Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

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 30, 2021

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on January 19, 2021.  The Section 9 portion of the combined filing can be granted.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

I.                   OWNERSHIP INQUIRY – OWNER’S NAME AND LEGAL ENTITY IS DIFFERENT

The party who filed the Section 8 Affidavit must establish its ownership of the registration.  Trademark Act Section 8 requires the current owner of the registration to file the Section 8 Affidavit.  15 U.S.C. §1058; 37 C.F.R. §§2.161(a)(1), 3.73(b); TMEP §1604.07(a).  Office records do not show clear chain of title in the party who filed the Section 8 Affidavit.

Office records show clear chain of title to the registration in WILSON ELECTRONICS, LLC, a Delaware Limited Liability Company.  However, the party who filed the Section 8 Affidavit is identified as WILSON ELECTRONICS, INC., a Delaware Corporation. 

The party who filed the Section 8 Affidavit or Declaration must establish its current ownership of the registration.  15 U.S.C. §1058; 37 C.F.R. §2.161(a)(1); TMEP §1604.07(a).  Ownership can be established by satisfying one of the following:  (1) recording the appropriate documents with the Assignment Recordation Branch of the Office; or (2) submitting actual evidence showing the transfer of title to the party who filed the Section 8 Affidavit or Declaration.  37 C.F.R. §3.73(b); TMEP §§502.01, 1604.07(b).  More information about these two methods for establishing ownership of the registration appears directly below. 

(1)  If the present owner chooses to record the appropriate documents with the Assignment Recordation Branch, 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/trademark/trademark-assignments-change-search-ownership and see TMEP §§503 et seq.  For specific questions, please contact the Assignment Recordation Branch 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.  To record an assignment, the owner must submit the assignment documents along with a cover sheet and the required fee.  37 C.F.R. §§3.28, 3.31.  The fees for recording an assignment are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document.  37 C.F.R. §2.6(b)(6).  The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.  37 C.F.R. §3.25.

(2)  If the present owner prefers to submit actual evidence of ownership directly to the undersigned trademark specialist, 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; TMEP §§502 et seq.

Acceptance Notice Issued in Name of Owner of Record

Please note that if the party who filed the Section 8 Affidavit or Declaration submits sufficient evidence to establish ownership but the ownership documents are not recorded with the Assignment Recordation Branch 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.  An updated acceptance notice will not issue if ownership documents are recorded following the expiration of the time to file a response; however, the new owner may file a request for a new certificate in the new owner’s name, along with the required fee.  See 37 C.F.R. §2.6(a)(8); TMEP §502.03.     

There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.  TMEP §1604.07(a).

Information for Section 8 Affidavits or Declarations Not Filed in the Name of the Owner

If the Section 8 Affidavit or Declaration was not filed in the name of the owner of the registration and there is time remaining in the statutory filing period, including grace period, when responding to this Office action, the true owner may (1) submit a correction of the name in the filing of record or (2) file a complete new Section 8 Affidavit or Declaration with a new specimen and filing fee.  Please note that a deficiency surcharge is required if the Section 8 Affidavit or Declaration was submitted before the grace period began and a correction of the name in the filing of record is received during the grace period.  37 C.F.R. §2.164(a)(1); TMEP §1604.17(a).  The deficiency surcharge is $100.  37 C.F.R. §2.6.  The fee for filing a Section 8 Affidavit or Declaration is $225 per class.  37 C.F.R. §2.6.  If the new Section 8 Affidavit or Declaration is filed during the six-month grace period, the owner must pay the filing fee for the Section 8 Affidavit or Declaration and the grace period fee.  15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161; TMEP §1604.07(a).  The grace period fee is $100 per class.  37 C.F.R. §2.6. 

If the Section 8 Affidavit or Declaration was not filed in the name of the owner of the registration and there is no time remaining in the grace period when responding to this Office action, the true owner may submit a correction of the name in the filing of record with payment of the deficiency surcharge, but may not file a new Section 8 Affidavit or Declaration.  15 U.S.C. §1058. 

Confirmation Required: Affidavit or Declaration Signed by Authorized Signatory

If a correction of the name in the filing of record is submitted at any time, the true owner must confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the owner.  37 C.F.R. §§2.161(a)(2), 2.193(e)(1); TMEP §1604.08(a).  If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, attesting to the use or excusable nonuse of the mark during the relevant period for filing the 10-year Section 8.

