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:  March 7, 2021

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on 11/24/2020.  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.

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 ULTA SALON, COSMETICS & FRAGRANCE, INC. ( Delaware Corporation)  However, the party who filed the Section 8 Affidavit is identified as ULTA SALON, COSMETICS & FRAGRANCE, INC. (Delaware limited liability Company) 

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.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 10^th year anniversary date on 11/06/2021, whichever is later.  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, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the owner may avoid cancellation of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §2.163(c).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §2.161(a)(4)(i)-(ii).  For more information about this, please contact the undersigned.

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.

/Roberts, Sharon/

Trademark Specialist

Office of Post Registration

571-272-9549 (Office)

Sharon.Roberts@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.