Status Letter for Registration No.

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 POST REGISTRATION OFFICE ACTION

 

The Trademark/Service Mark Allegation of Use form filed on May 5, 2004, is being examined under Section 8 of the Lanham Act.  However, this filing cannot be accepted under Section 8, 15 U.S.C. §1058, for the reasons set forth below.

 

1) The owner must specify or incorporate by reference the goods and/or services in the registration for which the mark is still in use in commerce.  15 U.S.C. §1058(b); 37 C.F.R. §2.161(e)(1); TMEP §§1604.09(a) and (c).  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.

 

The Section 8 Affidavit of record omits any reference to the registered goods upon which the mark is still in use in commerce.  If the Section 8 Affidavit is intended to cover fewer than all the goods and/or services, then the owner must specify the goods and/or services being deleted.  37 C.F.R. §161(e)(2).  Goods and/or services omitted from the Section 8 Affidavit will be deleted from the registration.

 

2) The owner must submit (1) a specimen showing current use of the registered mark in commerce on or in connection with the goods and/or services in the registration, and (2) a statement that the specimen was in use in commerce during the relevant period for filing the 6-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.

 

Examples of an acceptable specimen for goods include labels, tags, instruction manuals, and photographs that show the mark on the goods or on packaging for the goods.

 

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 6-year Section 8, that is, between the 5^th and 6^th year anniversary after the date of registration or the date of publication under 15 U.S.C. §1062.

 

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.

 

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

 

3) The owner must submit $100 to cover the grace period fee of $100 per class.  37 C.F.R. §§2.6 and 2.161(d)(2); TMEP §1604.06(b).  The Section 8 Affidavit was submitted during the grace period, however the owner did not submit the grace period fee.

 

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 of the registration.  37 C.F.R. §2.163(b); TMEP §§1604.16 and 1604.17(b) and (c).

 

DEFICIENCY SURCHARGE REQUIRED:  The owner also must submit a $100 deficiency surcharge with its response to this Office action.  37 C.F.R. §§2.6 and 2.164(a)(2).

 

 

 

 

 

Beverly Hilliard

/Beverly Hilliard/

Manager, Post Registration Division

571-272-9531

Beverly.Hilliard@upto.gov

 

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINER.