY BIBLE” is descriptive of applicant’s services which feature one or more “STUDY BIBLE(S).” Accordingly, the term “STUDY BIBLE” must be disclaimed.
· Applicant must claim ownership of its prior registration for MYSTUDYBIBLE.COM in U.S. Reg. No. 4264784.
· Please let me know if it is acceptable to enter an Examiner’s Amendment that enters the following disclaimer statement: “No claim is made to the exclusive right to use “STUDY BIBLE” apart from the mark as shown” and following claim of ownership of the aforementioned prior registration “Applicant is the owner of U.S. Registration No. 4264784” In addition, please let me know if it is acceptable to delete the wording “Providing an interactive website which is accessible through computers and mobile devices and is integrateable with permitted third-party compatible applications” or if you have proposed language that is sufficiently definite.
U.S. Trademark Application Serial No. 76712451 for the mark VITAL TRUTH
· Applicant must claim ownership of its prior registration no. 2618839 for the mark VITAL TRUTH.
· Accordingly, please let me know if it is acceptable to enter an Examiner’s Amendment that makes the following claim of ownership: “Applicant is the owner of U.S. Registration No. 4264784.”
U.S. Trademark Application Serial No. 76712450 for the mark BUILDIT
· The phrase “online tool for curriculum development, selection, and purchasing” is unacceptable as overly broad. Applicant must specify the common commercial name of the services. In the present case “online tool” could refer to a website or online non-downloadable software that is provided online. As such, the nature and functionality of the tool must be clarified.
· Applicant must specify the function of its online software featuring curriculum and also indicated that it is non-downloadable. Downloadable software would be classified as a good in International Class 9, while the repeated use of the word “online in applicant’s identification suggests that the identification refers to services that are appropriately classified in International Class 42.
· If the identification covers goods and services in two classes, applicant must pay the required fee of $375 to add the required fee to application.
· Please let me know if it is acceptable to amend the identification via examiner’s amendment as follows “providing online non-downloadable software for the development, selection and purchasing of curriculum in the field of religion” in International Class 42 or if an amendment to other sufficiently definite wording is preferred.
I look forward to hearing from you. I am also available tomorrow (Friday) via phone from 9-11 a.m. and 2-6 p.m. EST if you would like to discuss some of the more detailed issues raised in this email.
Kind regards,
Jennifer
/Jennifer L. Williston/
Trademark Examining Attorney
Law Office 104
(571) 272-3796
jennifer.williston@uspto.govNotice to trademark applicants and attorneys: Relevant e-mail messages will be uploaded to the official record for the application, as mandated by TMEP Section 709.04-05.