JW

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Jehovah's organization has always made efforts to protect our materials worldwide, including our official website JW.ORG. Many are unaware that to ensure the safety of the word 'jw.org' and its logo against impersonators or those seeking to exploit its identity maliciously, the organization must register our official website as a trademark. This recognition establishes that only the Watch Tower Bible and Tract Society of Pennsylvania holds the exclusive rights for JW.ORG. However, this process doesn't always proceed smoothly.
 
The following is the detailed summary of communication between the Watch Tower Bible and Tract Society of Pennsylvania and the United States Patent and Trademark Office (USPTO) regarding the trademark registration process for JW.ORG, highlighting the issues, responses, and ongoing requirements laid out by the examining authorities:
 
On May 13, 2015, the Watch Tower Bible and Tract Society of Pennsylvania filed a 19-page registration for the mark consists of the stylized letters JW.ORG within a square design, where the characters "JW" Appear above the characters ".ORG".
 
On August 31, 2015, the application to register JW.ORG was refused. The examining attorney concludes that the proposed mark's descriptive nature in relation to the applicant's goods and services, coupled with the lack of distinctive elements, precludes its registration under Section 2(e)(1) of the Trademark Act. The refusal underscores the principle that marks which directly describe features of goods or services, without acquiring secondary meaning or distinctiveness, are ineligible for trademark protection to prevent monopolization of common language or symbols in commerce.
 
On December 14, 2015, the Watch Tower Bible and Tract Society of Pennsylvania responded that the examining attorney's rejection of the trademark application is based on the contention that the mark "JW" is merely descriptive of the applicant's goods and services, primarily concerning the Jehovah's Witnesses denomination. The attorney argues that the mark, when considered alongside the ".ORG" top-level domain, directly describes the nature of the listed goods and services, citing internet search results from acronymfinder.com and thefreedictionary.com as evidence. However, the applicant counters that "JW.ORG" serves as a source identifier rather than a descriptive term, referencing legal precedent and previous trademark registrations. They assert that the mark distinguishes the source of digital and print media, educational services, and websites related to religious education, and provide additional evidence from their website to support this claim. Consequently, the applicant requests the withdrawal of the descriptiveness refusal and urges the examining attorney to approve the mark for registration. Additionally, the applicant addresses an information requirement by providing further evidence to demonstrate that "JW" is not merely descriptive of their goods and services beyond the arguments presented.
On January 11, 2016, the USPTO respond to the communication dated December 14, 2015, that the application by Watch Tower Bible and Tract Society of Pennsylvania to register the mark JW.ORG has been reviewed, and the refusal based on Trademark Act Section 2(e)(1) regarding the descriptiveness of the mark has been upheld. The applicant sought registration for the use of JW.ORG with various goods and services related to the Jehovah’s Witness denomination. The examining attorney has considered the arguments presented by the applicant but finds that the mark is descriptive of the goods and services provided. Despite the applicant's contention that "JW" has other meanings beyond Jehovah's Witnesses, the evidence suggests otherwise. The attached dictionary entries and discussions in the documents clearly indicate that "JW" commonly refers to Jehovah's Witnesses.
Furthermore, the addition of ".ORG" to the mark does not render it distinctive, as it merely indicates that the website is used by an organization, as supported by legal precedents. The applicant's prior registrations of JW.ORG and JW LIBRARY without claims of acquired distinctiveness do not alter this determination, as each case is evaluated independently. Additionally, the geometric shape of the mark, being a square carrier, does not add inherent distinctiveness. Therefore, the refusal based on descriptiveness under Section 2(e)(1) of the Trademark Act stands. Regarding the identification and classification of services, the wording provided by the applicant is deemed indefinite and requires clarification. Services must be accurately designated and classified according to their nature and subject matter. The applicant is advised to adopt specific wording and classifications to accurately represent the goods and services provided. 
 
