UNITED STATES PATENT AND TRADEMARK OFFICE
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REGISTRATION NO: 2,490,195
REGISTRANT: ANDRX LABORATORIES, INC.
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October 1, 2007
*2490195* |
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CORRESPONDENT ADDRESS: STEPHEN J. CARMODY BRUNINI GRANTHAM GROWER & HEWES POST OFFICE DRAWER 119 JACKSON, MS 39205
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RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: DYNEX
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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 2,490,195
The Sections 8 & 15 Combined Affidavit submitted on September 4, 2007, 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 Andrx Laboratories, Inc. However, the party who filed the Combined Affidavit is identified as Athlon Pharmaceutical Company.
The party who filed the Combined Affidavit must establish its current ownership of the subject registration as of September 4, 2007, 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 §§1604.07(a) and 1605.04. 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 evidence showing the transfer of title to the party who filed the Combined Affidavit. 37 C.F.R. §3.73(b); TMEP §502.01. 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, the documents must be recorded before expiration of the time for filing a response. In addition, you must notify the undersigned when the documents have been recorded. For information regarding recording assignments, name changes and mergers, please visit the webpage http://www.gov.uspto.report/web/trademarks/workflow/assign.htm and see TMEP §§503 et seq. For specific questions, please contact the Assignment Division at 571-272-3350. 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 if the party who filed the Combined Affidavit submits sufficient evidence to establish ownership but the ownership documents are not recorded with the Assignment Division before expiration of the time to file a response, then the acceptance notice will issue in the name of the owner of record. 37 C.F.R. §3.85; TMEP §502.02.
However, if the wrong party filed the Combined Affidavit and there is time remaining in the statutory filing period, the current owner must file a new Section 8 Affidavit with a new fee or the registration will be cancelled. If the new Section 8 Affidavit is filed during the six-month grace period, the owner must pay the filing fee for the Section 8 Affidavit and the grace period fee. 15 U.S.C. §1058; 37 C.F.R. §§2.160 and 2.161; TMEP §1604.07(a)
If the wrong party filed the Combined Affidavit and there is no time remaining in the statutory filing period, the current owner cannot file a new Section 8 Affidavit. 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).
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.
Faith L. Roberson
Trademark Specialist
Trademark Services
Post-Registration Division
(571) 272-9548
(571) 273-9548-fax
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINER.