Status Letter for Registration No.

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 POST REGISTRATION OFFICE ACTION

 

 

 

Registration Number  2,315,588

 

The Sections 8 & 15 Combined Affidavit submitted on 02-15-2005, cannot be accepted or acknowledged for the reasons set forth below.

 

The party who filed the Combined Affidavit must establish its ownership of the subject registration.  The Trademark Act requires the current owner of the registration to file the Combined Affidavit.  15 U.S.C. §§1058 and 1065; 37 C.F.R. §§2.161(a), 2.167(a) and 3.73(b); TMEP §§1604.07(a) and 1605.04.  Office records do not show clear chain of title in the party who filed the Combined Affidavit.

 

Office records show clear chain of title to the registration in SHARPSHOOTER SPECTRUM IMAGING, LLC.  However, the party who filed the Combined Affidavit is identified as SHARP SHOOTER CORPORATION. 

 

The party who filed the Combined Affidavit must establish its current ownership of the subject registration as of 02-15-2005, the date the Combined Affidavit was signed.  15 U.S.C. §§1058 and 1065; 37 C.F.R. §§2.161(a), 2.167(a) and 3.73(b); See TMEP §§502 and 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 documentation evidence showing the transfer of title to the party who filed the Combined Affidavit.  37 C.F.R. §3.73(b); TMEP §§502 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, you must notify the undersigned paralegal when the documents have been filed.  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 the notice of acceptance and acknowledgement for the Combined Affidavit will issue in the name of the current owner unless ownership documents are recorded with the Assignment Division.  37 C.F.R. §3.85; TMEP §502.02.

 

If the wrong party filed the Combined Affidavit and there is time remaining in the statutory filing period, the current owner may file a new Combined Affidavit.  If the new Combined Affidavit is filed during the six-month grace period, the owner must pay the filing fee for the Combined Affidavit and the grace period fee.  15 U.S.C. §§1058 and 1065; 37 C.F.R. §§2.160, 2.161 and 2.167(a); TMEP §§1604.07(a), 1605.04 and 1605.05.

 

If the wrong party filed the Combined Affidavit and there is no time remaining in the statutory filing period, then 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).  Filing fees submitted with the combined affidavit will not be refunded.

 

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Combined 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 mark has been in continuous use in commerce for five (5) consecutive years after the date of registration or the date of publication under 15 U.S.C. §1062(c), and is still in use in commerce on or in connection with all goods and/or services listed in the existing registration.  There has been no final decision adverse to the owner’s claim of ownership of such mark for such goods and/or services, or to the owner’s rights to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the United States Patent and Trademark Office or in the courts.

 

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

 

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the mailing date of this Office action or before February 2, 2006, the 6^th year anniversary date, whichever is later.  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.

 

 

 

 

 

 

Sharon Roberts

Affidavit/Renewal Examiner

Post Registration Division

Fax Number- 571-273-9549

Phone 571-272-9549

 

 

 

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.