PR-Teas-Response to Post Reg Office Act

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form No Form Number (Rev 01/2012)

OMB No. 0651-0055 (Exp 07/31/2018)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form No Form Number (Rev 01/2012)

OMB No. 0651-0055 (Exp 07/31/2018)

Response to Office Action for Post-Registration Matters

To the Commissioner for Trademarks:

The following is submitted for registration number. 1916593 SLAYER

FORM INFORMATION

Argument:

The Office has refused the Section 8 affidavit on the basis that (1) the Section 8 Affidavit was filed by a party that is not the owner of record, and (2) the specimen does not show trademark use of the mark.  Registrant respectfully submits that neither grounds for refusal should apply, and requests the refusal be withdrawn the the Affidavits accepted and acknowledged.

First, Registrant notes that the assignment from Slayer, Inc., a California corporation, to Slayer, a general partnership, was recorded with the USPTO Assignment Division on March 14, 2001 at Reel 2261, Frame 0248.  See attached printout.  The general partnership is the proper owner of the mark, and proper filer of the Section 8 Affidavit.

Please be advised that Slayer is a partnership organized under the laws of California, composed of general partners Kerry King and Tom Araya, both U.S. citizens.   One of the prior general partners is recently deceased, but the partnership agreement provides that the partnership will continue in the event of the death of a partner.

Second, Registrant submitted three different specimens showing use of the mark.  On the shorts, the mark appears on the front of the shorts toward the bottom and side, where customers are accustomed to seeing trademarks indicating source. Registrant hereby submits an additional pair of shorts on which the mark is clearly used in a trademark manner, along with examples of uses on shirts and jackets.  

Moreover, Registrant has been using the subject mark SLAYER since at least as early as 1985, and owns various other U.S. Registrations for the mark, including U.S. Registration Nos. 3682093, 3801577, 2024838, 1996958, and 1917850.  Registrant submits that the mark is recognized as a trademark through Registrant’s use and registration of the mark on the Principal Register for various other goods/services.  TMEP Section 1202.03(c).

Registrant submits the requested deficiency surcharge with this response, in an effort to resolve the issue with this registration.  However, as the ownership and specimen were both acceptable as submitted, Registrant does not believe the surcharge should apply and requests the Office withdraw the requirement for the same.

Accordingly, Registrant respectfully requests that the refusal be withdrawn, and that the Office accept the Section 8 Affidavit .  If the examiner has any questions, she is urged to promptly telephone the undersigned attorney.

Specimen Statement:

The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.

FORM FILE NAME(S)

Form File1
Form File2
Form File3
Form File4

FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)
Declaration Signature
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 the application, submission, or any registration resulting therefrom, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

Signature: /PeteBromaghim/      Date: 01/20/2016
Signatory's Name: Peter B. Bromaghim
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 310-207-3800

Submission Signature
Signature: /PeteBromaghim/     Date: 01/20/2016
Signatory's Name: Peter B. Bromaghim
Signatory's Position: Attorney of Record, CA Bar member
Signatory's Phone Number: 310-207-3800

        
RAM Sale Number: 4255
RAM Accounting Date: 01/21/2016
        
Serial Number: 74569404
Internet Transmission Date: Wed Jan 20 17:17:13 EST 2016
TEAS Stamp: USPTO/TRS-XX.XXX.XXX.XXX-201601201717136
89777-1916593-20160120154727019878-DA-42
55-20160120154727019878