UNITED STATES PATENT AND TRADEMARK OFFICE
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REGISTRATION NO: 1,966,993
REGISTRANT: SOLMAX GEOSYNTHETICS INC.
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July 31, 2006 *1966993* |
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CORRESPONDENT ADDRESS: Randi Miller DARBY & DARBY 805 Third Avenue New York, NY 10022-7513
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RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SOLMAX
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CORRESPONDENT’S REFERENCE/DOCKET NO: 6670.3B392
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Registration date, registration number, mark and registrant's name. 2. Date of this Office Action. 3. Examiner's name and Post Registation Division. 4. Your telephone number and e-mail address.
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Registration Number 1,966,993
The Combined Section 8 Affidavit & Section 9 Renewal Application submitted on April 11, 2006, cannot be accepted for the reasons set forth below.
The party who filed the Section 8 Affidavit must establish its ownership of the subject 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) and 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.
There is an unexplained break in the chain of title that must be clarified. The registration issued to Solmax Geosynthetics Inc. who then transferred ownership to Materiaux Techniques Cote Inc. However, Office records do not show the registration being transferred from Materiaux Techniques Cote Inc. to Solmax International Inc. who then changed its name to Groupe Solmax Inc.
The party who filed the Section 8 Affidavit must establish its current ownership of the subject registration as of April 5, 2006, the date the Section 8 Affidavit was signed. 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 Division 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 and 1604.07(b). More information about these two methods for establishing ownership of the subject registration appears directly below.
(1) If the present owner chooses to record the appropriate documents with the Assignment Division, 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 more information regarding recording assignments, name changes and mergers, please see TMEP §§503 et seq. To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov. There is a fee for recording ownership documents.
(2) If the present owner prefers to submit actual evidence of ownership directly to the undersigned paralegal, 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 and TMEP §502.
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 Division 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.
However, if the wrong party filed the Section 8 Affidavit and there is time remaining in the statutory filing period, the current owner must file a new Section 8 Affidavit with a new fee or the registration will be cancelled. 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 and 2.161; TMEP §1604.07(a)
If the wrong party filed the Section 8 Affidavit and there is no time remaining in the statutory filing period, the current owner cannot file a new Section 8 Affidavit. The registration will be cancelled. 15 U.S.C. §1058; 37 C.F.R. §2.164(b); TMEP §1604.07(a). This is not a deficiency that can be cured after the expiration of the grace period. See In re Precious Diamonds, Inc., 635 F.2d 845, 208 USPQ 410 (C.C.P.A. 1980); In re Media Central IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002).
The owner must submit (1) a substitute specimen showing current use in commerce of the registered mark on or in connection with the goods and/or services in the registration, and (2) a statement that the substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8. This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.161(g); TMEP §1604.12(c).
The specimen of record does not show the registered mark.
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 the 10-year Section 8, that is, within one year before the end of a 10-year period after the date of registration.
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.
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Signature of Authorized Person
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Type or Print Name
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Date
RESPONSE TIME DEADLINE: A complete response must be received within 6 months from the mailing 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. 37 C.F.R. §§2.163(b) and 2.184(b); TMEP §§1604.16, 1606.12 and 1606.13(a).
DEFICIENCY SURCHARGE REQUIRED: The owner must submit a $100 deficiency surcharge with its response to this Office action. 37 C.F.R. §§2.6, 2.164(a)(1) and 2.185(a)(1).
Vicky Copeland
Trademark Specialist
Post Registration Division
Office of Trademark Services
(571) 272-9521
Fax (571) 273-9521
How to respond to this Office Action:
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the registration number, the words 'Post Registration' and the examiner's name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINER.