Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  October 15, 2019

 

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.

 

SUMMARY OF ISSUES

 

·         Disclaimer—“INTERVARSITY CHRISTIAN FELLOWSHIP/USA”

 

·         Identification of Goods—Clarification Required

 

·         Mark Description—Inaccurate

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

DISCLAIMER REQUIRED—“INTERVARSITY CHRISTIAN FELLOWSHIP/USA”:

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim all of the wording because it is not inherently distinctive.  These unregistrable terms at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

“INTERVARSITY” is defined as “conducted, involving, or existing between two or more universities,” “CHRISTIAN” is defined as “of or professing the religion based” on “Jesus Christ or his teachings,” “FELLOWSHIP” is defined as an “association,” and “USA” is an abbreviation for the United States of America.  See attachments from http://www.thefreedictionary.com/intervarsity, http://www.collinsdictionary.com/dictionary/english/christian, http://www.merriam-webster.com/dictionary/fellowship, and http://www.merriam-webster.com/dictionary/USA. 

 

Additionally, applicant and third parties already use this wording descriptively for related goods/services.  See attachments from http://intervarsity.org/about-us (explaining how applicant “has had a vital presence on hundreds of college campuses” and its “vision is to see students and faculty transformed, campuses renewed, and world changers developed”), http://www.amazon.com/Duties-Christian-Fellowship-Puritan-Paperbacks/dp/1848717725, http://www.gracechurch.org/about/fellowship-groups?AspxAutoDetectCookieSupport=1, and

http://christianchurchestogether.org/

 

Therefore, the wording merely describes characteristics of applicant’s identified goods—being provided as part of a religious association between many universities in the United States—and must be disclaimed from the mark.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “INTERVARSITY CHRISTIAN FELLOWSHIP/USA” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

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).

 

IDENTIFICATION OF GOODS—CLARIFICATION REQUIRED:

 

Wording in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  An application’s identification of goods must be specific, definite, clear, accurate, and concise.  In this case, certain wording in the application’s identification—noted below—is indefinite because the nature of the goods is not sufficiently clear.  For example, “downloadable electronic publications” must specify the field or subject matter of the publications, e.g., leadership development, religion.

 

Suggested Wording

 

Applicant may substitute the following wording, if accurate:

 

CLASS 009:    Downloadable computer application software for mobile phones, portable media players, tablets and handheld devices, for {specify the purpose of the software, e.g., providing information and lessons in the fields of religion, spiritual and cultural issues and values}; Digital media, namely, pre-recorded DVDs, pre-recorded digital audio tapes, pre-recorded video and audio-visual file disks, downloadable audio files, downloadable video files, downloadable audio-visual files, and downloadable podcasts in the fields of {specify the subject matter or fields, e.g., religion, spiritual and cultural issues and values}; Downloadable electronic publications, namely, articles, newsletters, books, and manuals in the fields of {specify the subject matter or fields, e.g., religion, spiritual and cultural issues and values}

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

MARK DESCRIPTION—INACCURATE:

 

Applicant must submit an amended description of the mark that agrees with the mark on the drawing.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The current description is inconsistent with the mark on the drawing and thus is inaccurate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify only those literal and design elements appearing in the mark.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

The following description is suggested, if accurate:

 

DESCRIPTION:        The mark consists of a semi-circle over what appears to be an open book to the left of the wording “INTERVARSITY CHRISTIAN FELLOWSHIP/USA”, with “INTERVARSITY” being over “CHRISTIAN FELLOWSHIP/USA”.

 

GENERAL RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

Sjogren, Jeffrey

/Jeffrey Sjogren/

Examining Attorney - Law Office 122

Phone: 571-272-5279

Fax: 571-273-5578

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 15, 2019 for

U.S. Trademark Application Serial No. 88499575

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Sjogren, Jeffrey

/Jeffrey Sjogren/

Examining Attorney - Law Office 122

Phone: 571-272-5279

Fax: 571-273-5578

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 15, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”