UNITED STATES PATENT AND TRADEMARK OFFICE
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REGISTRATION NO: 2,166,733
REGISTRANT: BIG DOG HOLDINGS, INC.
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May 17, 2004
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CORRESPONDENT ADDRESS: ANTHONY J. WALL GENERAL COUNSEL & EXEC. VP BIG DOG HOLDINGS, INC. 121 GRAY AVENUE SANTA BARBARA CA 93101 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
ecom104@uspto.gov
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MARK: BIG DOG
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 2,166,733
The Sections 8 & 15 Combined Affidavit submitted on April 13, 2004 is refused for the following reason(s):
The Trademark Act requires that the current owner of the registration file the Section 8 Affidavit. 15 U.S.C. §1058. It is unclear whether the party who filed the Section 8 Affidavit is the current owner.
Office records indicate the registration is owned by Big Dog Motorcycles, L.L.C. not Big Dog Holdings, Inc., the party who filed the Section 8 Affidavit.
The party who filed the Section 8 Affidavit must establish current ownership of the registration at least as early as April 13, 2004, the date the Section 8 Affidavit was signed. 37 C.F.R. §2.161(a). Ownership may be established by (1) recording appropriate documents in the Assignment Services Division, (703) 308-9723, or (2) submitting proof of the transfer of title to the party who filed the Section 8 Affidavit. 37 C.F.R. §3.73(b).
(1) If the present owner chooses to establish ownership by recording appropriate documents in the Assignment Services Division, please notify the undersigned paralegal when the documents have been filed. A telephone call to the paralegal is encouraged to resolve this issue.
(2) If the present owner chooses to establish ownership by submitting proof of the transfer of title, appropriate evidence, such as a copy of the document transferring ownership or a verified statement that a valid transfer of legal title has occurred, must be submitted. Please be advised that the Section 8 Notice of Acceptance will issue in the name of the original registrant or the last recorded assignee as recorded in the Assignment Services Division.
If the wrong party filed the Section 8 Affidavit and there is time remaining in the statutory filing period, the current owner may file a new affidavit. If the new affidavit is filed during the 6-month grace period, the owner must pay the filing fee for the Section 8 Affidavit plus the grace period fee. If the wrong party filed the Section 8 Affidavit, and there is no time remaining in the statutory filing period, the registration will be cancelled.
A COMPLETE RESPONSE MUST BE RECEIVED WITHIN 6 MONTHS FROM THE MAILING DATE OF THIS OFFICE ACTION OR BEFORe june 23, 2004, THE 6th year anniversary date, WHICHEVER IS LATER. THE OWNER MUST RESPOND TO ALL INQUIRIES SET FORTH IN THIS LETTER TO AVOID CANCELLATION OF THE REGISTRATION.
PLEASE BE ADVISED THAT IF THE WRONG PARTY FILED THE SECTION 8 AFFIDAVIT, THE CURRENT OWNER MUST FILE A NEW AFFIDAVIT BEFORE THE GRACE PERIOD EXPIRES AND PAY THE FEE FOR FILING THE NEW AFFIDAVIT. THE OWNER MUST ALSO PAY THE GRACE PERIOD FEE, IF THE NEW AFFIDAVIT IS FILED DURING THE GRACE PERIOD.
Vicky Copeland
Paralegal Specialist
Post Registration Division
Office Of Trademark Services
(703) 308-9500 X226
Direct Fax (703) 746-6512
How to respond to this Office Action:
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
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.