First Independent Church of Scientology

It's the First Independent Church of Scientology to the rescue!

Tony Ortega: The shocking space opera secret that is guiding Scientology litigation

http://tonyortega.org/2016/02/26/th...ecret-that-is-guiding-scientology-litigation/

Please go to Tony's blog for the entire story.

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Free Zone Convention invites speaker from First Independent Church of Scientology.

http://religiouslibertyleague.org/new-legal-entity-first-independent-church-of-scientology/

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Rey R. Robles February 23, 2016 at 6:28 pm Reply

We need & want some one to speak on this, at the Free Zone Convention this year in June.

This year we will have people from all over the USA & Europe & even the old USSR. We are going live on the WEB once again, there are over 2000 people that view us every year. We have been doing FZ Conventions for over 15 years. This is great news for every one. There are Class 6, 8th & 12 that show up to speak. Call me ASAP.

Best Rey R. Robles

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The Trademark (technically, Service Mark) application of the First Independent Church of Scientology has been assigned to a Trademark Examiner in the US Patent and Trademark Office.

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

Still no sign.

Since a 'Letter of Protest' was received (Can't imange who from.) an examiner was assigned on Mar 6th to look into it and determine if the protest has merit or not. Which means it could be anywhere from two weeks to a year or so before a decision one way or the other is reached. So I would suggest not holding your breath while waiting for the decision.

BigBeard

First Independent Church of Scientology is now an official California corporation.

http://kepler.sos.ca.gov/

It will be interesting to see what comes out of the trademark protest examination, and whether that has any impact on the CA corporate registration.

BigBeard

There already seems to have been a longer than usual delay from the filing date to it appearing online.

Given my recent experiences with the Department of Social Services bureaucracy here in Los Angeles, I don't think there is anything unusual at all for any sort of application (paper or electronic) to take 30 days or more to make it through a given agencies queue. Pretty much all such things are processed in the order received. However, I confess to having a dearth of information as to the average time to process a given application for Corporate Status.

Michael A. Hobson
Independent Scientologist
email: warrior_mike2001@yahoo.com
Facebook: https://www.facebook.com/mhobson2011

US Patent and Trademark Office sent Non-final Office Action to First Independent Church of Scientology.

US Patent and Trademark Office: http://tsdr.uspto.gov/#caseNumber=86817837&caseType=SERIAL_NO&searchType=statusSearch

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Generated on: This page was generated by TSDR on 2016-04-14 21:19:07 EDT

Mark: FIRST INDEPENDENT CHURCH OF SCIENTOLOGY

US Serial Number: 86817837 Application Filing Date: Nov. 12, 2015

Filed as TEAS RF: Yes Currently TEAS RF: Yes

Register: Principal

Mark Type: Service Mark

Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page
.
Status Date: Mar. 18, 2016

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OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

http://tsdr.uspto.gov/documentviewer?caseId=sn86817837&docId=OOA20160318154750#docIndex=0&page=1


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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
*86817837*
CORRESPONDENT ADDRESS:
RAYMOND R. TABANDEH
CHRISTIE, PARKER & HALE, 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@cph.com


OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTERTO 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.
ISSUE/MAILING DATE: 3/18/2016

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, 2.65(a); TMEP §§711, 718.03.

The Office of the Deputy Commissioner for Trademark Examination Policy accepted a Letter of Protest received in connection with this application. The evidence presented in the letter was forwarded to the trademark examining attorney for consideration. See TMEP §1715.

Based upon this evidence, the trademark examining attorney is taking further action, as specified below. See TMEP §1715.02(b).

PRIOR-FILED APPLICATION(S)

The filing dates of pending U.S. Application Serial Nos. 86336991, 86336984, 86339615, 86336978, 86335732, 86336981, 86336980, 86336979, 86335735, 86338294, 86339617 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

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 marks in the referenced applications. 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.

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 Nos. 4674470, 4533003, 2717563, 2678135, 1342353, 1329474, 1318717, 1306997, 1540928, and 0898018. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

Comparison of the Marks

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

The registrant’s marks include the typed drawing, SCIENTOLOGY, and an entire family of marks prominently including the wording, SCIENTOLOGY -- all owned by the same entity.

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. In this case the wording, “SCIENTOLOGY,” is the distinctive and dominant wording in creating a commercial impression.

Adding a term to a registered mark, for instance, merely descriptive terminology, “first independent church,” 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 the present case, the marks are identical in part.

The overall commercial impression of the marks is the same.

Comparison of the Services

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

The registrant’s goods and services include religious and ministerial services, education and information in the field of religion and philosophy, and books, films, videos, booklets, pamphlets, etc., in the field of the registrant’s services.

The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the respective parties that is required to support a finding of likelihood of confusion. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

In this case, the goods and services are related religious and ministry 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.

Registration is therefore denied.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

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 religion or Church of Scientology. Although religion or Church of Scientology is not connected with the services provided by applicant under the applied-for mark, Scientology is so famous that consumers would presume a connection. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §1203.03, (c). See generally Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

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)).

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 attached blog article downloaded from the Religious Liberty League’s website, http://religiouslibertyleague.org/new-legal-entity-first-independent-church-of-scientology/.

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 attached information fromwww.scientology.org. 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 attached information from the registrant’s website. See also, attached BusinessInsider article documenting the celebrities who are members of the institution who also help to make it a famous institution. Finally, see attached articles 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 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.

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

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

If applicant responds to the refusal(s), applicant must also respond to the requirement set forth below.

DISCLAIMER REQUIRED

Applicant must disclaim the wording, “First Independent Church,” because it is laudatory and merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); 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 word, “first,” is merely laudatory and descriptive of being the earliest, or best, of its kind. See attached dictionary definition.

The wording, “independent church,” merely describes a self-governing religious institution. See attached dictionary definitions. 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.

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 “FIRST INDEPENDENT CHURCH” 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 tohttp://www.uspto.gov/trademarks/law/disclaimer.jsp.

RESPONSE GUIDELINES

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).


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 $50 per international 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 without incurring this additional fee.

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




TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/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.uspto.gov/. 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, seehttp://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.



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First Independent Church of Scientology has filed a new trademark application.

http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4805:4inrk7.2.2

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Word Mark FIRST INDEPENDENT CHURCH OF SCIENTOLOGY

Goods and Services IC 045. US 100 101. G & S: SPIRITUAL MINISTRY SERVICES

Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS

Design Search Code 01.01.02 - Star - a single star with four points

24.13.25 - Cross, ankh; Cross, Maltese; Other crosses, including ankh, Maltese

26.01.21 - Circles that are totally or partially shaded.

Serial Number 86905517

Filing Date February 11, 2016

Current Basis 1B

Original Filing Basis 1B

Owner (APPLICANT) FONDA, James R. INDIVIDUAL UNITED STATES 655 N. Central Avenue, 17th Floor Glendale CALIFORNIA 91203

Attorney of Record Raymond R. Tabandeh

Description of Mark The color(s) light blue and dark blue is/are claimed as a feature of the mark. The mark consists of A larger circular shape with darker blue circumference, a smaller circular shape with lighter blue circumference located inside the larger circular shape, a cross shape inside of the smaller circular shape with white outer perimeter and darker blue inner perimeter, the cross shape having a star shape of the same colors at its crossing. The words FIRST INDEPENDENT CHURCH OF SCIENTOLOGY in dark blue being located to the right of the circular design.

Type of Mark SERVICE MARK

Register PRINCIPAL

Live/Dead Indicator LIVE

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A non-final office action has also been issued with regard to this application:

http://tsdr.uspto.gov/#caseNumber=86905517&caseType=SERIAL_NO&searchType=statusSearch

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US Serial Number: 86905517 Application Filing Date: Feb. 11, 2016

Filed as TEAS RF: Yes Currently TEAS RF: Yes

Register: Principal

Mark Type: Service Mark

Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.

Status Date: Mar. 18, 2016

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http://tsdr.uspto.gov/documentviewer?caseId=sn86905517&docId=OOA20160318160137#docIndex=1&page=1

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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86905517

MARK: FIRST INDEPENDENT CHURCH OF *86905517*
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: FONDA, James R.
CORRESPONDENT’S REFERENCE/DOCKET NO:
79664/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.

ISSUE/MAILING DATE: 3/18/2016

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, 2.65(a); TMEP §§711, 718.03.

PRIOR-FILED APPLICATION(S)

The filing dates of pending U.S. Application Serial Nos. 86336991, 86336984, 86339615, 86336978, 86335732, 86336981, 86336980, 86336979, 86335735, 86338294, 86339617 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

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 marks in the referenced applications. 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.

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 Nos. 4674470, 4533003, 2717563, 2678135, 1342353, 1329474, 1318717, 1306997, 1540928, and 0898018. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

Comparison of the Marks

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

The registrant’s marks include the typed drawing, SCIENTOLOGY, and an entire family of marks prominently including the wording, SCIENTOLOGY -- owned by the same entity.

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. In this case the wording, “SCIENTOLOGY,” is the distinctive and dominant wording in creating a commercial impression.

Adding a term to a registered mark, for instance, merely descriptive terminology, “first independent church,” 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 the present case, the marks are identical in part.

The overall commercial impression of the marks is the same.

Comparison of the Services

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

The registrant’s goods and services include religious and ministerial services, education and information in the field of religion and philosophy, and books, films, videos, booklets, pamphlets, etc., in the field of the registrant’s services.

The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the respective parties that is required to support a finding of likelihood of confusion. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

In this case, the goods and services are related religious and ministry 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.

Registration is therefore denied.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

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 religion or Church of Scientology. Although religion or Church of Scientology is not connected with the services provided by applicant under the applied-for mark, Scientology is so famous that consumers would presume a connection. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §1203.03, (c). See generally Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

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)).

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 attached blog article downloaded from the Religious Liberty League’s website, http://religiouslibertyleague.org/new-legal-entity-first-independent-church-of-scientology/.

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 attached information fromwww.scientology.org. 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 attached information from the registrant’s website. See also, attached BusinessInsider article documenting the celebrities who are members of the institution who also help to make it a famous institution. Finally, see attached articles 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 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.

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

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

If applicant responds to the refusal(s), applicant must also respond to the requirement set forth below.

DISCLAIMER REQUIRED

Applicant must disclaim the wording, “First Independent Church,” because it is laudatory and merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); 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 word, “first,” is merely laudatory and descriptive of being the earliest, or best, of its kind. See attached dictionary definition.

The wording, “independent church,” merely describes a self-governing religious institution. See attached dictionary definitions. 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.

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 “FIRST INDEPENDENT CHURCH” 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.uspto.gov/trademarks/law/disclaimer.jsp.

DESCRIPTION OF THE COLORS IN THE MARK/COLOR CLAIM


Applicant must amend the color claim and mark description to identify all the colors in the mark drawing. See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii). The following colors have been omitted from the color claim: white. In addition, the following colors have been omitted from the mark description: white.
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete mark description for a mark depicted in color must identify all the literal and design elements in the mark and specify where the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. However, if black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).

The following color claim and mark description are suggested, if accurate:

Color claim: “The colors light blue, dark blue, and white are claimed as a feature of the mark.”
Mark description: “The mark consists of the following: A larger dark blue circle, a thin white circle, a smaller lighter blue circle shape located inside the larger circular shape, a cross shape inside of the smaller circular shape with white outer perimeter and darker blue inner perimeter, the cross shape having a star shape of the same colors at its crossing. The words FIRST INDEPENDENT CHURCH OF SCIENTOLOGY in dark blue being located to the right of the circular design.”

RESPONSE GUIDELINES


For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

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 $50 per international 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 without incurring this additional fee.

/rscb/
Robin S. Chosid-Brown
Trademark Examining Attorney
Law Office 102
571-272-9252

robin.chosid-brown@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/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.

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

Yes, you would be right. The applications (there are now two) are being denied, but even at the first administrative USPTO level the decision is not final. The First Independent Church of Scientology has six months from the letters to respond. I suspect that it will require extensive litigation if the FICS really wants to pursue this.

I believe that The Second Independent Church of Scientology name is available..............

Ugh! Why do they even bother?
"Ronbots II" is not taken
or.....
Mindfuck2
Still Not Waking Up Club
Continue The Mindfuck Church
We Know It's BS, But We Need Money. ORG
Hubbard's Homies
Scientology Cult Light
Body Thetan Rotary Club
OTs R Us
Sciloonies Association
Block Critical Thinking Club
Cult Church II
OT Super Power Rangers
Cult Living
Ron's Cons
Ron Is Coming Back, We Swear Alliance
Emeter Needers
The First Church of Clam
Our Lady Of Perpetual Clam
Tiny Closed Mind Nation ...

How about the Last Independent Church of Scientology?

On a flat trademark fight, I expect RTC would win, so I wonder if they've got anything planned to change the battle?

Oooooooh! Yes, My Vote: Our Lady of Perpetual Clam
Enter through Clam Shell Doors
Exit an E-Metered Fried Clam
(Brains will be Tartar Sauce)
Thanks, Ron!

Calling themselves the "First Church of Scientology" has the same value to the world as the morons that comment "First" on a blog post.

FWIW, there is at least some historical precedent for a usage such as "First Independent Church of Scientology" in at least some US cities. In many cities you will find, or example, a "First Presbyterian Church" -- referring to the fact that it was, in fact, the first Presbyterian church in that city, and then a "Second Presbyterian Church." I assume the First Independent Church of Scientology is trying to following the precedent.

The only precedent they are following is trying to make money, more money and even more money. Faggots.

First National Bank.

First Independent Church of Scientology Update on Technical Standards Committee, Trademark Application and Copyrights.

Religious Liberty League: Sundry Updates

http://religiouslibertyleague.org/sundry-updates/

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

Sundry Updates

Been awhile since our last post, readers remind us.

We would like to post more often, but most of our news on the legal front is highly technical in addition to being strategic and therefore not suitable for broad public issue. We will throw out some tidbits now and try to do better in the future.

Technical Standards Committee

The Technical Standards Committee is formed and functioning. We are not releasing names at this point. They are all Class VIII auditors, with many hours in the chair. Importantly, they have each demonstrated character and integrity in the face of altered tech inside the church and refused to go along.

The committee is in the process of putting together a Classification & Gradation Chart based on the 1978 and 1980 versions, the last ones of which LRH sanctioned. It will contain the original OT levels with audited and solo New Era Dianetics for OTs (NOTs) inserted into their rightful place after OT III and before OT IV.

The Church of Scientoloy does not deliver this LRH bridge. First Independent Church of Scientology (FICS) will.

The committee will then start at the bottom of the chart and work upwards, going through various versions of course check sheets, course packs and auditing actions in order to select and recommend standard materials for use by FICS.

At some point prior to action by the FICS board of directors, we will publish their findings and solicit feedback that can be further considered by the committee.

Trademark Application

As many readers may recall an application for trademark of the name First Independent Church of Scientology was filed. At that time it was decided to hold back on applying for a separate trademark for the FICS logo, that is, the same name plus the image we used in the post entitled, “New Legal Entity: First Independent Church of Scientology.”

The United States Patent and Trademark Office (USPTO) refused to grant the trademark in a notice dated March 18, 2016, citing the church’s trademark and a likelihood of confusion in the general public between the two marks. The notice can be viewed here.

The law and procedure regarding trademarks is complex, so it is difficult to explain why this action by the USPTO is not entirely unexpected or very significant. It is noted, for example, that the ruling is not a final determination; we have six months to respond. We can still file an action to cancel the church’s trademark for having become generic and we can file a separate application for a trademark of the logo, i.e., name (First Independent Church of Scientology) plus image – the current application was for name only, to name two of many other options.

Most notably, FICS does not need a trademark to a name that uses the word Scientology in order to use the name. FICS can always open its doors and force the church to file a trademark infringement legal action, the defense of which has its own advantages, and thus, this option is still under consideration. The filing of the request for a trademark in the name (only, no image) was a strategic decision.

We have another five months to decide how to proceed, and time is on our side.

Copyrights

More important is the ability to use original LRH materials. As discussed above, we are in the process of identifying those materials.

Meanwhile we have legal experts in the various areas of law of intellectual property (i.e., trademarks and copyrights), First Amendment, religious organizations, and commercial litigation coordinating, planning and developing various legal strategies for a unified approach to the many legal challenges we face, not just with trademarks.

This is going well. All involved are confident of achieving our objectives.

* * * * * END EXCERPT * * * * *

Refusal of First Independent Church of Scientology Trademark

http://www.religiouslibertyleague.org/TM App_FICS_Denial.pdf

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

One additional observation. I don't understand Merrell's comment that, "we can file a separate application for a trademark of the logo, i.e., name (First Independent Church of Scientology) plus image." As noted above, the FICS already filed such an application which was denied for the same reason. I have no idea what Merrell is talking about.

I suspect Merrell or somebody else at the Religious Liberty League (RLL) reads this forum and/or ESMB. After I noted the above, the RLL post was amended as follows:

I kind of like Emeter Needers
Don't know why

Heh! I love how their Technical Standards Committee members are all anonymous.

With regard to this second trademark application for the First Independent Church of Scientology graphic, it is interesting to note that even after the March 18, 2016 Non-Final Office Action tentatively denying the application somebody (presumably the COS, RTC, etc.) thought it necessary to file a Letter of Protest on or about April 15, 2016:

http://tsdr.uspto.gov/#caseNumber=86905517&caseType=SERIAL_NO&searchType=statusSearch

http://tsdr.uspto.gov/documentviewer?caseId=sn86905517&docId=ADR20160415114631#docIndex=1&page=1

http://tsdr.uspto.gov/documentviewer?caseId=sn86905517&docId=NTS20160419115046#docIndex=0&page=1

Somebody is doing everything possible to defeat these two trademark applications as soon as possible.

VIDEO: Merrel Vannier discusses strategy for First Independent Church of Scientology at 2016 FreeZone Convention.



Brian Cox at 2016 FreeZone Convention

Brian Cox

Published on Aug 18, 2016

Merrel lays out the intent and strategies of the First Independent Church of Scientology and how it will challenge the control and abuse of the subject by the Church of Scientology.

^^^^^
LOL!
Guy towards the end saying "he started reading OT3 and he aid it sounded so phony but when he realized it was't, he put it down"
Lady at the end off camera to Rhey Robles "I like your suit jacket, looks like an LRH jacket" suck up much?

Also the talk that continued after dinner was "confidential" for anyone OT3 and above. And Robles said if you weren't OT3 above and you attended it he couldn't vouch for their sanity?
I can't vouch for anyones sanity in that entire room.

How many OTs were there? And they forgot to turn off the camera when they walked out?

The First Independent Church of Scientology has responded to the United States Patent and Trademark Office Non-Final Office Actions that tentatively denied both Trademark applications.

With respect to the text-only mark, the First Independent Church of Scientology's written argument can found at:

https://tsdrsec.uspto.gov/ts/cd/pdf...092037052-20160919141534895855_._Response.pdf

With respect to the text only-mark, the First Independent Church of Scientology's complete response, including exhibits, can be found at:

http://tsdr.uspto.gov/documentviewer?caseId=sn86817837&docId=ROA20160920174138#docIndex=1&page=1

With respect to the text-only mark, the USPTO's Trademark Snap Shot Amendment & Mail Processing Stylesheet can be found at:

http://tsdr.uspto.gov/documentviewer?caseId=sn86817837&docId=AMC20160921054917#docIndex=0&page=1

USTPO page for all First Independent Church of Scientology text-only trademark application information:

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

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

With respect to the graphic mark, the First Independent Church of Scientology's written argument can be found at:

https://tsdrsec.uspto.gov/ts/cd/pdf...092037052-20160919133716908652_._Response.pdf

With respect to the graphic mark, the First Independent Church of Scientology's complete response, including exhibits, can be found at:

http://tsdr.uspto.gov/documentviewer?caseId=sn86905517&docId=ROA20160920172205#docIndex=1&page=1

With respect to the graphic mark, the USPTO's Trademark Snap Shot Amendment & Mail Processing Stylesheet can be found at:

http://tsdr.uspto.gov/documentviewer?caseId=sn86905517&docId=AMC20160921060857#docIndex=0&page=1

USTPO page for all First Independent Church of Scientology graphic trademark application information:

http://tsdr.uspto.gov/#caseNumber=86905517&caseType=SERIAL_NO&searchType=statusSearch

.

First Independent Church of Scientology argues, "The Term "Scientology" Has Become a Generic Term and Therefore is Not Entitled To a Trademark Protection."

Written response by First Independent Church of Scientology to USPTO Non-Final Office Action Tentatively Denying Application For Text-Only Trademark.

Among thing, the First Independent Church of Scientology argues that, "C. The Term "Scientology" Has Become a Generic Term and Therefore is Not Entitled To a Trademark Protection."

https://tsdrsec.uspto.gov/ts/cd/pdf...092037052-20160919141534895855_._Response.pdf

First Independent Church of Scientology (79176)

I. 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 Nos. 4674470, 4533003, 2717563, 2678135, 1342353, 1329474, 1318717, 1306997, 1540928, and 0898018. In view of the following arguments and remarks, applicant respectfully requests that applicant's mark be approved for registration.

A. Cited Marks are Different In Appearance, Sound, Connotation and Commercial Impression From Applicant's Mark.

Marks must be viewed as a whole in assessing whether there would be a likelihood of confusion. First, applicant's mark consists of five different words "First," "Independent," "Church," "Of," and "Scientology." Most of the cited marks (except "Scientology Volunteer Minister" and "International Scientology News") consist of a single word "Scientology." The prominent and distinctive portion of the applicant's mark is the word "Independent," which is the
second word in the mark versus "Scientology," which is the fifth and last word of the mark. This prominent and distinctive portion of the applicant's mark, "independent" has a commonly known meaning of:

a (1) : not subject to control by others :self-governing (2) :not affiliated with a larger controlling unit <an independent bookstore>b (1) : not requiring or relying on something else : not contingent <an independent conclusion> (2) : not looking to others for one's opinions or for guidance in conduct (3). not bound by or committed to a political party c (1) : not requiring or relying on others (as for care or livelihood).
Merriam-Webster Dictionary. See, http://www.merriamwebster.com/dictionary/independent

"Not being subject to control, or affiliated with others," "not requiring or relying on something else," or "not looking to others for one's opinions or for guidance in conduct," create a significantly different appearance, meaning and commercial impression that merely the terms
(cited marks) "Scientology," "Scientology Volunteer Minister," and "International Scientology News." In fact, the term "independent" as the prominent term of the applicant's mark makes it clear that the services provided under applicant's mark are not related or affiliated with those
provided under the cited marks.\

Therefore, applicant's mark is significantly different in appearance, meaning and commercial impression from the cited registered marks.\

Second, the addition of the other two words "First" and "Church" in the five-word applicant's mark of "First Independent Church of Scientology" provides a different commercial impression than the cited marks. There are many known marks, which include the distinctive word "First" to distinguish them over other marks or generic names, such as "First Foundation Trust," "First Foundation Advisors," "First Foundation," "First Foundation Bank," "Consumer
First," "First Market Capital," "First Aid," etc.. Accordingly, the addition of the particular word "First" (in addition to the distinctive word "Independent") to many marks or generic names, operates to significantly differentiate between them.

As a result, applicant's mark is significantly different in appearance, meaning and commercial impression from the cited registered marks.

B. Sophisticated Relevant Buyers of Applicant's Services Are Less Likely to be Confused by Registrant's Marks.

The consumers of both applicant's services and the services of registrant are professionals, celebrities, prominent business owners and educated individuals who are sophisticated and are familiar with the service providers of such services nation-wide. Most of these sophisticated consumers are repeat customers and are closely familiar with various service providers in self-fulfillment, spiritual, ministerial industries. Since applicant's mark prominently
includes the term "Independent," which stands for "Not being subject to control, or affiliated with others," "not requiring or relying on something else," or "not looking to others for one's opinions or for guidance in conduct, such sophisticated consumers would readily recognize that the source of goods and services for the applicant's mark is not the same as those of the registrant's.

As Professor McCarthy so appropriately stated (J. Thomas McCarthy, McCarthy on Trademarks, §23:101) "[m]any cases state that where the relevant buyer class is composed of professionals or commercial buyers familiar with the field, they are sophisticated enough to not be confused by trademarks that are closely similar. That is, it is assumed that such professional buyers are less likely to be confused than the ordinary consumer." Thus, while two marks might be sufficiently similar to confuse an ordinary consumer, a professional buyer or an expert in the field may be more knowledgeable and will not be confused. (See, for example, Arrow Fastener Co. v. Stanley Works, 59 F.3d. 384 35 U.S.P.Q.2d 1449 (2nd Cir. 1995), where knowledgeable buyer of defendant's $400 pneumatic stapler gun used for building construction and furniture manufacture is sophisticated and not likely to be confused with defendant's model number; and CMM Cable Rep. v. Ocean Coast Props., Inc. 888 F. Supp. 192, 36 U.S.P.Q.2d 1458 (D. Me. 1995), aff'd,97 F.3d 1054, 41 U.S.P.Q.2d (1st Cir. 1996), where sophisticated professional buyers "are less likely to be confused as to the source of origin of a product than ordinary
consumers of inexpensive foods or services"; summary of judgment of no likelihood of confusion of radio station executives.

Here, like any of the above cases, relevant buyers of registrant's services are professionals, celebrities, prominent business owners and educated individuals, who are more knowledgeable than ordinary consumers and thus will not be confused by applicant's use and registration of "First Independent Church of Scientology" for spiritual ministry services.

In short, considering differences in appearance, meaning and commercial impression of the marks and the sophistication of the relevant class of consumers of the services, no likelihood of confusion would arise as a result of applicant's use and registration of the trademark of "First Independent Church of Scientology" for spiritual ministry services.

C. The Term "Scientology" Has Become a Generic Term and Therefore is Not Entitled To a Trademark Protection.
“A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods.” Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79. “The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. Int’l Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 530 (Fed. Cir. 1986); In re America Online Inc., 77 USPQ 2d. 1618, 1622 (TTAB 2006). Trademarks act as source-identifiers; their purpose is to distinctly point out the source of the goods. In re Taylor & Francis Publishers, Inc., 55 U.S.P.Q.2d 1213, 1215 (T.T.A.B. 2000) (holding that "a generic entity designation [] is incapable of serving a source-indicating function"); TMEP § 1209.03(d) (same).

