To: | JESUS ON BOARD LLC (trademarks@legalforce.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88009404 - JESUS ON BOARD - 1117612 |
Sent: | 10/17/2018 2:39:12 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88009404
MARK: JESUS ON BOARD
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: JESUS ON BOARD LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 10/17/2018
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(a), 2.65(a); TMEP §§711, 718.03.
PRIOR FILED APPLICATION
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 mark in the referenced application. 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.
SECTIONS 1, 2, AND 45 FAILURE TO FUNCTION REFUSAL
Terms and phrases that merely convey an informational message are not registrable. See In re Eagle Crest, Inc., 96 USPQ2d at 1229. Determining whether a term or phrase functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006); TMEP §1202.04. “The more commonly a [term or phrase] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d at 1177 (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
The attached sampling of third-party evidence from
http://church.lambofgodlv.com/apps/video/watch.jsp?v=10034523
http://archkckblog.wordpress.com/2016/02/02/jesus-on-board/
http://www.sermoncentral.com/sermons/jesus-on-board-jeffrey-sims-sermon-on-jesus-211074
http://www.youtube.com/watch?v=MIdm3Lqoszs
shows that this phrase is a commonly used message that refers to the Biblical reading Mark 4:35-41 and conveys an informational religious message or support that Jesus is always with a person. Because consumers are accustomed to seeing this message used in ordinary language by many different sources, they would not perceive it as a mark that identifies the source of applicant’s goods but rather only as conveying an informational message.
An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).
SECTIONS 1, 2, AND 45 ORNAMENTAL ADVISORY
Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of the goods and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re David Crystal, Inc., 296 F.2d 771, 773, 132 USPQ 1, 2 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454-55 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.
The following factors are considered when determining whether the public would perceive the applied-for mark as a trademark or merely as a decorative or ornamental feature: the commercial impression made by the mark on the specimen, any prior registrations of the same mark for other goods and/or services, promotion of the applied-for mark as a trademark, and the practices of the relevant trade. See In re The Todd Co., 290 F.2d 597, 599-600, 129 USPQ 408, 409-10 (C.C.P.A. 1961); In re Dimitri’s Inc., 9 USPQ2d 1666, 1668 (TTAB 1988); In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982); In re Jockey Int’l, Inc., 192 USPQ 579, 581-83 (TTAB 1976); TMEP §§1202.03 et seq. For more information about this refusal, see http://www.gov.uspto.report/trademarks/law/ornamental.jsp.
ASSISTANCE
/Karen K. Bush/
Trademark Examining Attorney
Law Office 108
571-272-9136
Karen.Bush@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/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 TEAS@uspto.gov. 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.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
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 $125 per 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 or e-mail without incurring this additional fee.