Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

OFFICE ACTION

Second 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:  April 28, 2021

Your response to the outstanding Office action regarding the Section 8 Affidavit & Section 9 Renewal Application was timely received on April 06, 2021.  After consideration of the response and the facts of record, the refusal to accept the Section 8 Affidavit is maintained for the reason(s) set forth below. 

The Section 8 Affidavit cannot be accepted because of the deletion or retaining of goods.

I.                Clarification Requirement

The owner must submit a statement that clarifies the goods 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(a)(5)(i); TMEP §§1604.09(a), (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 some of the goods listed in the registration.  If the Section 8 Affidavit is intended to cover fewer than all the goods, then the owner must specify the goods

being deleted.  37 C.F.R. §2.161(a)(5)(ii); TMEP §1604.09(b).  Goods omitted from a Section 8 Affidavit will be deleted from the registration.

Please, clarify if the goods “COSMETIC BRUSH CASES SOLD EMPTY” is being deleted or retained.  There is a $250.00 fee for deletions.

(1)   Request Deletion and Pay Fees:  Respond by deleting the unacceptable class(es) from the registration and paying the required fee for deletion, and deficiency fee for correcting the listing of goods and services.  Use the Response to Post-Registration office action form at http://teas.gov.uspto.report/office/trs/ to delete the goods and/or services and pay fees.  The fee for deleting classes from the registration during pendency of the Section 8 Affidavit or Declaration is $250 per class.  37 C.F.R.§ 2.6(a)(12).  The deficiency surcharge is $100.  37 C.F.R. §2.6(a)(20). 

II.             Sample Declaration

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.

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

III.           Authorized Signatories

The following persons are properly authorized to sign a Section 8 Affidavit on behalf of the owner:

(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);

(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or

(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

37 C.F.R. §§2.161(a)(2), 2.193(e)(1); TMEP §1604.08(a).

IV.           Response Period

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  If a response is not received, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(b).

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)(2); TMEP §1604.17(b).

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.

/Ajay R. David/

Ajay R. David

Trademark Specialist

Post Registration Division

Phone: 571-272-1565

Email: ajay.david@uspto.gov

RESPONSE GUIDANCE

• Response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an owner’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted or processed.  If the owner does not have an attorney, the response must be signed by the individual owner, all joint owners, or someone with legal authority to bind a juristic owner.  If the owner has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.