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:  January 12, 2020

The Combined Section 8 Affidavit & Section 9 Renewal Application received on December 16, 2019, is otherwise acceptable; however, the owner of the registration must comply with an audit as explained below. 

REGISTRATION SELECTED FOR AUDIT

The USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register.  See 37 C.F.R. §§2.161(h), 7.37(h).  This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods identified in the registration.

Detailed information regarding the audit program is provided on the following webpage – http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program.

To comply with the audit, you must submit proof of use of the registered mark for two additional goods per class.  Id.  

If proof of use for the goods identified is not available, the identified goods and any other goods not currently in use should be deleted from the registration.

Therefore, the owner must submit the following:

(1)   Proof of current use of the registered mark in commerce for the following goods:

·         computer peripherals, namely,

o   keyboards

o   tape drives, in International Class 9; and

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The owner or holder/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 proof of use, during the relevant period for filing the affidavit of use.”  37 C.F.R. §§2.161(h), 7.37(h).

Additionally, you must identify the corresponding goods that each individual piece of evidence of current proof of use supports.  See id.

Acceptable proof of use for goods includes photographs that show the mark on the actual goods or packaging, or photographs of displays associated with the actual goods at their point of sale.  A tag or label that is not shown affixed to the goods is not acceptable proof of use.  Similarly, a package that does not show or identify the goods therein is not acceptable proof of use.

FORM DECLARATION

Please note that the below statement verifying proof of use is slightly different than the standard substitute specimen statement.

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the use of the mark as evidenced by the item(s) submitted as proof of use, if properly signed and dated:

The owner or holder/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 proof of use and specimen(s), during the relevant period for filing the affidavit of use.

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 the facts set forth above are true; 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

WARNING:

If your response to this Office action does not meet the requirements of the audit, or includes a request to delete the goods identified for the audit, and goods remain in the registration without acceptable proof of use, a second Office action will issue requiring proof of use for all remaining goods for which proof of use is not of record.  See 37 C.F.R. §§2.161(h), 7.37(h). 

Therefore, the owner should delete all goods for which proof of use cannot be provided.

ATTORNEY BAR INFORMATION REQUIRED:

The owner’s/holder’s primary attorney of record must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are the primary attorney of record for trademark owners/holders at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, the owner/holder must state this for the record.  See id.

TO PROVIDE BAR INFORMATION:

The owner’s/holder’s primary attorney of record should provide his or her bar information by using the Revocation of Attorney and/or Appointment of Attorney/Domestic Representative form.  The newly appointed attorney must submit a TEAS Response to Office Action for Post-Registration Matters form indicating that the attorney appointment form has been submitted and address all other refusals or requirements in this action, if any.  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

ATTORNEY STATEMENT REQUIRED:

The owner’s/holder’s primary attorney of record must provide the following statement:  “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are the primary attorney of record for trademark owners/holders at the USPTO.  Id. 

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 October 9, 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.

Phillip D. White 

/Phillip D. White/

Program Analyst

OTQRT

571-272-9665

phillip.white@uspto.gov (inquiries only)

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.