From: Kunkleman, Sarah
`
`
`
`Sent: 1/11/2016 5:51:27 PM
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`
`
`To: TTAB EFiling
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`
`
`CC:
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`
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`Subject: U.S. TRADEMARK APPLICATION NO. 86361617 - NZONE - 081322.04 - Request for
`Reconsideration Denied - Return to TTAB - Message 1 of 9
`
`
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`*************************************************
`
`Attachment Information:
`
`Count: 13
`
`Files: 1.jpg, 2-1.jpg, 2-2.jpg, 2-3.jpg, 2-4.jpg, 2-5.jpg, 3-1.jpg, 3-2.jpg, 4-1.jpg, 4-2.jpg, 5-1.jpg, 5-2.jpg,
`86361617.doc
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`
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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. 86361617
`
`
`
`MARK: NZONE
`
`
`
`
`
`*86361617*
`
`CORRESPONDENT ADDRESS:
` KEVIN OLIVEIRA
`
`
`
`GENERAL TRADEMARK INFORMATION:
`
` ODIN, FELDMAN & PITTLEMAN, P.C.
`
`http://www.uspto.gov/trademarks/index.jsp
`
`
`
`
`
` 1775 WIEHLE AVE STE 400
`
` RESTON, VA 20190-5159
`
`
`
`APPLICANT: New Life Youth Sports Organization
`
`
`
`CORRESPONDENT’S REFERENCE/DOCKET NO:
`
` 081322.04
`
`CORRESPONDENT E-MAIL ADDRESS:
`
`REQUEST FOR RECONSIDERATION DENIED
`
`
`
`
`
`
`
`ISSUE/MAILING DATE:
`
`
`
`The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is
`denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B),
`715.04(a). The following refusal made final in the Office action dated June 19, 2015 is maintained and
`continues to be final: refusal under Trademark Act Section 2(d). See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`

`
`
`
`In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a
`new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final
`Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new
`light on the issues. Accordingly, the request is denied.
`
`
`
`If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the
`Board will be notified to resume the appeal. See TMEP §715.04(a).
`
`
`
`If no appeal has been filed and time remains in the six-month response period to the final Office action,
`applicant has the remainder of the response period to (1) comply with and/or overcome any
`outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP
`§715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay
`or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c).
`
`
`
`As discussed in the previous office actions, the applied for mark "NZONE" and registration nos. 4550991,
`4550990, 4127937, and 4127936 all share common wording with the registered marks having a space,
`"N ZONE", that does not significantly alter the commercial impression when compared with the applied-
`for mark. In addition, the registrant has disclaimed the wording "SPORTS" and "JUNIOR" in the marks,
`leaving "N ZONE" the more dominant feature.
`
`
`
`Further, the word portions of the marks are nearly identical in appearance, sound, connotation, and
`commercial impression; therefore, the addition of design elements does not obviate the similarity of the
`marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993);
`TMEP §1207.01(c)(ii).
`
`
`
`Thus, as more fully discussed in the previous office actions, the applied-for mark is similar in terms of
`appearance, sound, connotation and overall commercial impression with the registered marks.