Following the decision, on February 10, 2016, the Watch Tower Bible and Tract Society of Pennsylvania, has submitted a request for reconsideration after a final action regarding the mark JW.ORG. In response to the substantive refusal based on Section 2(e)(1) of the Trademark Act, the applicant has amended the application to assert a claim of acquired distinctiveness under Section 2(f) of the Trademark Act. The applicant cites prior registration for a similar JW.ORG logo as evidence of acquired distinctiveness, stating that ownership of prior registrations serves as prima facie evidence of distinctiveness. The applicant argues that the marks in the prior registration and the pending application are legal equivalents, supported by the similarities in literal elements and stylization, including the placement of the "dot," which has shifted from the first line in the prior registration to the second line in the pending application. Moreover, the goods identified in the prior registration are deemed sufficiently similar to those in the present application, allowing for acquired distinctiveness to apply. The applicant highlights the identical nature of identifications in International Class 16 and the substantial relationship of additional language in Class 9. Furthermore, regarding International Classes 41/42, it is argued that some services in the prior registration are misclassified and belong in Class 41, aligning with the core elements of providing educational website services featuring religious content. The applicant concludes that the prior registration and pending application, featuring almost identical marks and similar goods and services, constitute legal equivalents, establishing acquired distinctiveness. Additionally, the applicant asserts ownership of active prior registration, further supporting the claim of acquired distinctiveness based on active prior registrations.
Following these detailed exchanges and the submission of additional clarifications by the applicant, the USPTO issued a subsequent response on March 3, 2016, which adjusted the stance on some of the earlier refusals. In this latter communication, the USPTO acknowledged the applicant's claim of acquired distinctiveness has been deemed acceptable, leading to the withdrawal of the refusal based on the descriptiveness of the mark and the requirement for additional information. However, the issue concerning the identification and classification of services remains unresolved. The examining attorney finds the identification of services unacceptable due to the indefinite wording provided, necessitating clarification and specification of the subject matter for proper classification.
 
But by July 1, 2016, an Examiner's Amendment has been issued indicating that the application has been amended in accordance with authorization. Specifically, the identification and classification of goods and services have been revised. Digital media encompassing various formats such as pre-recorded video discs and downloadable software, along with printed materials, all featuring religious information related to the Jehovah's Witnesses denomination, have been clarified and classified under Classes 9 and 16. Additionally, services providing online non-downloadable audio and video recordings, music, and digital print publications, among others, pertaining to the same denomination, have been reclassified under Class 41. Furthermore, the provision of an educational website featuring religious information is now classified under Class 45. The applicant is reminded of the constraints on amending identifications, emphasizing that amendments may clarify or limit but not broaden the scope of goods and services. This is also followed by another Examiner's Amendment dated September 27, 2016, marking further amendments to the application. Specifically, a disclaimer has been added, stating that no exclusive claim is made to the use of ".ORG" apart from the mark as depicted. 
 
By October 19, 2016, The United States Patent and Trademark Office (USPTO) has issued a Notice of Publication, concerning the mark JW.ORG, filed by the Watch Tower Bible and Tract Society of Pennsylvania. The mark, classified under International Classes 9, 16, 41, and 45, is slated for publication in the Official Gazette on November 8, 2016, in accordance with Section 12(a) of the Trademark Act of 1946. This publication serves as an opportunity for opposition by any individual who perceives potential harm from the mark's registration.
 
On January 24, 2017, the official registration certificate was issued. See attachments. 
In conclusion, our organization's persistent efforts to safeguard our materials, including our official website JW.ORG, have necessitated the rigorous process of trademark registration. Despite initial challenges and refusals from the USPTO, our commitment to protecting the integrity of JW.ORG prevailed through strategic argumentation and necessary adjustments. This underscores our unwavering dedication to preserving our identity against misuse and reaffirms our exclusive rights to the mark, ensuring its rightful representation in the digital landscape.
Source: JW Talk
|-| "JW.ORG"=JW.ORG
|-| "JW LIBRARY"=JW LIBRARY
|-| "JW BROADCASTING"=JW BROADCASTING
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Category:JW.org
Category:JW Broadcasting
Category:JW Library