UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 POST REGISTRATION OFFICE ACTION

 

 

 

Registration Number  2,756,801

 

The Sections 8 & 15 Combined Affidavit was received on April 14, 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 of the registered mark on or in connection with the 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)(1); TMEP §1604.12(c).

 

The specimen of record is unacceptable to show service mark use because it does not reference the services.  Where a mark is used in advertising the services, the specimen must show an association between the mark and the services in the registration.  A specimen that shows only the mark, with no reference to the services either on the specimen or in descriptive wording in the mark, does not show service mark usage.  See In re Adair, 45 USPQ2d 1211 (TTAB 1997); TMEP §§1301.04(b) and (c).

 

Examples of acceptable specimens for services include 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 Combined 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 mark has been in continuous use in commerce for five (5) consecutive years after the date of registration or the date of publication under 15 U.S.C. §1062(c), and is still in use in commerce on or in connection with all goods and/or services listed in the existing registration.  There has been no final decision adverse to the owner’s claim of ownership of such mark for such goods and/or services, or to the owner’s rights to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the United States Patent and Trademark Office or in the courts.

 

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 Combined 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 or prior to expiration of the 6^th year anniversary date on August 26, 2009, whichever is later.  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 and 1604.17(a).

 

DEFICIENCY SURCHARGE INFORMATION:  A $100 deficiency surcharge must be submitted if the response to this Office action is received by the Office after date of 6^th year anniversary.  37 C.F.R. §§2.6 and 2.164(a)(1).

 

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the registrant 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(d)(1)-(2).  For more information about this, please contact the undersigned.

 

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.  2756801

 

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)

 

$________ 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)

 

$__100__ Deficiency surcharge Sec. 8—if response filed after August 26, 2009 (fee code 6207)

                                                                                                                                                                                                                          Date

 

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

                                                                                                                                                                                                                          Date

 

 

 

PLEASE NOTE THAT A FEE OF $_________ WAS PREVIOUSLY REFUNDED BECAUSE THE FEE SUBMITTED WAS INSUFFICIENT TO COVER THE FILING FEE REQUIREMENT.   ALL FEES LESS THAN OR IN EXCESS OF THE AMOUNT PER FEE CODE ARE ELECTRONICALLY REFUNDED OR CREDITED TO A DEPOSIT ACCOUNT OR BANK CHECKING ACCOUNT.