`
`
`
`Applicant has provided the following amended identification of goods in the 12/21/2015 Request for
`Reconsideration after Final Action:
`
`
`
`

`
`IC 041:
`
`Conducting sporting and athletic programs to develop and promote
`sportsmanship, team play and athletic ability excluding recreational services in
`the nature of youth sports leagues and administration of youth sports leagues;
`educational and entertainment services, namely, sports and athletics programs,
`sports and athletics exhibitions, seminars and sports and athletics events in the
`fields of fitness, strength and conditioning training, nutrition, exercise, sports
`safety, sportsmanship and game officiating excluding recreational services in the
`nature of youth sports leagues and administration of youth sports leagues;
`providing sports and athletics information via a global computer network or a
`commercial on-line service; physical fitness instruction and health club services
`in the nature of providing instruction and equipment in the field of physical
`science; individual fitness training; fitness consulting; fitness and exercise
`facilities; entertainment and educational services, namely, classes in the fields
`of physical fitness, creative dance, tumbling, movement, and self-esteem
`building, and providing recreation facilities with computers and play areas for
`children; operation of sports and athletics, physical fitness and dance camps;
`instruction and training in sports and athletics, physical fitness, creative dance,
`tumbling, movement, fitness, strength and conditioning training, nutrition,
`exercise, sports safety, sportsmanship and game officiating; providing classes,
`seminars, workshops, after-school and evening recreational camps to promote
`health, social, educational, vocational and character development and in the
`fields of developing effective communications, interpersonal skills and effective
`personality characteristics and regarding and developing skills necessary for the
`attainment of personal objectives; counseling services, namely, teaching
`students to help others and to establish and promote health, social,
`educational, vocational and character development and in the fields of
`developing effective communications, interpersonal skills and effective
`personality characteristics and regarding and developing skills necessary for the
`attainment of personal objectives; educational services, namely, the training of
`others through courses, seminars, programs and workshops establishing and
`promoting health, social, educational, vocational and character development
`and in the field of developing effective communications, interpersonal skills and
`effective personality characteristics and regarding and developing skills
`necessary for the attainment of personal objectives
`
`
`
`Specifically, applicant has amended the identification to exclude "recreational services in the nature of
`youth sports leagues and administration of youth sports leagues" from the identifications of
`"Conducting sporting and athletic programs to develop and promote sportsmanship, team play and
`athletic ability; educational and entertainment services, namely sports and athletics programs, sports
`
`

`
`and athletics exhibitions, seminars and sports and athletics events in the fields of fitness, strength and
`conditioning training, nutrition, exercise, sports safety, sportsmanship and game officiating."
`
`
`
`Applicant contends that the "amendment to its specification of services to specifically exclude the
`services referenced by the owner of the Registrations cited by the examining attorney should make it
`clear that there is no longer risk of a likelihood of confusion by relevant prospective or actual consumers
`of the services offered by either the existing Registrant or this Applicant."
`
`
`
`Applicant also proposes a number of alternative identifications.
`
`
`
`Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
`
`
`
`As shown by the evidence attached to the previous Office actions, all of the services of applicant are
`closely related to those of registrant. Further, although applicant now excludes "recreational services in
`the nature of youth sports leagues and administration of youth sports leagues" from the identification of
`services, evidence attached to the 6/19/15 Final Office action shows that applicant provides such
`services. In addition, applicant will note the following evidence from applicant's website:
`
`• http://thenzone.com/prog_type/league/: showing adult and youth sports leagues
`offered by applicant
`• http://thenzone.com/about-us/: describing applicant's services stating: "We provide
`safe, fun opportunities for athletes of all ages to develop athletic skills across a variety
`of sports in a family-friendly environment where they will also cultivate character traits
`beneficial to their competitive spirit and the community at large. Our athletic programs
`include, but are not limited to: leagues, camps, classes, physical training, and wellness
`programs." (emphasis added).
`
`
`
`Thus, recreational services in the nature of youth sports leagues and administration of youth sports
`leagues, such as those identified by registrant, are closely related to all of the services identified by
`applicant because the evidence shows that the same entity provides the services and markets the
`services under the same brand.
`
`
`
`Further as the evidence shows that "recreational services in the nature of youth sports leagues and
`administration of youth sports leagues" are related to the services identified by applicant, none of the
`proposed identifications will obviate the likelihood of confusion in this case.
