First Independent Church of Scientology

Discussion in 'Freezone, Independents, and Other Flavors of Scien' started by CommunicatorIC, Jan 21, 2016.

View Users: View Users
  1. CommunicatorIC

    CommunicatorIC @IndieScieNews on Twitter

    Question posted on Religious Liberty League article, moderated, approved and answered:

    http://religiouslibertyleague.org/a-path-to-victory/#comment-275

    * * * * * BEGIN EXCERPT * * * * *

    In each license request letter the First Independent Church of Scientology (FICS) states it "is willing and able to... be subjected to any reasonable restrictions that the licensor may impose on the license."

    What restrictions would FICS find reasonable? What restrictions would FICS find unreasonably and presumably unacceptable?

    Does FICS have any concern that it will wind up being a Church of Scientology Mission, or otherwise under the full supervision and control of CST, RTC, CSI or the corporate Church of Scientology generally, through IHelp or otherwise?

    RESPONSE:

    Merrell Vannier January 17, 2017 at 4:17 pm Reply

    Reasonable versus Unreasonable. We can’t define it, but will know it when we see it.

    Zero concern that FICofS will wind up being under the full supervision and control of CofS. Won’t happen.

    * * * * * END EXCERPT * * * * *
     
    Last edited: Jan 17, 2017
  2. CommunicatorIC

    CommunicatorIC @IndieScieNews on Twitter

    Another question posted on the Religious Liberty League article awaiting moderation.

    http://religiouslibertyleague.org/a-path-to-victory/#comment-275

    * * * * * BEGIN EXCERPT * * * * *

    Thank you very much for replying. Another question, if I may. Will the license agreement(s) and any "reasonable restrictions" be made available to: (a) the public generally; (b) prospective parishioners of FICS; or (c) actual parishioners of FICS?

    * * * * * END EXCERPT * * * * *
     
  3. CommunicatorIC

    CommunicatorIC @IndieScieNews on Twitter

    The website of the First Independent Church of Scientology is live.

    I recently created a thread for the entirely separate organization known as the Independent Reformed Church of Scientology. That caused me to check on the status of the First Independent Church of Scientology.

    To my surprise, I found the website of the First Independent Church of Scientology is live. It does not appear they are providing services yet.

    First Independent Church of Scientology.

    Code:
    https://firstindependentchurchofscientology.org/
    [​IMG]

    As discussed at length in previous posts and only excerpted below, it appear the First Independent Church of Scientology has until January 23, 2019 to respond to the proposed denial of their trademark application.


    [​IMG]
     
    Last edited: Jan 16, 2019
  4. CommunicatorIC

    CommunicatorIC @IndieScieNews on Twitter

    The First Independent Church of Scientology (FICS) is continuing to litigate it's trademark application. The FICS has filed a response to the proposed USPTO decision to deny it's application for a trademark.

    The case was greatly delayed because the USPTO insisted on first processing (and eventually granted) Scientology trademark applications for Scientology Media Productions, not that they added anything new to the discussion.

    http://tsdr.uspto.gov/documentviewer?caseId=sn86817837&docId=ROA20190118193028#docIndex=1&page=1

    [​IMG]

    https://tsdrsec.uspto.gov/ts/cd/pdf...79176_Arguments_for_Office_Action_7_23_18.pdf

    [​IMG]



    NOTE: The FICS is not to be confused with the recently incorporated Independent Reformed Church of Scientology (IRCS).
     
    Last edited: Feb 14, 2019
  5. CommunicatorIC

    CommunicatorIC @IndieScieNews on Twitter

    First Independent Church of Scientology (FICS) Grade Chart: "Date Released 8 February 2019."

    In addition to having the file name GradeChart7Feb2019R.pdf and the "R" designation, the Grade Chart on the FICS website states in lower left-hand corner: "Date Released 8 February 2019."

    https://firstindependentchurchofscientology.org/the-grade-chart/


    FICS Grade Chart 7 Feb 2019R

    https://firstindependentchurchofscientology.org/wpcontent/uploads/2019/02/GradeChart7Feb2019R.pdf '

    [​IMG]


    ***********************************

    The FICS explains:

    https://firstindependentchurchofsci...hart/the-grade-chart-and-standard-technology/


    * * * * * * BEGIN EXCERPT * * * * *

    The Grade Chart and Standard Technology

    A visitor to our church asked the following:

    What’s with the squirrel grade chart?​

    I saw LRH’s written instructions to REMOVE original OT IV-VII from the Grade chart and to remove them from PC programming.​

    Why squirrel his instruction?​

    The answer is that L Ron Hubbard did not write instructions to remove these levels.

    The change to remove original OT IV-VII was made by HCOB 19 Jan 1982 “NEW – STREAMLINED CLASSIFICATION AND GRADATION CHART.”

