To: | GERSON INSTITUTE (docketing@procopio.com) |
Subject: | U.S. Trademark Registration No. 2526365 - GERSON - 11181901US02 |
Sent: | 11/24/21 10:33:13 AM |
Sent As: | prg@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Owner’s Trademark Registration
U.S. Registration No. 2526365
Mark: GERSON
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Correspondence Address: |
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Owner: GERSON INSTITUTE
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Reference/Docket No. 11181901US02
Correspondence Email Address: |
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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: November 24, 2021
The Combined Section 8 Affidavit & Section 9 Renewal Application submitted on July 2, 2021, cannot be accepted for the reasons set forth below.
Owner/holder must provide owner’s/holder’s domicile address. All post registration filings must include the owner’s/holder’s domicile address, and domicile dictates whether an owner/holder is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the owner/holder at the USPTO. See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).
An individual owner’s/holder’s domicile is the place a person resides and intends to be the person’s principal home. See 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity owner’s/holder’s domicile is the principal place of business, i.e., headquarters, where a juristic entity’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(p); Examination Guide 4-19, at I.A. An owner/holder whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The post registration filing lists the owner/holder as a juristic entity and specifies the owner’s/holder’s domicile as a post office box or mail forwarding service instead of a street address, “c/o” or in “care of” another party’s address, or an address that is not a street address. In most cases, a post office box, a mail forwarding service, an address that is listed as “c/o” or in “care of” another party’s address, or an address that is not a street address is not acceptable as a domicile address because it does not identify the location of the owner’s/holder’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, the owner/holder must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an owner/holder may demonstrate that the listed address is, in fact, the owner’s/holder’s domicile. Examination Guide 4-19, at I.A.3.
If the owner/holder wants to hide its domicile address from public view because of privacy or other concerns, the owner/holder must have a mailing address that can be made public and differs from its domicile address. In this case, the owner/holder must follow the steps below in the correct order to ensure the domicile address will be hidden.
In the Response to Post-Registration Office Action form:
(1) Answer “Yes” to the wizard question asking, “Do you need to update the owner’s/holder’s mailing address, email address, phone or fax number?” and click “Continue;”
(2) On the “Owner Information” page, if the previously provided mailing address has changed, the owner/holder must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;
(3) On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox.
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(a)(4)(i)-(ii) 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.
/Vicky Copeland/
Trademark Specialist
Post Registration Division
Office of Trademark Services
(571) 272-9521
Fax (571) 273-9521
Email: vicky.copeland@uspto.gov
RESPONSE GUIDANCE