`
`

`
`
`
`In addition to the evidence attached to the previous Office actions, applicant will note the following
`evidence from seven third-party websites that shows the same entity commonly provides the relevant
`services and markets the services under the same mark, that the relevant services are sold or provided
`through the same trade channels and used by the same classes of consumers in the same fields of use,
`and that the services are similar or complementary in terms of purpose or function. Therefore,
`applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See,
`e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91
`USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
`
`• Showing youth sports leagues, sports and athletic information, fitness programs,
`wellness and nutrition programs, counseling, youth camps, and educational programs
`including courses that "improve overall communication skills" provided by the same
`entity under the same mark:
`o https://www.proclub.com/Youth-Sports
`o https://www.proclub.com/youth/kids-sports-camps
`o https://www.proclub.com/Youth/Early-Learning
`o https://www.proclub.com/Wellness/Nutrition
`o https://www.proclub.com/Wellness/Counseling
`o https://www.proclub.com/fitness/personal-trainer-seattle-bellevue
`
`
`• Showing youth sports leagues, recreational facilities and classes, youth camps, dance
`instruction, computer learning centers, educational programs related to life skills,
`literacy and language skills and "character development experiences" provided by the
`same entity under the same mark:
`o http://www.bgchv.com/content/our-programs-sports.html
`o http://www.bgchv.com/content/our-programs-wintercamp.html
`o http://www.bgchv.com/content/our-programs-performingarts.html
`o http://www.bgchv.com/content/our-programs-twilight.html
`o http://www.bgchv.com/content/our-programs-beforeafterschoolcare.html
`o http://www.bgchv.com/content/who-we-are-overview.html
`
`
`• Showing youth and adult sports leagues, sports and athletic information, fitness
`programs, dance instruction, personal training, recreational facilities, wellness and
`nutrition programs, youth camps, educational programs and in an environment "in
`which children can explore and build self-esteem" provided by the same entity under
`the same mark:
`o http://www.14streety.org/fitness/youth-sports-programs/
`o http://www.14streety.org/landing-pages-category/youth-programs/
`o http://www.14streety.org/landing-pages/gym-memberships/
`o http://www.14streety.org/landing-pages-category/camps/
`o http://www.14streety.org/fitness/basketball-leagues/
`o http://www.14streety.org/afterschool/after-school/
`
`
`
`

`
`• Showing youth sports leagues, sports and athletic information, coaching instruction,
`youth camps, sportsmanship skills, personal improvement plans, and counseling
`provided by the same entity under the same mark:
`o http://bhambba.com/bba_d-league.html
`o http://bhambba.com/bba_team-camps.html
`o http://bhambba.com/bba_coaching-certiication.html
`o http://bhambba.com/bba_underground-basketball.html
`
`
`• Showing youth sports leagues, sports and athletic information, coaching instruction,
`youth camps, fitness programs, and recreational facilities provided by the same entity
`under the same mark:
`o http://www.marincountryclub.com/Recreation/Youth.aspx
`o http://www.marincountryclub.com/Recreation/Fitness.aspx
`o http://www.marincountryclub.com/Golf/Outside-Golf-Tournaments.aspx
`
`
`
`• Showing adult and youth sports leagues, sports and athletic information, fitness
`programs, recreational facilities, and children's playroom provided by the same entity
`under the same mark:
`o https://www.southeastchristian.org/connect/sports-fitness/
`o https://www.southeastchristian.org/connect/sports-fitness/youth-sports.php
`o https://www.southeastchristian.org/connect/sports-fitness/adult-sports.php
`o https://www.southeastchristian.org/connect/sports-fitness/fitness.php
`o https://www.southeastchristian.org/connect/sports-fitness/facility.php
`
`
`
`• Showing adult and youth sports leagues, children's sports programs to "to teach
`teamwork, character, and integrity while children develop both physical and mental
`strength," sports and athletic information, fitness programs, summer camps, and
`recreational facilities provided by the same entity under the same mark:
`o http://mtbethel.org/ministries/rec/
`o http://mtbethel.org/ministries/rec/camps/
`o http://mtbethel.org/ministries/rec/fitness/
`o http://mtbethel.org/ministries/rec/adult-recreation/
`o http://mtbethel.org/ministries/rec/childrens-recreation/
`
`
`
`Applicant will note the additional evidence related to three of the third-party websites attached to the
`6/24/15 Office action:
`
`• https://www.minneapolisparks.org/activities__events/youth_programs/teen_programs
`/
`• https://www.minneapolisparks.org/news/2015/03/12/278/spring_sports_coaches_nee
`ded
`• https://apm.activecommunities.com/minneapolisparks/Activity_Search?detailskeyword
`=&IsAdvanced=False&ddlSortBy=Activity+name&ActivityOtherCategoryID=22&DaysOfW
`eek=0000000&SearchFor=2&maxAge=100&NumberOfItemsPerPage=50&IsSearch=true
`
`

`
`• http://www.auburnwa.gov/things_to_do/recreation.htm
`• http://arlingtonathletics.multisportsystems.com/page/show/1112347-coaches-parents-
`corner
`• http://www.burbankca.gov/home/showdocument?id=32394
`
`
`Based on the foregoing, applicant’s request for reconsideration is denied and the refusal under
`Trademark Act Section 2(d) made final in the Office action dated June 19, 2015 is maintained and
`continues to be final.
