Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

OFFICE ACTION

The USPTO must receive the owner’s response to this letter within the time period specified below.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears below.

Issue date:  August 1, 2019

The Office is in receipt of the response to Office Action filed on July 26, 2019. The owner has submitted an acceptable specimen of use. However, the owner did not submit the required Exercising Legitimate Control statement and the owner did not submit the previously required $100 fee. Please see both requirements restated below.

Additional Requirements for Section 8 Affidavits or Declarations Pertaining to Collective Marks

The owner has not provided the additional requirements for a Section 8 Affidavit or Declaration pertaining to a collective mark.  In addition to the general requirements applicable to all registrations for which use is claimed, a Section 8 Affidavit or Declaration pertaining to a collective trademark, collective service mark, or collective membership mark must include:

(1) A statement that the owner is exercising legitimate control over the use of the mark in commerce (see TMEP §1604.20(a)); and

(2) If the registration issued from an application based solely on Section 44 of the Act, a statement specifying the nature of the owner’s control over the use of the mark by the members in the first Section 8 Affidavit or Declaration filed with the USPTO (see TMEP §1604.20(b)).

37 C.F.R. §2.161(i)-(i)(2).

Therefore, the owner must comply with the following additional requirements: 

Exercising Legitimate Control Statement

The owner must provide the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The owner is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce during the relevant time period for filing the Section 8 Affidavit or Declaration.”  See 37 C.F.R. §2.161(b), (i)(1); TMEP §1604.20(a).

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit or Declaration, if properly signed and dated:

Unless the owner specifically claimed excusable nonuse, the mark was in use in commerce on or in connection with the goods/services or to indicate membership in the collective membership organization identified in the registration, as evidenced by the submitted specimen(s) showing the mark as used in commerce, during the relevant period for filing the 10-year Section 8.

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

The following persons are properly authorized to sign a Combined Affidavit on behalf of the owner:

(1)   A person with legal authority to bind the owner (e.g., a corporate officer or general partner);

(2)   A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or

(3)   An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation and/or expiration of the registration.  If a response is not received, the registration will cancel and/or expire in its entirety.  37 C.F.R. §§2.163(b)-(c) and 2.184(b)(1); TMEP §§1604.16, 1604.17(b) and (c), and 1606.13(b).

DEFICIENCY SURCHARGE REQUIRED:  The owner must submit a $100 deficiency surcharge with its response to this Office action if the response is submitted online using the Trademark Electronic Application System (“TEAS”).  A $200 deficiency surcharge must be submitted if the response is submitted on paper.  37 C.F.R. §§2.6, 2.164(a)(2) and 2.185(a)(2).

How to respond.  Click to file a Response to Post-Registration Office action. 

Direct questions about this Office action to the Post Registration staff member below.

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 124

571-272-8844

jordan.baker@uspto.gov

RESPONSE GUIDANCE

• Response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an owner’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted or processed.  If the owner does not have an attorney, the response must be signed by the individual owner, all joint owners, or someone with legal authority to bind a juristic owner.  If the owner has an attorney, the response must be signed by the attorney.

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