Here, for example, in a book (Exhibit A, [1]) written in the year 1910 (way before the term "scientology" was coined by the registrant, Religious Technology Center Corporation), the term "scientology" was used generically all over the book as a "quasi science" related to study or investigation of knowledge, or epistemology.

Registrant's own website defines scientology (without any trademark notice) as literally meaning "knowing how to know," or epistemology (Exhibit A, [2]). This word has now become generic for religious services including "Religious and Ministerial Services Including pastoral Counseling." (See, the cited Registration No. 1318717).

Additionally, another registrant's own website ("scientology.org") (Exhibit A, [3]), uses numerous headers including the word scientology generically and without any trademark notice. For example, “Scientology Video Channel”, “Scientology Newsroom”, “What is Scientology?”, “Scientology Today”, “Inside a church of Scientology”, “New Churches of Scientology”, “Meet a Scientologist”, “Scientology Today”, “Ideal Saint Hill Inauguration Crowns Extraordinary
Scientology Season of Expansion”, “What is the Concept of God in Scientology?”, “David Miscavige - Scientology’s Ecclesiastical Leader”, “The Scientology Bridge to Total Freedom”, “Scientology Beliefs and Practices", etc. If Scientology is supposed to be an adjective, they could talk about Scientology processing, or something like that. There are two references to “the Scientology religion”, but there is also a statement that “Scientology is a religion …”. The word Scientology is mostly used as a generic noun.

In this main website, the word Scientology and Scientologist are shown in the same font as the surrounding text, do not stand out and lack any trademark notices.

Accordingly, the members of the relevant public primarily visiting registrant's website understand the terms Scientology and Scientologist refer to the genus of services for "Religious and Ministerial [and spiritual] Services," and not the specific services or goods provided by the registrant.

Generic terms are in the public domain and should be free for all to use.1 As the U.S. Supreme Court stated: “Sharing in the goodwill of an article unprotected by patent or trademark is the exercise of a right possessed by all—and in the free exercise of which the consuming public is deeply interested.”2 To grant an exclusive right to one firm of use of the generic name of a product would be equivalent to creating a monopoly in that particular product, something that the trademark laws were never intended to accomplish3. Judge Friendly remarked that to permit exclusive trademark rights in a generic name “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”4

Registrant consistently refers to scientology as a religion. See, for example, Exhibit A
[1] and [2]:

http://www.scientology.org/what-is-scientology/the-practice-of-scientology.html
Within the vast amount of data which makes up Scientology’s religious beliefs and
practices there are many principles which, when learned, give one a new and broader
view of life.

Here, to grant an exclusive right to registrant for use of the generic name of a religion would be equivalent to creating a monopoly in that particular religion, which is also against the First Amendment rights of free exercise of religion.

Over time, a myriad of terms were held to be generic and unprotectable as valid marks. For example, CHRISTIAN SCIENCE (for a religious organization following the teachings of Mary Baker Eddy), was held to be generic.5

Other terms that started as a protectable trademarks

1 King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577, 581, 138 U.S.P.Q. 349 (2d Cir. 1963) (“The word [Thermos] having become part of the public domain, it would be unfair to unduly restrict the right of a competitor of King-Seeley to use the word.”); Application of Sun Oil Co., 57 C.C.P.A. 1147, 426 F.2d 401, 404, 165 U.S.P.Q. 718 (1970) (“All of the generic names for a product belong in the public domain.”); Henri's Food Products Co., Inc. v. Tasty Snacks, Inc., 817 F.2d 1303, 1305, 2 U.S.P.Q.2d 1856 (7th Cir. 1987) (“[A] generic name …. is irretrievably in the public domain, and the preservation of competition precludes its protection.”).

2 Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 83 L. Ed. 73, 59 S. Ct. 109 (1938).

3 Car-Freshner Corp. v. Auto Aid Mfg. Corp., 461 F. Supp. 1055, 201 U.S.P.Q. 233 (N.D.N.Y. 1978); AntiMonopoly, Inc. v. General Mills Fun Group, 611 F.2d 296, 204 U.S.P.Q. 978 (9th Cir. 1979) (“Trademarks are not properly used as patent substitutes to further or perpetuate product monopolies.”); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 U.S.P.Q. 759, 769 (2d Cir. 1976) (to protect a generic name would be to confer a “monopoly” on one seller in the sale of the named product); A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 U.S.P.Q.2d 1364, 1375 (3d Cir. 1986) (“The genericness doctrine prevents trademarks from serving as the substitutes for patents, and protects the public right to copy any non-patented, functional characteristic of a competitor's product.”).

4 CES Publishing Corp. v. St. Regis Publications, 531 F.2d 11, 188 U.S.P.Q. 612, 615 (2d Cir. 1975) (the author would slightly amend this comment to substitute “name” for “describe”).

5 Christian Science Bd. of Directors of First Church of Christ, Scientist v. Evans, 105 N.J. 297, 520 A.2d 1347, 2 U.S.P.Q.2d 1093 (1987).

and then were held generic and therefore unprotectable as valid marks include: MONTESSORY (for educational method and toys used for such method)

6 SELF-REALIZATION (a type of yoga spiritual organization)

7 SOCIOGRAPHICS (for technique of management consulting)

8 THERMOS (for vacuum-insulated bottles)

9 EASTER BASKET (Easter floral bouquet)

10, and many more.

In the present case, similar to CHRISTIAN SCIENCE, the term Scientology has become generic. Also, it is a well-established law that showing of secondary meaning can never earn trademark status for a generic word or phrase.

D. Even if the term "scientology" has not become a generic term, Registrant's Mark is a Weak Mark and Therefore is Entitled to a Narrower Scope of Protection.

Exhibit B is a list of various media using the term scientology generically to refer to product or services defined by the term that are not associated with those of the registrant. As evidenced by Exhibits A and B, there are many media that use the term scientology generically. As stated above, registrant's own websites use the term scientology (and scientologist) generically without any trademark notice. Therefore at a minimum, on the scale of trademarks,
the marks including some or all of the above word (in IC 042) must be considered rather weak.

One important factor to be relied upon in determining registrability of a mark is the strength or weakness of the marks at issue. See, e.g. In re Hamilton Bank, 222 U.S.P.Q. 174 (T.T.A.B. 1984). Even weak marks are entitled to protection. In re National Data Corp., 222 U.S.P.Q. 515 (T.T.A.B. 1984), aff’d 224 U.S.P.Q. 749 (Fed. Cir. 1985); Plus Products v. Physicians Formula Cosmetics, Inc., 198 U.S.P.Q. 111 (T.T.A.B. 1978); In re Textron, Inc., 180
U.S.P.Q. 341 (T.T.A.B. 1973). However, weak marks are entitled to a narrower scope of protection than strong marks. Based on the premise that weak marks are entitled to limited protection, the courts and the Trademark Trial and Appeal Board have repeatedly held that even where marks are nearly identical and even where the goods at issue are related to one another, confusion is not likely where the marks themselves are weak and where there are specific differences between the particular goods.

6 American Montessori Soc'y v. Association Montessori Internationale, 155 U.S.P.Q. 591, 1967 WL 7288 (T.T.A.B. 1967).

7 Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 35 U.S.P.Q.2d 1342 (9th Cir. 1995) (“Self-Realization” held to be a generic name for a type of organization dedicated to spiritual attainment in the manner taught by yoga, but a descriptive term when used in connection with products and services sold by the organization; no secondary meaning found.).

8 In re B. C. Switzer & Co., 211 U.S.P.Q. 644 (T.T.A.B. 1981).

9 King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577, 138 U.S.P.Q. 349 (2d Cir. 1963).

10 Teleflora, Inc. v. Florists Transworld Delivery Ass'n, 217 U.S.P.Q. 1081 (C.D. Cal. 1981).

11 General Conference Corporation of Seventh-Day Adventist v. Seventh-Day Adventist Kinship International, Inc. 1991 WL 11000345, *4+, C.D.Cal; and American Ort, Inc. v. Israel 2007 WL 2049733, *6+, S.D.N.Y. 6

For example, In re General Motors Corp., 23 U.S.P.Q. 2d 1465 (T.T.A.B. 1992), registration of the mark GRAND PRIX for automobiles was refused by the examining attorney based on a prior registration for the identical mark for use with automobile tires. However, the Board reversed the examining attorney in spite of the fact that the identical mark was used on closely related goods. In reaching this decision, the Board pointed out that the term “grand prix”
was a weak mark. Therefore, based in large part on specific differences in the goods at issue, the Board concluded that confusion was not likely. (23 U.S.P.Q. 2d at 1470.)

Here, there is evidence of many media that use the term scientology generically, without referring to registrant's services or source of such services. Therefore, the cited marks, which consist of or include the above word, are weak marks. Because of the weakness of the cited marks, as a whole, the registered marks are entitled to only narrow protection and do not bar registration of applicant’s mark.