`
`/Sarah E. Kunkleman/
`
`Examining Attorney
`
`Law Office 105
`
`(571) 272-6151
`
`sarah.kunkleman@uspto.gov
`
`
`
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`
`

`
`https.fi'vvwiiv.proc|Lib.com!Youth—Sports
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`01i‘0?i'201Ei 04 4156 PM
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`PRO Sperm Club offers the most comprehensive, diverse and innovative youth programs for athletes of all ages and abilities. We feature world—class facilities with a
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`EIELLEVUE (425) 885-5566
`wiLi_ows ROAD (425) 8694760
`SEATFLE (206) 332-1873
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`FiTNESS
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`YOUTH
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`AMENETIES
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`Hoops Camps: Grow
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`ViEW CAMP
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`When school's out the fun begins During school breaks, we ofter sports camps for girls and
`boys, ages 3-13 Led by our staff, many of whom are coaches and former elite athletes
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`CONTACT CAMPS
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`AQUATICS
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`Dive-On-In Junior Lifeguarding Camp (ages 9-14)
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`Mon-Fn'
`Sat-Sun
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`5:00 am - 11:00 pm
`T200 am - 10:00 pm
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`Pavilion & Soccer Camp FAQ
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`Basketball Camps
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`—
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`OtfO7l201IS 04.48 28 PM
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`Hoops Camp (ages 7-15)
`
`Leam the tundamentals of the game in both drill stations and game situations. Lunch is provided
`and each player receives a camp certificate and giveaway.
`
`Shooting Camp [grades 4-8]
`
`Fine—tune your technique with concentrated repetition and simulated game conditions, practicing
`shots from game spots at game speed. The Shoot-A—Way machine and other top level training
`tools the used to maxinIi4e results. Prerequisite. friterrriediate-Advariced pfayer.
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`Ball Handling [grades 4-8]
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`Strengthen your off hand, develop your passing ability and court vision, and team the mental
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`more assists and lower your team's tumover. Prerequisite: lnlermediate—Advanced player.
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`PAVILION
`All Sport Camp (ages 6-12)
`
`Enjoy a variety of sports and activities (basketball, soccer, kickball, dodgeball, floor hockey, laser
`tag, inflatables, idance, swimming), lunch, a camp giveaway, and a camp certificate. Swimwear
`and a swim test are required daily for all aquatics activities.
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`Extended Sports Camp (ages 6-12)
`
`Extend your Camp from Bam—9am or 4pm—Bpm. Held in the Pavilion. Activities may include:
`scooters, basketball, board games, Legos, music, and free play. Select the days that you need.
`
`Outdoor All Sport Camp (ages 6-12)
`
`During the summer, we meet at Robinswood Park to enioy outdoor sports and activities. Campers
`are shuttled back to the club for the second halt otcamp.
`
`NEW! Dance Camp (ages 6-15)
`
`Guaranteed to get kids moving! Each day brings a new dance style which may inciudejazzfballet,
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`NEW! Junior Sport 8: Inflatable Camp (ages It-6)
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`Leam to play a variety of sports and have fun on inflatables galore!