    That HCOB was not written by LRH, and was later cancelled.

    * * * * * END EXCERPT * * * * *
     
    Last edited: Feb 15, 2019
  6. CommunicatorIC

    CommunicatorIC @IndieScieNews on Twitter

    The US Patent and Trademark Office (USPTO) has again refused the trademark application by the First Independent Church of Scientology (FICS).

    As indicated in the decision quoted below, this "Final Office Action" is not really final. In response, the FICS can provide:

    (1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

    (2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

    The question is, will it?

    ***************************

    tsdr.uspto.gov/#caseNumber=86817837&caseType=SERIAL_NO&searchType=statusSearch

    Decision at:

    tsdr.uspto.gov/documentviewer?caseId=sn86817837&docId=OOA20190228182747#docIndex=0&page=1


    [​IMG]


    * * * * * BEGIN QUOTATION * * * * *

    UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
    OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
    U.S. APPLICATION SERIAL NO. 86817837
    MARK: FIRST INDEPENDENT CHURCH OF SCIENTOLOGY
    *86817837*

    CORRESPONDENT ADDRESS:
    Raymond R. Tabandeh
    Lewis Roca Rothgerber Christie LLP
    P.O. BOX 29001
    GLENDALE CA 91209-9001

    CLICK HERE TO RESPOND TO THIS LETTER:
    http://www.uspto.gov/trademarks/teas/response_forms.jsp

    VIEW YOUR APPLICATION FILE
    APPLICANT: JAMES R. FONDA
    CORRESPONDENT’S REFERENCE/DOCKET NO:
    79176/F558
    CORRESPONDENT E-MAIL ADDRESS:
    pto@lrrc.com

    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. 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: 2/28/2019

    THIS IS A FINAL ACTION.

    INTRODUCTION

    This Office action is in response to applicant’s communication filed on January 17, 2019.

    In a previous Office action(s) dated March 18, 2016 and July 23, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: specify e.g., Trademark Act Section 2(d) for a likelihood of confusion with several registered marks, and Trademark Section 2(a) for a mark that includes matter which may falsely suggest a connection with the Church of Scientology. In addition, applicant was required to satisfy the following requirement: disclaim descriptive wording in the mark.

    The applicant’s responses have been considered and are not persuasive. The applicant did not enter the required disclaimer.
    The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.

    SUMMARY OF ISSUES MADE FINAL that applicant must address:

    Section 2(d) refusal –Likelihood of confusion
    Section 2(a) refusal – False Association
    Disclaimer

    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 No. 0898018 for SCIENTOLOGY
    U.S. Registration No. 1318717 for SCIENTOLOGY
    U.S. Registration No. 1306997 for SCIENTOLOGY
    U.S. Registration No. 1329474 for SCIENTOLOGY
    U.S. Registration No. 1342353 for SCIENTOLOGY
    U.S. Registration No. 4533003 for SCIENTOLOGY
    U.S. Registration No. 2678135 for SCIENTOLOGY VOLUNTEER MINISTER
    U.S. Registration No. 2717563 for SCIENTOLOGY VOLUNTEER MINISTER
    U.S. Registration No. 4674470 for INTERNATIONAL SCIENTOLOGY NEWS
    U.S. Registration No. 5241821 for SCIENTOLOGY MEDIA PRODUCTIONS
    U.S. Registration No. 5241821 for S SCIENTOLOGY MEDIA PRODUCTIONS LOS ANGELES HISTORIC CULTURE MONUMENT EST. 1912
    U.S. Registration No. 5241823 for SCIENTOLOGY MEDIA PRODUCTIONS
    U.S. Registration No. 5228480 for S SCIENTOLOGY MEDIA PRODUCTIONS LOS ANGELES HISTORIC CULTURE MONUMENT EST 1912
    U.S. Registration No. 5223542 for SCIENTOLOGY MEDIA PRODUCTIONS
    U.S. Registration No. 5223543 for S SCIENTOLOGY MEDIA PRODUCTIONS LOS ANGELES HISTORIC CULTURE MONUMENT EST 1912
    U.S. Registration No. 5156526 for SCIENTOLOGY MEDIA PRODUCTIONS
    U.S. Registration No. 5246747 for S SCIENTOLOGY MEDIA PRODUCTIONS LOS ANGELES HISTORIC CULTURE MONUMENT EST 1912
    U.S. Registration No. 5200277 for S SCIENTOLOGY MEDIA PRODUCTIONS LOS ANGELES HISTORIC CULTURE MONUMENT EST 1912
    U.S. Registration No. 5134065 for SCIENTOLOGY MEDIA PRODUCTIONS
    U.S. Registration No. 5119859 for S SCIENTOLOGY MEDIA PRODUCTIONS LOS ANGELES HISTORIC CULTURE MONUMENT EST 1912

    Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.

    Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).

    Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

    Comparison of the Marks

    The applicant’s mark is FIRST INDEPENDENT CHURCH OF SCIENTOLOGY.

    The registrant’s marks, listed above, include the typed drawing, SCIENTOLOGY, and an entire family of twenty distinctive marks prominently including the well-recognized wording, SCIENTOLOGY and designs.

    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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

    When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

    Adding a term to a registered mark 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 this case the added, merely descriptive wording, “first independent church,” does not obviate the similarity between the marks. In the present case, the marks are identical in part.

    Applicant argued that the marks are not the same. The applicant has argued that some of the registered marks include extensive graphics or logos that include the Scientology wording only in the margins, whereas the applicant’s mark is the five different words, “First,” “Independent,” “Church,” “of,” and “Scientology.” Therefore, according to the applicant, the marks create different commercial impressions. The applicant also argued that the consumers of the applicant’s and the registrant’s services are sophisticated and would not be confused in to thinking that the source of goods and services is the same. Finally, the applicant argued that the term, “Scientology,” is descriptive, if not generic, thereby it has no source indicating significance.

    As indicated above, the addition of “first independent church” to the distinctive wording, “Scientology,” does not obviate the similarity between the marks. Moreover, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).

    Finally, applicant argues that the wording in the registered mark, “SCIENTOLOGY,” has little or no source-identifying significance because it is, according to the applicant, descriptive or generic in relation to registrant’s goods and/or services. Trademark Act Section 7(b), however, provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of a registered mark. 15 U.S.C. §1057(b). The validity of a cited registration “cannot be challenged in an ex parte proceeding.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016). Thus, applicant’s argument is not being considered because to do so would fail to give the cited registered mark the validity to which it is entitled. In re Fat Boys Water Sports LLC, 118 USPQ2d at 1517 (citing In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007)).

    The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for closely related goods and/or services. TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010). Thus, this protection under Section 2(d) extends to marks registered on the Supplemental Register. TMEP §1207.01(b)(ix); see, e.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1743 (TTAB 2016) (citing Towers v. Advent Software, Inc., 913 F.2d 942, 946, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990); In re Research & Trademark Corp., 793 F.2d 1276, 1278, 230 USPQ 49, 49 (Fed. Cir. 1986); In re Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978)).

    Comparison of the Goods and Services

    The applicant’s services are “spiritual ministry services.”

    The registrant’s goods and services include religious and ministerial services, educational services in the field of philosophy and religion, digital media pertaining to religion and philosophy, books, booklets, newsletters and bulletins.

    The compared goods and/or services 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); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).
    In this case, the goods and services are related religious and ministry goods and services. The applicant did not provide any arguments relating to the 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.

    Therefore, registration is denied because there is a likelihood of confusion.

    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 Scientology religion or Church of Scientology. Trademark Act Section 2(a), 15 U.S.C. §1052(a). Although Scientology or the Church of Scientology is not connected with the goods and/or services provided by applicant under the applied-for mark, Scientology is so well-known that consumers would presume a connection. See id.

    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)).

    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 information from www.scientology.org, attached to the first office action. 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 information from the registrant’s website, attached to the first office action. See also, BusinessInsider article attached to the first office action, documenting the celebrities who are members of the institution who also help to make it a famous institution. Finally, see articles attached to the first office action that were 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 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 blog article downloaded from the Religious Liberty League’s website, attached to the first office action.
    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.

    The applicant argued that the definition of "independent" means "not being subject to control of others," which indicates that the services provided under the applicant's mark are not related or affiliated with those provided under the registrant's mark. Accordingly, the applicant argued, the applied-for mark does not falsely suggest a connection with the Church of Scientology, or the registrant, Religious Technology Center Corporation.
    However, although the applicant claimed to be independent, it may be inferred that purchasers of the applicant’s services could be misled into making a false connection of sponsorship, approval, support or the like with Scientology as an institution. Scientology is not a generic term. As a religious ministry, Scientology immediately identifies the church established by L. Ron Hubbard and maintained by the Religious Technology Center.
    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

    DISCLAIMER REQUIRED

    Applicant must provide a disclaimer of the unregistrable part(s) 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 the wording “First Independent Church” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. 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).

    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 wording, “independent church,” merely describes a self-governing religious institution. See dictionary definitions attached to the first office action. 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, attached to the first office action.

    Applicant may respond to this issue by submitting a disclaimer in the following 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 issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

    PROPER RESPONSE TO FINAL OFFICE ACTION

    Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:

    (1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

    (2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

    37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

    In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).

    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.

    /rscb/
    Robin S. Chosid-Brown
    Trademark Examining Attorney
    Law Office 102
    571-272-9252
    robin.chosid-brown@uspto.gov

    * * * * * END QUOTATION * * * * *