Applicant respectfully submits that the evidence in Exhibits A and B relied upon by Applicant is properly submitted and carries evidentiary value. According to the Trademark Trial and Appeal Board, such evidence is “competent to show that others in a particular area of commerce have adopted and registered marks incorporating a particular term.” In re Hamilton Bank, 222 U.S.P.Q. 174, 177 (T.T.A.B. 1984). In that decision, a number of prior registrations
for marks that included the word “key” were cited by applicant to establish that its stylized trademark for KEY, though admittedly weak, was entitled to some narrow scope of protection. In reversing the refusal of registration, the Board relied on the evidence submitted by applicant and held that confusion was not likely. Id. at 178. Therefore, the evidence submitted by Applicant must be considered.

In short, considering the many generic uses of the word "SCIENTOLOGY", the sophistication of the relevant class of consumers, and the weakness of the cited marks, no likelihood of confusion would arise as a result of applicant's use and registration of the trademark of "First Independent Church of Scientology," for spiritual ministry services. Accordingly, applicant respectfully requests that applicant's mark be approved for registration.

II. Refusal Under False Association

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.

A. Applicant's Mark Does Not Falsely Suggest A Connection To Registrant.

As explained above, the prominent and distinctive portion of the applicant's mark is the word "Independent," which means "Not being subject to control, or affiliated with others," "not requiring or relying on something else," or "not looking to others for one's opinions or for guidance in conduct." This term, "independent" as the prominent term of the applicant's mark, makes it clear that the services provided under applicant's mark are not related or affiliated with those provided under the cited marks by the registrant. Accordingly, the applied-for mark does not falsely suggest a connection with the Church of Scientology, or the registrant, Religious Technology Center Corporation.


In fact, the Office action admits that the "wording, 'independent church,' merely describes a self-governing religious institution." (Office action, fourth paragraph under the heading "DISCLAIMER REQUIRED." The clarification that applicant's services have no connection with those of registrant's is self-evident by the use of the term "independent" in applicant's mark.

B. Applicant's Mark Does Not Point Uniquely and Unmistakably to Registrant.

As explained above, the cited marks have become generic and used by the consumers and media generically to refer to epistemology. Moreover, the term scientology has become a recognizable religion practiced by many people, similar to Christianity, Buddhism, or Judaism. In the same way that "first independent church of Christianity," or "first independent temple of Buddhism, or Judaism" does not refer to Vatican, The Eastern Orthodox Church, Apostolic Church, Chinese or Japanese Buddhism, Rabbinic Judaism, Orthodox Judaism, Conservative Judaism, or Reform Judaism, "First Independent Church of Scientology" does not refer to another specific entity that practices the religion of Scientology, for example, Religious Technology Center Corporation.


III. Disclaimer Required

Applicant will address the issues under this Section of the Office action, after the refusals under Likelihood of Confusion and False Association are resolved.

As a result, applicant respectfully requests that applicant's mark be approved for registration.


Exhibit A
Many other references to the term "scientology" in connection with religious, ministerial and spiritual services can be found by running a Google™ or Yahoo™ search.
[1] The New Word by Allen Upward, Mirtchel, Kenerly, New York,1910. Online archived
searchable copy available at:
https://archive.org/stream/newwordanopenle01upwagoog/newwordanopenle01upwagoog_djvu.txt

I find there are at least three atoms known to science, or at least to Scientology, the arithmetical atom, the physical one, and the logical one. Of these the logical one has been kept intact by unheard of efforts ; the other two have been split, and are being split every day.

All this is not really science, but only Scientology. It is language. It is the magic lullaby in which the shapes of things melt and reshape themselves forever.

It is no whit better than theological writing. And unhappily Scientology is as often mistaken for science as theology is for worship. whereas Materialism was a mix - we had no quarrel with its facts. We distinguished between science and Scientology.

[2] "What Is Scientology" http://www.whatisscientology.org/ Registrant's own website.
Definition of Scientology

The word Scientology is taken from the Latin scio, which means "knowing, in the fullest sense of the word," and the Greek word logo, meaning "study of." It literally means knowing how to know. Scientology is knowing YOURSELF, LIFE, FAMILY, the universe, the spirit, GOD The study of Truth
Scientology is a religion in its highest meaning, as it helps bring man to total freedman and truth.

[3] "Scientology.org" http://www.scientology.org/ This is one of the registrant's main websites.

Exhibit B

[1] Kwanzaa: The Scientology of Holidays - Conservative Outfitters
https://www.conservativeoutfitters.com/blogs/news/11155173-kwanzaa-the-scientology-ofholidays

[2] Libertarianism: The Scientology of Politics - YouTube

Jun 6, 2014 - Uploaded by The Majority Report with Sam Seder
After briefly discussing the paper, A Dilemma for Libertarians, with a listener, Sam and
the crew get into a ...

[3] The Scientology of Crossfit | Adam Berke | LinkedIn
https://www.linkedin.com/pulse/scientology-crossfit-adam-berke
LinkedIn
Nov 24, 2015 - I am not a douche-bag, I am "Crossfit confident"? The first time I witnessed
Crossfit I was working on Brickell Avenue in Miami's financial district.

[4] Paleo is the Scientology of Diets | Body for Wife
www.bodyforwife.com/paleo-is-the-scientology-of-diets/
I was close to landing a fitness interview with Tom Cruise, but then he bailed. And so I
am now free to say that Scientology is stupid. People make fun of the ...

[5] Giordano Memorization System (GMS) - The "Scientology of memory ...
mt.artofmemory.com/.../giordano-memorization-system-gms-the-scientology-of-mem...
I've been doing a bit of research on GMS (Giordano Memorization Systems), which one
poster here referred to as "the Scientology of memory systems".

[6] The Beatles: The Scientology Of Pop - The Afterword
theafterword.co.uk › Blog
Nov 3, 2015 - Maybe I don't like some of them, maybe you don't, but the argument that The
Beatles Are The Best is now the scripture of the Scientologist.


[7] The scientology of pizza - The Something Awful Forums
https://forums.somethingawful.com/showthread.php?threadid=3786008
42 posts - 6 authors
the scientology of pizza. ... Yobgoblin. scientology has science in it but the only math they do is
counting their dirty money. 519x301. Emotes I bought: Thanks to: ...
CLM PAS1439963.1-*-09/19/16 10:56 AM

.

They should just call it "The First Independent Church of Scientology Sucks".

There are legal precedents for allowing "sucks" to be tacked on to a company name for domains.

First Independent Church of Scientology again argues, "The Term "Scientology" Has Become a Generic Term and Therefore is Not Entitled To a Trademark Protection."

Written response by First Independent Church of Scientology to USPTO Non-Final Office Action Tentatively Denying Application For Graphic Trademark.

Among things, the First Independent Church of Scientology argues that, "C. The Term "Scientology" Has Become a Generic Term and Therefore is Not Entitled To a Trademark Protection."

http://tsdr.uspto.gov/documentviewer?caseId=sn86905517&docId=ROA20160920172205#docIndex=1&page=1

First Independent Church of Scientology (79664)

I. 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 Nos. 4674470, 4533003, 2717563, 2678135, 1342353, 1329474, 1318717, 1306997, 1540928, and 0898018. In view of the following arguments and remarks, applicant respectfully requests that applicant's mark be approved for registration.

A. Cited Marks are Different In Appearance, Sound, Connotation and Commercial Impression From Applicant's Mark.

Marks must be viewed as a whole in assessing whether there would be a likelihood of confusion.

First, applicant's mark includes a distinctive color design including a large circular shape with darker blue circumference, a smaller circular shape with lighter blue circumference located inside of the larger circular shape, a Cross shape inside of the smaller circular shape with white outer perimeter and darker blue inner perimeter, the Cross shape having a star shape of the same color at its crossing. It is clear that this unique color design and scheme is significantly different in appearance and commercial impression from those cited registered marks that include a very different design with the words "SCIENTOLOGY MEDIA PRODUCTION" and "LOS ANGELES HISTORIC CULTURAL MONUMENT EST. 1912" prominently displayed with the very different design.
Second, applicant's mark additionally includes a distinctive font design with the words FIRST INDEPENDENT CHURCH OF SCIENTOLOGY in color blue prominently displayed in three lines to the right of the circular design. The word "FIRST" has a significantly larger font located on the top line, the words INDEPENDENT CHURCH OF are displayed in smaller fond in the second line and finally the word SCIENTOLOGY is displayed in a "medium" font in the
last (third) line. Again, it is evident that this unique color font design is significantly different in appearance and commercial impression from those cited registered marks.

