UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 POST REGISTRATION OFFICE ACTION

 

 

 

Registration Number  2,716,992

 

The Sections 8 & 15 Combined Affidavit was received on May 15, 2009.  The Section 15 portion of the combined affidavit is acknowledged.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

 

The owner must submit (1) a substitute specimen showing current use in commerce of the registered mark on or in connection with the goods and/or services in the registration, and (2) a statement that the substitute specimen was in use in commerce during the relevant period for filing the 6-year Section 8.  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.161(g); TMEP §1604.12(c).

 

The specimen of record does not show trademark use of the registered mark in commerce.  It appears to be an screen shot of the registered mark, and does not show the mark actually used in commerce on the goods or in the sale or advertising of the services.

 

Examples of acceptable specimens for goods includes labels, tags, instruction manuals, and photographs that show the mark on the goods or on packaging for the goods.  TMEP §904.04 et seq.  Examples of acceptable specimens for services includes signs, brochures, or advertisements that show the mark used in the sale or advertising of the services.  TMEP §1301.04 et seq.

 

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 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 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

 

The following persons are authorized to sign a Section 8 Affidavit 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(b); TMEP §1604.08(a).

 

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.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

 

DEFICIENCY SURCHARGE REQUIRED:  The owner must submit a $100 deficiency surcharge with its response to this Office action.  37 C.F.R. §§2.6 and 2.164(a)(1).

 

Sincerely,

 

Tamika Whitsey

TM Specialist

Post Registration Division

571-272-4321 office

571-273-4321 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.

 

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.

 

 PLEASE ENCLOSE THIS FORM WITH YOUR RESPONSE

**This form must be included with your response to ensure proper fee processing.**

 

Registration No.  2716992

 

The Post Registration Paralegal has determined that the amounts indicated below are outstanding:

 

$________ Section 8 affidavit filing fee (fee code 6205)

 

$________ Section 8 affidavit grace period surcharge (fee code 6206)

 

$__100___ Section 8 affidavit deficiency surcharge (fee code 6207)

 

$________ Section 9 renewal application filing fee (fee code 6201)

 

$________ Section 9 renewal application grace period surcharge (fee code 6203)

 

$________ Section 9 renewal application deficiency surcharge (fee code 6204)

 

$________ Section 15 affidavit filing fee (fee code 6208)

 

$________ Section 7 correction (registrant error) filing fee (fee code 6212)

 

$________ Section 7 amendment filing fee (fee code 6214)

 

$________ Section 7 issue new certificate of registration filing fee (fee code 6211)

 

$_______ Deficiency surcharge Sec. 8—if response filed after ______ (fee code 6207)

                                                                                                                                                                                                                          Date

 

$_______ Deficiency surcharge— Sec. 9 if response filed after ______ (fee code 6204)

                                                                                                                                                                                                                          Date