Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION

 

 

 

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

 

 

POST REGISTRATION OFFICE ACTION

 

 

ISSUE/MAILING DATE: 4/12/2018

U.S. Registration Number 1486001

 

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on March 20, 2018.  The Section 9 portion of the combined filing can be granted.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

 

ISSUES PERTAINING TO SECTION 8 PORTION ONLY

 

I.                SPECIMEN (DEFICIENCY)

 

The specimen submitted with the Section 8 Affidavit shows a materially different mark from that in the registration.  Specifically, the specimen shows the mark as TIBCO Spotfire S+ and the registration shows the mark as S-PLUS.

 

The specimen cannot be accepted because the character of the registered mark appears materially altered on the submitted specimen, and it appears that the registered mark is no longer in use.  In re International Nickel Co., Inc., 282 F.2d 952, 127 USPQ 331 (C.C.P.A. 1960); In re Continental Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958); Ex parte Richards, 153 USPQ 853 (Comm’r Pats. 1967); see TMEP §§807.14 et seq., 1604.13, 1609.02(a).

 

Therefore, the owner must submit the following:

 

(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods and/or services specified in the registration; and

 

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

II.             DECLARATION AND SIGNATURE (DEFICIENCY)

 

The owner must provide the date the Section 8 Affidavit was signed.  TMEP §1604.08(b).

 

Please Note:  The registrant did not provide the month next to the date and year.

 

III.           SAMPLE DECLARATION

 

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

 

The owner was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, during the relevant period for filing the10-year Section 8.

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and 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

 

IV.           AUTHORIZED SIGNATORIES

 

 

The following persons are properly authorized to sign a Section 8 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).

 

V.              SIGNATURE ON RESPONSES – ADVISORY

 

Responses to Office actions must be properly signed.  37 C.F.R. §§2.163(b), 2.193(e)(2); TMEP §611.03(b).  When an owner is represented by an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §611.03(b).  The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent owners located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.  See 37 C.F.R. §§2.17(e), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §602.  Attorneys who fail to meet these requirements, as well as non-attorneys, are generally not permitted to represent owners in trademark matters before the USPTO; and thus, they may not sign responses.  See 5 U.S.C. §500(b), (d); 37 C.F.R. §11.14(a)-(c), (e); TMEP §§602, 602.02, 608.01. 

 

Where an owner is represented by an attorney, and then later retains a different attorney from a different firm, the newly retained attorney may not sign responses until the owner files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

Where an owner is not represented by an attorney, the response must be signed by the individual owner or someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq.  In the case of joint owners, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). 

 

VI.           RESPONSE GUIDELINES

 

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 10^th year anniversary date on April 26, 2018, whichever is later.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  If a response is not received, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(a).

 

DEFICIENCY SURCHARGE INFORMATION:  If the response to this Office action is received by the Office after April 26, 2018 date of 10^th year anniversary, a $100 deficiency surcharge must be submitted if the response is submitted online using the Trademark Electronic Application System (“TEAS”) and a $200 deficiency surcharge must be submitted if the response is submitted on paper.  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).  (Note:  This only applies when the response time deadline above falls after the 10^th year anniversary date.)

 

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the owner may avoid cancellation of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §2.163(c).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §2.161(d)(1)-(2).  For more information about this, please contact the undersigned.

 

 

 

 

/Vanessa Barber/

Trademark Specialist

Post Registration Division

571 272-0989  Direct

571 273-0989  Fax

Vanessa.Barber@uspto.gov

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist.  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 registration will be placed in the official registration record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.

 

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

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