Third, applicant's mark consists of five different words "First," "Independent," "Church," "Of," and "Scientology." Most of the cited marks (except "Scientology Volunteer Minister" and "International Scientology News") consist of a single word "Scientology." The prominent and distinctive portion of the applicant's mark is the word "Independent," which is the second word in the mark versus "Scientology," which is the fifth and last word of the mark. This prominent and distinctive portion of the applicant's mark, "independent" has a commonly known meaning of:

a (1) : not subject to control by others :self-governing (2) :not affiliated with a larger controlling unit <an independent bookstore>b (1) : not requiring or relying on something else : not contingent <an independent conclusion> (2) : not looking to others for one's opinions or for guidance in conduct (3). not bound by or committed to a political party c (1) : not requiring or relying on others (as for care or livelihood).
2
Merriam-Webster Dictionary. See, http://www.merriamwebster.com/dictionary/independent

"Not being subject to control, or affiliated with others," "not requiring or relying on something else," or "not looking to others for one's opinions or for guidance in conduct," create a significantly different appearance, meaning and commercial impression that merely the terms (cited marks) "Scientology," "Scientology Volunteer Minister," and "International Scientology News." In fact, the term "independent" as the prominent term of the applicant's mark makes it clear that the services provided under applicant's mark are not related or affiliated with those provided under the cited marks.

Therefore, applicant's mark is significantly different in appearance, meaning and commercial impression from the cited registered marks.

Fourth, the addition of the other two words "First" and "Church" in the five-word applicant's mark of "First Independent Church of Scientology" provides a different commercial impression than the cited marks. There are many known marks, which include the distinctive word "First" to distinguish them over other marks or generic names, such as "First Foundation Trust," "First Foundation Advisors," "First Foundation," "First Foundation Bank," "Consumer
First," "First Market Capital," "First Aid," etc.. Accordingly, the addition of the particular word "First" (in addition to the distinctive word "Independent") to many marks or generic names, operates to significantly differentiate between them.

As a result, applicant's mark is significantly different in appearance, meaning and commercial impression from the cited registered marks.

B. Sophisticated Relevant Buyers of Applicant's Services Are Less Likely to be Confused by Registrant's Marks.

The consumers of both applicant's services and the services of registrant are professionals, celebrities, prominent business owners and educated individuals who are sophisticated and are familiar with the service providers of such services nation-wide. Most of these sophisticated consumers are repeat customers and are closely familiar with various service providers in self-fulfillment, spiritual, ministerial industries. Since applicant's mark prominently
includes the term "Independent," which stands for "Not being subject to control, or affiliated with others," "not requiring or relying on something else," or "not looking to others for one's opinions or for guidance in conduct, such sophisticated consumers would readily recognize that the source of goods and services for the applicant's mark is not the same as those of the registrant's.

As Professor McCarthy so appropriately stated (J. Thomas McCarthy, McCarthy on Trademarks, §23:101) "[m]any cases state that where the relevant buyer class is composed of professionals or commercial buyers familiar with the field, they are sophisticated enough to not be confused by trademarks that are closely similar. That is, it is assumed that such professional buyers are less likely to be confused than the ordinary consumer." Thus, while two marks might be sufficiently similar to confuse an ordinary consumer, a professional buyer or an expert in the field may be more knowledgeable and will not be confused. (See, for example, Arrow Fastener Co. v. Stanley Works, 59 F.3d. 384 35 U.S.P.Q.2d 1449 (2nd Cir. 1995), where knowledgeable buyer of defendant's $400 pneumatic stapler gun used for building construction and furniture manufacture is sophisticated and not likely to be confused with defendant's model number; and CMM Cable Rep. v. Ocean Coast Props., Inc. 888 F. Supp. 192, 36 U.S.P.Q.2d 1458 (D. Me. 1995), aff'd,97 F.3d 1054, 41 U.S.P.Q.2d (1st Cir. 1996), where sophisticated professional buyers "are less likely to be confused as to the source of origin of a product than ordinary
consumers of inexpensive foods or services"; summary of judgment of no likelihood of confusion of radio station executives.

Here, like any of the above cases, relevant buyers of registrant's services are professionals, celebrities, prominent business owners and educated individuals, who are more knowledgeable than ordinary consumers and thus will not be confused by applicant's use and registration of "First Independent Church of Scientology" for spiritual ministry services.

In short, considering differences in appearance, meaning and commercial impression of the marks and the sophistication of the relevant class of consumers of the services, no likelihood of confusion would arise as a result of applicant's use and registration of the trademark of "First Independent Church of Scientology" for spiritual ministry services.

C. The Term "Scientology" Has Become a Generic Term and Therefore is Not Entitled To a Trademark Protection.

“A generic or common descriptive term is one which is commonly used as the name or description of a kind of goods.” Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79. “The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. Int’l Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 530 (Fed. Cir. 1986); In re America Online Inc., 77 USPQ 2d. 1618, 1622 (TTAB 2006). Trademarks act as source-identifiers; their purpose is to distinctly point out the source of the goods. In re Taylor & Francis Publishers, Inc., 55 U.S.P.Q.2d 1213, 1215 (T.T.A.B. 2000) (holding that "a generic entity designation [] is incapable of serving a source-indicating function"); TMEP § 1209.03(d) (same).

Here, for example, in a book (Exhibit A, [1]) written in the year 1910 (way before the term "scientology" was coined by the registrant, Religious Technology Center Corporation), the term "scientology" was used generically all over the book as a "quasi science" related to study or investigation of knowledge, or epistemology.

Registrant's own website defines scientology (without any trademark notice) as literally meaning "knowing how to know," or epistemology (Exhibit A, [2]). This word has now become generic for religious services including "Religious and Ministerial Services Including pastoral Counseling." (See, the cited Registration No. 1318717).

Additionally, another registrant's own website ("scientology.org") (Exhibit A, [3]), uses numerous headers including the word scientology generically and without any trademark notice. For example, “Scientology Video Channel”, “Scientology Newsroom”, “What is Scientology?”, “Scientology Today”, “Inside a church of Scientology”, “New Churches of Scientology”, “Meet a Scientologist”, “Scientology Today”, “Ideal Saint Hill Inauguration Crowns Extraordinary
Scientology Season of Expansion”, “What is the Concept of God in Scientology?”, “David Miscavige - Scientology’s Ecclesiastical Leader”, “The Scientology Bridge to Total Freedom”, “Scientology Beliefs and Practices", etc. If Scientology is supposed to be an adjective, they could talk about Scientology processing, or something like that. There are two references to “the Scientology religion”, but there is also a statement that “Scientology is a religion …”. The wordScientology is mostly used as a generic noun.

In this main website, the word Scientology and Scientologist are shown in the same font as the surrounding text, do not stand out and lack any trademark notices.

Accordingly, the members of the relevant public primarily visiting registrant's website understand the terms Scientology and Scientologist refer to the genus of services for "Religious and Ministerial [and spiritual] Services," and not the specific services or goods provided by the registrant.
Generic terms are in the public domain and should be free for all to use.1. As the U.S. Supreme Court stated: “Sharing in the goodwill of an article unprotected by patent or trademark is the exercise of a right possessed by all—and in the free exercise of which the consuming public is deeply interested.”2

To grant an exclusive right to one firm of use of the generic name of a product would be equivalent to creating a monopoly in that particular product, something that the trademark laws were never intended to accomplish3. Judge Friendly remarked that to permit exclusive trademark rights in a generic name “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”4

1 King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577, 581, 138 U.S.P.Q. 349 (2d Cir. 1963) (“The word [Thermos] having become part of the public domain, it would be unfair to unduly restrict the right of a competitor of King-Seeley to use the word.”); Application of Sun Oil Co., 57 C.C.P.A. 1147, 426 F.2d 401, 404, 165 U.S.P.Q. 718 (1970) (“All of the generic names for a product belong in the public domain.”); Henri's Food Products Co., Inc. v. Tasty Snacks, Inc., 817 F.2d 1303, 1305, 2 U.S.P.Q.2d 1856 (7th Cir. 1987) (“[A] generic name …. is irretrievably in the public domain, and the preservation of competition precludes its protection.”).

2 Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 83 L. Ed. 73, 59 S. Ct. 109 (1938).

3 Car-Freshner Corp. v. Auto Aid Mfg. Corp., 461 F. Supp. 1055, 201 U.S.P.Q. 233 (N.D.N.Y. 1978); AntiMonopoly, Inc. v. General Mills Fun Group, 611 F.2d 296, 204 U.S.P.Q. 978 (9th Cir. 1979) (“Trademarks are not properly used as patent substitutes to further or perpetuate product monopolies.”); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 U.S.P.Q. 759, 769 (2d Cir. 1976) (to protect a generic name would be to confer a “monopoly” on one seller in the sale of the named product); A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 U.S.P.Q.2d 1364, 1375 (3d Cir. 1986) (“The genericness doctrine prevents trademarks from serving as the substitutes for patents, and protects the public right to copy any non-patented, functional characteristic of a competitor's product.”).

4 CES Publishing Corp. v. St. Regis Publications, 531 F.2d 11, 188 U.S.P.Q. 612, 615 (2d Cir. 1975) (the author would slightly amend this comment to substitute “name” for “describe”).

5 Registrant consistently refers to scientology as a religion. See, for example, Exhibit A [1] and [2]:
http://www.scientology.org/what-is-scientology/the-practice-of-scientology.html
Within the vast amount of data which makes up Scientology’s religious beliefs and practices there are many principles which, when learned, give one a new and broader view of life.

Here, to grant an exclusive right to registrant for use of the generic name of a religion would be equivalent to creating a monopoly in that particular religion, which is also against the First Amendment rights of free exercise of religion.

Over time, a myriad of terms were held to be generic and unprotectable as valid marks. For example, CHRISTIAN SCIENCE (for a religious organization following the teachings of Mary Baker Eddy), was held to be generic.5

Other terms that started as a protectable trademarks and then were held generic and therefore unprotectable as valid marks include: MONTESSORY
(for educational method and toys used for such method) 6, SELF-REALIZATION (a type of yoga spiritual organization)7, SOCIOGRAPHICS (for technique of management consulting)8, THERMOS (for vacuum-insulated bottles)9, EASTER BASKET (Easter floral bouquet)10, and many more.

In the present case, similar to CHRISTIAN SCIENCE, the term Scientology has become generic. Also, it is a well-established law that showing of secondary meaning can never earn trademark status for a generic word or phrase.11

D. Even if the term "scientology" has not become a generic term, Registrant's Mark is a Weak Mark and Therefore is Entitled to a Narrower Scope of Protection.

5 Christian Science Bd. of Directors of First Church of Christ, Scientist v. Evans, 105 N.J. 297, 520 A.2d 1347, 2 U.S.P.Q.2d 1093 (1987).

6 American Montessori Soc'y v. Association Montessori Internationale, 155 U.S.P.Q. 591, 1967 WL 7288 (T.T.A.B. 1967).

7 Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 35 U.S.P.Q.2d 1342 (9th Cir. 1995) (“Self-Realization” held to be a generic name for a type of organization dedicated to spiritual attainment in the manner taught by yoga, but a descriptive term when used in connection with products and services sold by the organization; no secondary meaning found.).

8 In re B. C. Switzer & Co., 211 U.S.P.Q. 644 (T.T.A.B. 1981).

9 King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577, 138 U.S.P.Q. 349 (2d Cir. 1963).

10 Teleflora, Inc. v. Florists Transworld Delivery Ass'n, 217 U.S.P.Q. 1081 (C.D. Cal. 1981).

11 General Conference Corporation of Seventh-Day Adventist v. Seventh-Day Adventist Kinship International, Inc. 1991 WL 11000345, *4+, C.D.Cal; and American Ort, Inc. v. Israel 2007 WL 2049733, *6+, S.D.N.Y.

6 Exhibit B is a list of various media using the term scientology generically to refer to product or services defined by the term that are not associated with those of the registrant. As evidenced by Exhibits A and B, there are many media that use the term scientology generically. As stated above, registrant's own websites use the term scientology (and scientologist) generically without any trademark notice. Therefore at a minimum, on the scale of trademarks,
the marks including some or all of the above word (in IC 042) must be considered rather weak.

One important factor to be relied upon in determining registrability of a mark is the strength or weakness of the marks at issue. See, e.g. In re Hamilton Bank, 222 U.S.P.Q. 174 (T.T.A.B. 1984). Even weak marks are entitled to protection. In re National Data Corp., 222 U.S.P.Q. 515 (T.T.A.B. 1984), aff’d 224 U.S.P.Q. 749 (Fed. Cir. 1985); Plus Products v. Physicians Formula Cosmetics, Inc., 198 U.S.P.Q. 111 (T.T.A.B. 1978); In re Textron, Inc., 180 U.S.P.Q. 341 (T.T.A.B. 1973). However, weak marks are entitled to a narrower scope of protection than strong marks. Based on the premise that weak marks are entitled to limited protection, the courts and the Trademark Trial and Appeal Board have repeatedly held that even where marks are nearly identical and even where the goods at issue are related to one another, confusion is not likely where the marks themselves are weak and where there are specific
differences between the particular goods. For example, In re General Motors Corp., 23 U.S.P.Q. 2d 1465 (T.T.A.B. 1992), registration of the mark GRAND PRIX for automobiles was refused by the examining attorney based on a prior registration for the identical mark for use with automobile tires. However, the
Board reversed the examining attorney in spite of the fact that the identical mark was used on closely related goods. In reaching this decision, the Board pointed out that the term “grand prix” was a weak mark. Therefore, based in large part on specific differences in the goods at issue, the Board concluded that confusion was not likely. (23 U.S.P.Q. 2d at 1470.)

Here, there is evidence of many media that use the term scientology generically, without referring to registrant's services or source of such services. Therefore, the cited marks, which consist of or include the above word, are weak marks. Because of the weakness of the cited marks, as a whole, the registered marks are entitled to only narrow protection and do not bar registration of applicant’s mark.

Applicant respectfully submits that the evidence in Exhibits A and B relied upon by Applicant is properly submitted and carries evidentiary value. According to the Trademark Trial and Appeal Board, such evidence is “competent to show that others in a particular area of commerce have adopted and registered marks incorporating a particular term.” In re Hamilton Bank, 222 U.S.P.Q. 174, 177 (T.T.A.B. 1984). In that decision, a number of prior registrations
for marks that included the word “key” were cited by applicant to establish that its stylized trademark for KEY, though admittedly weak, was entitled to some narrow scope of protection. In reversing the refusal of registration, the Board relied on the evidence submitted by applicant
and held that confusion was not likely. Id. at 178. Therefore, the evidence submitted by Applicant must be considered.

In short, considering the many generic uses of the word "SCIENTOLOGY", the sophistication of the relevant class of consumers, and the weakness of the cited marks, no likelihood of confusion would arise as a result of applicant's use and registration of the trademark of "First Independent Church of Scientology," for spiritual ministry services. Accordingly, applicant respectfully requests that applicant's mark be approved for registration.

II. Refusal Under False Association

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.

A. Applicant's Mark Does Not Falsely Suggest A Connection To Registrant.

As explained above, the prominent and distinctive portion of the applicant's mark is the word "Independent," which means "Not being subject to control, or affiliated with others," "not requiring or relying on something else," or "not looking to others for one's opinions or for guidance in conduct." This term, "independent" as the prominent term of the applicant's mark, makes it clear that the services provided under applicant's mark are not related or affiliated with those provided under the cited marks by the registrant. Accordingly, the applied-for mark does not falsely suggest a connection with the Church of Scientology, or the registrant, Religious Technology Center Corporation.

In fact, the Office action admits that the "wording, 'independent church,' merely describes a self-governing religious institution." (Office action, fourth paragraph under the heading "DISCLAIMER REQUIRED." The clarification that applicant's services have no connection with those of registrant's is self-evident by the use of the term "independent" in applicant's mark.

Additionally, the unique color graphic and color font design of applicant' mark is significantly different in appearance and commercial impression from those cited registered marks and therefore does not falsely suggest a connection with the Church of Scientology, or the registrant, Religious Technology Center Corporation.

B. Applicant's Mark Does Not Point Uniquely and Unmistakably to Registrant.

As explained above, the cited marks have become generic and used by the consumers and media generically to refer to epistemology. Moreover, the term scientology has become a recognizable religion practiced by many people, similar to Christianity, Buddhism, or Judaism. In the same way that "first independent church of Christianity," or "first independent temple of Buddhism, or Judaism" does not refer to Vatican, The Eastern Orthodox Church, Apostolic Church, Chinese or Japanese Buddhism, Rabbinic Judaism, Orthodox Judaism, Conservative Judaism, or Reform Judaism, "First Independent Church of Scientology" does not refer to another specific entity that practices the religion of Scientology, for example, Religious Technology Center Corporation.

III. Disclaimer Required

Applicant will address the issues under this Section of the Office action, after the refusals under Likelihood of Confusion and False Association are resolved.

As a result, applicant respectfully requests that applicant's mark be approved for registration.


Exhibit A
Many other references to the term "scientology" in connection with religious, ministerial and spiritual services can be found by running a Google™ or Yahoo™ search.
[1] The New Word by Allen Upward, Mirtchel, Kenerly, New York,1910. Online archived
searchable copy available at:
https://archive.org/stream/newwordanopenle01upwagoog/newwordanopenle01upwagoog_djvu.txt
I find there are at least three atoms known to science, or at least to Scientology, the arithmetical atom, the physical one, and the logical one. Of
these the logical one has been kept intact by unheard of efforts ; the other two have been split, and are being split every day. All this is not really science, but only Scientology. It is language. It is the magic lullaby in which the shapes of things melt and reshape themselves forever.