II.                SPECIMEN DEFICIENCY – SPECIMEN CONSIST OF ADVERTISING MATERIAL

The owner of the registration provided a specimen with its Section 8 Affidavit; however, although the specimen is identified as a catalog or web page, it is unacceptable to show trademark use as a display associated with the goods because it fails to include a picture or a sufficient textual description of the goods/the mark in close proximity to a picture or textual description of the goods/the necessary ordering information/a weblink for ordering the goods and thus, appears to be mere advertising material.  See In re Sones, 590 F.3d 1282, 1288-89, 93 USPQ2d 1118, 1123-24 (Fed. Cir. 2009); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); In re Dell Inc., 71 USPQ2d 1725, 1727-29 (TTAB 2004); TMEP §904.03(h), (i); cf. Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 513-14, 24 USPQ2d 1314, 1316 (E.D. Va. 1992). 

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable to show trademark use.  TMEP §904.04(b).  Leaflets, handbills, brochures, advertising circulars and other advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b), (c), 1301.04.

A printed or web catalog, web page or similar specimen is acceptable to show trademark use as a display associated with the goods only if it includes the following:  (1) a picture of the relevant goods or a textual description that identifies the actual features or inherent characteristics of the goods such that the goods are recognizable, (2) the mark appearing sufficiently near the picture or textual description of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders) or a visible weblink to order the goods.  See In re Sones, 590 F.3d at 1288-89, 93 USPQ2d at 1123-24; In re Genitope, 78 USPQ2d at 1822; In re Dell, 71 USPQ2d at 1727-29; Lands’ End, 797 F. Supp. at 513-14, 24 USPQ2d at 1316; TMEP §904.03(h).  Without this necessary information, the specimen is mere advertising and is not acceptable to show use in commerce for goods.  See, e.g., In re Osterberg, 83 USPQ2d 1220, 1222-24 (TTAB 2007); In re Genitope, 78 USPQ2d at 1822. 

The owner may respond by submitting:

(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods specified in the registration; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.”  37 C.F.R. §2.161(a)(7); TMEP §1604.12(c).

Examples of specimens.  Electronic specimens may be an image, such as a photograph or scanned copy, of the physical specimen. Specimens for goods include an image of (1) the actual goods bearing the mark; (2) labels or tags shown attached to the goods or including informational matter that typically appears on a tag or label in use in commerce for these types of goods; (3) an actual container or packaging for the goods bearing the mark; or (4) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(i).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

III.             SAMPLE DECLARATION

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Combined Section 8 Affidavit & Section 9 Renewal Application, 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, that is, within the one year before the end of a 10-year period after the date of registration, or during the ensuing grace period.

Renewal of the registration is requested.

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

Renewal Application on behalf of the owner:

(1)   A person with legal authority to bind the owner;

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

(3)   An attorney as defined in 37 C.F.R. §11.1 who has actual or implied written or verbal power of attorney from the owner.

37 C.F.R. §2.161(a)(2); TMEP §§804.04 and 1604.08(a).

IV.             SIGNATURE ON RESPONSE - ADVISORY

Responses to Office actions must be properly signed.  37 C.F.R. §§2.163(b), 2.184(b)(2); see TMEP §712.  If the owner has retained an attorney, the attorney must sign the response; the owner cannot sign the response.  TMEP §605.02.  However, if the owner was previously represented by an attorney, and the owner later retains a different attorney, the newly retained attorney cannot sign responses until a new power of attorney signed by the owner is filed.  TMEP §602.01.  Paralegals and secretaries cannot sign responses for attorneys.  See TMEP §602.03.

The only attorneys who can practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state (including the District of Columbia, Puerto Rico and other federal territories and possessions) or (2) Canadian agents/attorneys reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney, and who are representing trademark registrants located in Canada.  See 37 C.F.R. §§2.17(a), 11.1 11.14, 11.14(a), (c), (e).  Foreign attorneys (other than recognized Canadian attorneys) cannot sign responses or otherwise represent registrants before the USPTO. See  37 C.F.R. §11.14(c). 

If the owner is not represented by an attorney, the response must be signed by the owner or by someone with legal authority to bind the owner (i.e., a corporate officer of a corporate owner, the equivalent of an officer for unincorporated organizations or limited liability company owners, a general partner of a partnership owner, each owner for registrations with multiple individual owners, etc.).  37 C.F.R. §§2.163(b), 2.184(b)(2); see TMEP §§712-712.01(a)(viii). 

A non-attorney who is authorized to verify facts on behalf of an owner under 37 C.F.R. §2.33(a)(2) (such as trademark administrators, accountants, business managers, administrative assistants, and personal assistants) cannot sign responses to Office actions unless he or she also has legal authority to bind the owner.  See TMEP §§712.03 and 804.04. 

V.                RESPONSE GUIDELINES

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 and/or expiration of the registration.  If a response is not received, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled and will expire in its entirety.  37 C.F.R. §§2.163(b)-(c) and 2.184(b); TMEP §§1604.16, 1606.12 and 1606.13(a).

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)(1) and 2.185(a)(1).

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.

/Shawnee Letsa/

Trademark Specialist

Post Registration Division

571-272-9626 Direct

Shawnee.letsa@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.