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:  March 19, 2020

The Combined Section 8 Affidavit & Section 9 Renewal Application submitted on January 22, 2020, cannot be accepted for the reasons set forth below.

I.                   OWNERSHIP INQUIRY – OWNER’S LEGAL ENTITY IS DIFFERENT

The party who filed the Section 8 Affidavit must establish its ownership of the registration.  Trademark Act Section 8 requires the current owner of the registration to file the Section 8 Affidavit.  15 U.S.C. §1058; 37 C.F.R. §§2.161(a), 3.73(b); TMEP §1604.07(a).  Office records do not show clear chain of title in the party who filed the Section 8 Affidavit.

Office records show clear chain of title to the registration in TIFFANY (NJ) LLC, a Delaware Limited Liability Company.  However, the party who filed the Section 8 Affidavit is identified as TIFFANY (NJ) LLC, a Delaware Corporation. 

The party who filed the Section 8 Affidavit must establish its current ownership of the registration.  15 U.S.C. §1058; 37 C.F.R. §2.161(a); TMEP §1604.07(a).  Ownership can be established by satisfying one of the following:  (1) recording the appropriate documents with the Assignment Services Branch of the Office; or (2) submitting actual evidence showing the transfer of title to the party who filed the Section 8 Affidavit.  37 C.F.R. §3.73(b); TMEP §§502.01, 1604.07(b).  More information about these two methods for establishing ownership of the registration appears directly below. 

(1)  If the present owner chooses to record the appropriate documents with the Assignment Services Branch, the documents must be recorded before expiration of the time for filing a response.  In addition, you must notify the undersigned when the documents have been recorded.  For information regarding recording assignments, name changes and mergers, please visit the webpage http://www.gov.uspto.report/web/trademarks/workflow/assign.htm and see TMEP §§503 et seq.  For specific questions, please contact the Assignment Services Branch at 571-272-3350.  To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov.  To record an assignment, the owner must submit the assignment documents along with a cover sheet and the required fee.  37 C.F.R. §§3.28, 3.31.  The fees for recording an assignment are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document.  37 C.F.R. §2.6(b)(6).  The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.  37 C.F.R. §3.25.

(2)  If the present owner prefers to submit actual evidence of ownership directly to the undersigned trademark specialist, copies of the actual documents transferring title or a statement explaining the valid transfer of legal title must be submitted.  If submitting a statement of facts explaining the transfer of title, this statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §3.73; TMEP §§502 et seq.

Acceptance Notice Issued in Name of Owner of Record

Please note that if the party who filed the Section 8 Affidavit submits sufficient evidence to establish ownership but the ownership documents are not recorded with the Assignment Services Branch before expiration of the time to file a response, then the acceptance notice will issue in the name of the owner of record.  37 C.F.R. §3.85; TMEP §502.02.  An updated acceptance notice will not issue if ownership documents are recorded following the expiration of the time to file a response; however, the new owner may file a request for a new certificate in the new owner’s name, along with the required fee.  See 37 C.F.R. §2.6(a)(8); TMEP §502.03.     

There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.  TMEP §1604.07(a).

Information for Section 8 Affidavits Not Filed in the Name of the Owner

If the Section 8 Affidavit was not filed in the name of the owner of the registration and there is time remaining in the statutory filing period, including grace period, when responding to this Office action, the true owner may (1) submit a correction of the name in the filing of record or (2) file a complete new Section 8 Affidavit with a new specimen and filing fee.  Please note that a deficiency surcharge is required if the Section 8 Affidavit was submitted before the grace period began and a correction of the name in the filing of record is received during the grace period.  37 C.F.R. §2.164(a)(1); TMEP §1604.17(a).  The deficiency surcharge is $100 if submitted online using the Trademark Electronic Application System (“TEAS”) and $200 if submitted on paper.  37 C.F.R. §2.6.  The fee for filing a Section 8 Affidavit is $125 per class for filings submitted through TEAS and $225 per class for filings submitted on paper.  37 C.F.R. §2.6.  If the new Section 8 Affidavit is filed during the six-month grace period, the owner must pay the filing fee for the Section 8 Affidavit and the grace period fee.  15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161; TMEP §1604.07(a).  The grace period fee is $100 per class for filings submitted through TEAS and $200 per class for filings submitted on paper.  37 C.F.R. §2.6. 

If the Section 8 Affidavit was not filed in the name of the owner of the registration and there is no time remaining in the grace period when responding to this Office action, the true owner may submit a correction of the name in the filing of record with payment of the deficiency surcharge, but may not file a new Section 8 Affidavit.  15 U.S.C. §1058. 

Confirmation Required: Affidavit Signed by Authorized Signatory

If a correction of the name in the filing of record is submitted at any time, the true owner must confirm that the original affidavit was signed by a person properly authorized to sign on behalf of the owner.  37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).  If the original affidavit was not signed by an authorized signatory, the owner must also submit a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, attesting to the use or excusable nonuse of the mark during the relevant period for filing the 10-year Section 8.

II.                SIGNATURE ON RESPONSE - ADVISORY

Responses to Office actions must be properly signed.  37 C.F.R. §§2.163(b), 2.184(b)(2); see TMEP §712.  If the owner has retained an attorney, the attorney must sign the response; the owner cannot sign the response.  TMEP §605.02.  However, if the owner was previously represented by an attorney, and the owner later retains a different attorney, the newly retained attorney cannot sign responses until a new power of attorney signed by the owner is filed.  TMEP §602.01.  Paralegals and secretaries cannot sign responses for attorneys.  See TMEP §602.03.

The only attorneys who can 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 (including the District of Columbia, Puerto Rico and other federal territories and possessions) or (2) Canadian agents/attorneys reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney, and who are representing trademark registrants located in Canada.  See 37 C.F.R. §§2.17(a), 11.1 11.14, 11.14(a), (c), (e).  Foreign attorneys (other than recognized Canadian attorneys) cannot sign responses or otherwise represent registrants before the USPTO. See  37 C.F.R. §11.14(c). 

If the owner is not represented by an attorney, the response must be signed by the owner or by someone with legal authority to bind the owner (i.e., a corporate officer of a corporate owner, the equivalent of an officer for unincorporated organizations or limited liability company owners, a general partner of a partnership owner, each owner for registrations with multiple individual owners, etc.).  37 C.F.R. §§2.163(b), 2.184(b)(2); see TMEP §§712-712.01(a)(viii). 

A non-attorney who is authorized to verify facts on behalf of an owner under 37 C.F.R. §2.33(a)(2) (such as trademark administrators, accountants, business managers, administrative assistants, and personal assistants) cannot sign responses to Office actions unless he or she also has legal authority to bind the owner.  See TMEP §§712.03 and 804.04. 

III.             RESPONSE GUIDELINES

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or on or before the registration expiration date of July 10, 2020, whichever is later.  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, and there is no time remaining in the grace period to file a new affidavit and/or renewal application, 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 and 1606.12.

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the registrant may avoid cancellation and/or expiration of its registration by filing a new affidavit of use and a new renewal application within the grace period.  37 C.F.R. §§2.163(c) and 2.184(b)(1).  Additional fees are required to file a new renewal application during the grace period.  37 C.F.R. §§2.161(d)(1)-(2) and 2.183(b)-(c).  For more information about this, please contact the undersigned.

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.

/Shawnee Letsa/

Trademark Specialist

Post Registration Division

571-272-9626 Direct

Shawnee.letsa@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.