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`NEW! PRO Leadership Camp [ages 10-15)
`
`Leam what it takes to be a leader. Shadow a coach in All Sport Camp and engage in team
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`Certificate awarded upon completion.
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`Youth Camrg
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`Soccer Camp
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`ml?
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`uul uIILuLu avlul uuu upurl LUI l Ipluuul l.
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`DISCOVERY BAY
`Imagination Vacation (ages 3-5]
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`Leam, play and grow wilh our Learning Academy Summer Program in Discovery Bay, Your child
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`$375 Member, $450 Non-Member Child of Member, $470 Non-Member
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`Schedule
`
`9:00-10:00 am, Science Investigations
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`10:00-10:30 a_m_ Music & Movement
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`10:30-11:30 a_m. AstApprecialion
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`11:30 a_m_-12:00 p_m Yoga
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`12:00-1:00 p_m_ Lunch & Story Time
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`2:00-3:00 p_m_ Discovery Play Time
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`Adventure Quest S.T.E.llll. Camp [ages 6-9)
`SCIENCE — TECHNOLOGY — ENGINEERING — MATH
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`Kids combine problem solving with exploratory learning in a fun setling with highly qualified
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`$375 Member, $450 Non-Member Child of Member, $470 Non-Member
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`SCHEDULE
`
`9:00-10:00 Discovery
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`10:00-11:00 Daily Experiment
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`11:00-12:00 Active Play
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`12:00-12:30 Lunch
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`12:30-2:00 Swim Time
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`2:00-3:00 Exploratory Learning
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`Super Safe SiI|er® Babysitting Course 8. Tween Camp {ages 11-15)
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`8:1 teacheristudent ratio
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`Gain the skills and confidence to become a safe sitter by completing this babysitting course,
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`$330 Member, $395 Non—Member Child of Member, $430 Non—Member
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`SAFE SITIERS CAMP DAILY SCHEDULE:
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`9:t](]—12:00 Safe Sitter Course
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`12:00-1 :00 Lunch
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`1:00-3:00 Pool Time I Crafts
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`" Each particrparrt must attend‘ all! course presentations, pass a written test and complete practical
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`Registration Information
`All ,-,.......— —.... 5...... Iu.....I.... r.:.4.-... n-nn - ... 9-nn .. .. .....-r I.....—|.
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`:.— :...-I...4.-.4
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`All camps run from Monday-Friday, 9:00 a.i'n.—3:0[J pm and lunch is included.
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`LUNCH MENU
`
`Monday Turkey Dog
`Tuesday: Chicken Tenders
`Wednesday: Pasta
`Thursday‘ Cheese Quesadillas
`Friday: Pizza
`Snacks; fruit. vegetables. and cookies
`
`Drop-off and pick up for all camps is in Discovery Bay. Pie-registration required. SIGNUP TODA Y
`in Discovery Bay Bail‘ (425) 8616247, or enroll online. To enroll oniine. iogori to
`www.pro(:iub.aorn with your ci.9ernarne_ seiect My PRO Club and then select Program
`Registration.
`
`Eniailrrient changes must be made at ieasf 3‘ week in advance of the camp start date in order to
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`cancelled. you will be notified at least 1‘ week prior to start date. Extended care is avaiiabie for an
`additional hourfy fee by advanced reservation.
`
`INDDOR SOCCER ARENA
`Soccer Camp (ages 7-12)
`
`Benefit from expert coaching as you toc us on fundamental skills, strategy, and lots of play. Camp
`includes lunch, a camp giveaway, and camp certificate.
`
`NEW! Flag Football Camp Camp (ages 7-12]
`
`Enjoy the excitement of tootball without the physical contact. A fun way for Kids to develop football
`skills without the TESK of injury from traditional tackling. A football jersey and mouthpiece is
`included Games will be played 5 on 5. Drop—ofi is at indoor Soccer Arena. Pick up is in the
`Pavilion.
`
`TEN NIS
`One-Week Tennis Camps (ages 4-18)
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`Led by our USPTA statf, this week of fun includes intensive practice on stroke mechanics the ball
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