To: | InterVarsity Christian Fellowship/USA (bassam.ibrahim@bipc.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88239125 - INTERVARSITY CHRISTIAN - 1030776-057 |
Sent: | 3/18/2019 5:36:19 PM |
Sent As: | ECOM102@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. 88239125
MARK: INTERVARSITY CHRISTIAN
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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: InterVarsity Christian Fellowship/USA
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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: 3/18/2019
Applicant is encouraged to email the trademark examining attorney at eli.hellman@uspto.gov to resolve the issues raised below. If the suggestions listed below are acceptable, then the examiner will issue an examiner’s amendment and approve the application for publication.
No Similar Marks to Bar Registration
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Requirement Limited to International Classes 016 and 035
Applicant must disclaim the wording “CHRISTIAN FELLOWSHIP / USA” in International Classes 016 and 035 because it is primarily geographically descriptive of the origin of applicant’s goods and services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(2), 1056(a); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1309 (TTAB 2006); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).
The attached evidence from the American Heritage Dictionary shows that U.S.A. is a generally known geographic place or location, i.e., the United States of America. See TMEP §§1210.02 et seq. The goods and services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address. See TMEP §1210.03. Purchasers are likely to believe the goods and services originate in this geographic place or location because the applicant is located in the United States of America. See TMEP §§1210.04 et seq.
Additionally, the applicant must disclaim CHRISTIAN FELLOWSHIP, as the applicant’s class 016 goods are defined so broadly as to encompass CHRISTIAN FELLOWSHIP as the subject matter, and the applicant’s advertising services are defined so broadly as to encompass the promotion of CHRISTIAN FELLOWSHIP. CHRISTIAN is defined as, “relating to or derived from Jesus or Jesus's teachings.” See attached dictionary definition of CHRISTIAN. FELLOWSHIP is defined as, “the companionship of individuals in a congenial atmosphere and on equal terms.” See attached dictionary definition of FELLOWSHIP. Here, the applicant’s goods are defined so broadly as to encompass books relating to the companionship of individuals who are associated by their belief in the teachings of Jesus Christ, while the applicant’s advertising services are defined so broadly as to encompass the adverting relating to the companionship of individuals who are associated by their belief in the teachings of Jesus Christ. Accordingly, the wording is descriptive for said classes and must be disclaimed.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services, including the geographic origin thereof, 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.
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 “CHRISTIAN FELLOWSHIP / USA” in International Classes 016 and 035 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 to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
The wording “cards; banners; bags; table covers” in the identification of goods is indefinite and must be clarified because it is overly broad and could include goods classified in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses.
Applicant may substitute the following wording, if accurate:
International Class 003: Lip balm
International Class 014: Jewelry and ornamental lapel pins
International Class 016: Print material, namely, {indicate nature of printed matter, e.g., books, magazines, brochures, and pamphlets} in the field of {indicate subject matter, e.g., religion}; stickers, {indicate the type of cards, e.g., flash cards, note cards}, posters, paper banners; padfolios; pens, writing instruments
International Class 018: Backpacks; bags, namely, {indicate the specific type of bags, e.g., purses}
International Class 020: Fitted table covers
International Class 021: Cups, mugs, water bottles sold empty
International Class 024: Unfitted plastic and textile table covers; banners made of textile, namely, cloth and plastic
International Class 025: Clothing, namely, shirts, hats, jackets
International Class 035: Providing advertising, marketing and promotional services, namely, online banners; banner advertisings
An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
Requirements for the Addition of Classes
The application identifies goods and services in more than eight international classes; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and services that are classified in at least nine classes; however, applicant submitted fees sufficient for only eight classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
RESPONDING TO THIS OFFICE ACTION
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Eli J. Hellman/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 102
(571) 272-8276
eli.hellman@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.