It is no whit better than theological writing. And unhappily Scientology is as often mistaken for science as theology is for worship. whereas Materialism was a mix - we had no quarrel with its facts. We distinguished between science and Scientology.
[2] "What Is Scientology" http://www.whatisscientology.org/ Registrant's own website.
Definition of Scientology\
he word Scientology is taken from the Latin scio, which means "knowing, in the fullest
sense of the word," and the Greek word logo, meaning "study of." It literally means knowing how to know. Scientology is knowing YOURSELF, LIFE, FAMILY, the universe, the spirit, GOD The study of Truth Scientology is a religion in its highest meaning, as it helps bring man to total freedman
and truth.
[3] "Scientology.org" http://www.scientology.org/ This is one of the registrant's main websites.

Exhibit B
[1] Kwanzaa: The Scientology of Holidays - Conservative Outfitters
https://www.conservativeoutfitters.com/blogs/news/11155173-kwanzaa-the-scientology-ofholidays
[2] Libertarianism: The Scientology of Politics - YouTube

Jun 6, 2014 - Uploaded by The Majority Report with Sam Seder
After briefly discussing the paper, A Dilemma for Libertarians, with a listener, Sam and
the crew get into a ...
[3] The Scientology of Crossfit | Adam Berke | LinkedIn
https://www.linkedin.com/pulse/scientology-crossfit-adam-berke
LinkedIn
Nov 24, 2015 - I am not a douche-bag, I am "Crossfit confident"? The first time I witnessed
Crossfit I was working on Brickell Avenue in Miami's financial district.
[4] Paleo is the Scientology of Diets | Body for Wife
www.bodyforwife.com/paleo-is-the-scientology-of-diets/
I was close to landing a fitness interview with Tom Cruise, but then he bailed. And so I
am now free to say that Scientology is stupid. People make fun of the ...
[5] Giordano Memorization System (GMS) - The "Scientology of memory ...
mt.artofmemory.com/.../giordano-memorization-system-gms-the-scientology-of-mem...
I've been doing a bit of research on GMS (Giordano Memorization Systems), which one
poster here referred to as "the Scientology of memory systems".
[6] The Beatles: The Scientology Of Pop - The Afterword
theafterword.co.uk › Blog
Nov 3, 2015 - Maybe I don't like some of them, maybe you don't, but the argument that The
Beatles Are The Best is now the scripture of the Scientologist.
12
[7] The scientology of pizza - The Something Awful Forums
https://forums.somethingawful.com/showthread.php?threadid=3786008
42 posts - 6 authors
the scientology of pizza. ... Yobgoblin. scientology has science in it but the only math they do is
counting their dirty money. 519x301. Emotes I bought: Thanks to: ...
CLM PAS1440360.1-*-09/19/16 11:00 AM






.

Crazy. If this legal gobble-dee-gook has any validity it would be possible for anyone to start a hamburger joint called "The First Independent Restaurant of McDonalds". Good luck with that.

Its bizarre that anyone wanting to make a living charging people to chase engrams would insist on calling such a practise Scientology? Using "Scientology" as a descriptor of anything connotes foulness. The brand is completely filthy. Its more likely to turn people off the idea than just about any other term.

Still, all this effort and energy spent wasting time is typical of the post-cult pro-LRH community. Finding it near impossible to attract raw-meat, they come up with all manner of other things which need to be done as a prerequisite to imagined success; other things like forming a Qual Division to ensure the purity of delivery, or, in this case, seeking to secure use of the term Scientology. So far as I can see, such futility amounts to a manifestation of denial, distraction, and projection which eases the mental discomfort endured when confronting the reality about Scientology and its "workability".

There is a possible distinction noted, but not elaborated, in both Responses by the First Independent Church of Scientology:

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

Here, to grant an exclusive right to registrant for use of the generic name of a religion would be equivalent to creating a monopoly in that particular religion, which is also against the First Amendment rights of free exercise of religion.

* * * * * END EXCERPT * * * * *

I'm not saying this argument is convincing. A court may eventually say you can still practice your religion, you just can't use the word "Scientology" at all. Still, it makes this case a bit different than one concerning a purely commercial enterprise such as McDonalds, and may give a court pause.

I want to add, the FICS's argument that the term "Scientology" is generic and therefore is not entitled to trademark protection is technically different than their argument that the words "First Independent" eliminate any likelihood of confusion.

Interestingly, the FICS's alternative argument that IF the word "Scientology" is entitled to trademark protection it is nonetheless a "weak" mark entitled to lesser protection (i.e., the next argument in their responses) is probably related that their argument that the words "First Independent" provide sufficient differentiation. That is, assuming arguendo that the words "First Independent' would not provide sufficient differentiation if the word "Scientology" qualified as a strong mark, the words "First Independent" may nonetheless provide sufficient differentiation if one agrees with the FICS that the word "Scientology" is, if anything, a weak mark.

This could go on for awhile the FICS or the people behind it had money.

EDITED TO ADD:

One thing the FICS does not clearly address is the danger that if the USPTO, or later a court, finds that the word "Scientology" is generic such that it is not entitled to trademark protection, then maybe the phrase "First Independent Church of Scientology" is not entitled to trademark protection either. Then again, maybe that is the threat (or bluff) the FICS is running against the COS -- i.e., you either let us have our trademark, or we will make effort to have your trademark taken away.

The First Independent Church of Scientology is represented by a major intellectual property law firm with regard to its trademark applications. See:

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

http://tsdr.uspto.gov/documentviewer?caseId=sn86817837&docId=CCA20160920081736#docIndex=2&page=1

Their attorney is Raymond Tabandeh of Lewis Roca Rothgerber Christie LLP:

http://www.lrrc.com/

According to his Lewis Roca Rothgerber Christie LLP biography, Raymond Tabandeh is a partner of the firm in the Los Angeles office. In addition to 17 years experience in intellectual property law, he has the following degrees:

J.D., Loyola Law School, 1998
M.B.A., University of Southern California, 1989
Advanced Engineering Degree, University of Southern California, 1987, Electrical Engineering
M.S., University of California, Los Angeles, 1983, Electrical Engineering
B.S., University of California, Los Angeles, 1981, Electrical Engineering

Lewis Roca Rothgerber Christie has approximately 300 attorneys in 10 offices across five states.

The firm's "About Us" page states:

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

Lewis Roca Rothgerber Christie LLP is built on the strengths and reputations of strong legacy firms focused on client relationships and quality representation:

Lewis Roca Rothgerber was an Am Law 200 firm created with the 2013 combination of Lewis & Roca, a leading Southwestern law firm founded in 1950, and Rothgerber Johnson & Lyons, a leading Rocky Mountain firm founded in 1903. Lewis Roca Rothgerber maintained a commitment to a high standard of client and public service, with a longstanding tradition of handling pro bono matters including cases such as Miranda v. Arizona, 384 U.S. 436 (1966), in which John P. Frank, John Flynn and others, represented Ernesto Miranda in the landmark case giving rise to "Miranda Rights."

Christie, Parker & Hale was a boutique intellectual property firm established in Los Angeles in 1954 dedicated to every phase of IP procurement, enforcement, and defense. The practice included all facets of patent prosecution (including utility, design and plants), trademark prosecution, IP litigation, licensing, IP strategy, copyrights and trade secrets; internet law and domain disputes.

* * * * * END EXCERPT * * * * *

The firm has locations in:

Albuquerque, NM
Colorado Springs, CO
Denver, CO
Irvine, CA
Las Vegas, NV
Glendale, CA
Phoenix, AZ
Reno, NV
Menlo Park, CA
Tucson, AZ

From the above I draw the conclusion that the efforts by the First Independent Church of Scientology in this area are well-funded. Such representation does not come cheap.









.

"The Term "Scientology" Has Become a Generic Term"

not very elite, is it?

Heh! Looks like the lawyers, however qualified and otherwise distinguished, saw them coming, if you ask me. IANAL - but, I suggest that the McDonalds analogy holds in that not only is the FICS going to use the brand name, it is also going to offer the same fare. It too will be promising to as-is the circumstances which resulted in "engrams" within the "reactive mind" in order to manifest the state of "Clear" and lead punters into the equally imaginary world of "Operating Thetans" duplicating "Xenu". I'm sure a few of those are also trademarked items so, even if "Scientology" is made available for use as a generic term, FICS would still not be able to practise Scientology without also getting use of the myriad other terms. I agree that the First Amendment angle regularly prevents justice in the US so, yeah, maybe, it might give cause for pause, but not for long and especially not after consideration is given to the fact the FICS is seeking to replicate the cult's "services".

But, like I said, its a waste of time and a manifestation of a psychological inability to cope with the reality of Scientology as being an entirely unattractive proposition for anyone with access to the internet. The only winners in this debacle will be the cult and the lawyers.

Sounds more like this situation: https://en.wikipedia.org/wiki/Fundamentalist_Church_of_Jesus_Christ_of_Latter-Day_Saints