NOTE TO THE FILE
SERIAL NUMBER: 76206684
DATE: 06/05/2013
NAME: mpressey
NOTE:
The below email was sent on June 5, 2013 regarding the Petition to the Director filed on May 24, 2013 requiring a response within 30 days:
June 5, 2013
Michael A Smith, Esq. Via Email Only
CARLILE PATCHEN & MURPHY LLP
366 EAST BROAD STREET
COLUMBUS OH 43215
Re: Trademark Registration No. 2627582
Owner: Entrotech. Inc.
Mark: ENTROTECH
Dear Mr. Smith:
This acknowledges receipt on May 24, 2013 of your petition to the Director of the United States Patent and Trademark Office (Director). In your petition, you acknowledge that you did not file a timely response to the March 19, 2012 Post Registration Office action. As explained below, additional information is required for review of your petition. You are hereby granted thirty (30) days from the date of this letter to perfect the petition by submitting the necessary information.
I. Facts in Support of Extraordinary Circumstances for Waiver of Rule Required
A combined declaration of use and renewal application (combined filing) was filed on October 24, 2012. On November 19, 2012, an Office action was issued refusing the combined filing because the specimen of record does not show use of the registered mark on the goods or packaging. Petitioner was provided six months to correct the deficiency by submitting a properly verified substitute specimen and deficiency surcharge. No response was received and the registration is scheduled for cancellation/expiration.
Under Sections 8 and 9 of the Trademark Act, if the owner of the registration timely submits the combined filing, as was the case here, certain deficiencies can be corrected after expiration of the statutory deadline. However, Trademark Rules 2.163(b) and 2.184(b), 37 C.F.R. §§2.163(b) and 2.184(b), provide that any deficiency must be cured within the set period for response to the Post Registration examiner’s Office action, i.e., within six months of the mailing date of the action, or before the end of the relevant filing period set forth in §§8 and 9 of the Act, whichever is later. See TMEP §§1604.16 and 1606.12.
On petition, the Director may only waive a provision of the rules that is not a provision of the statute, when an extraordinary situation exists, justice requires, and no other party is injured. 37 C.F.R. §§2.146(a)(3) and 2.146(a)(5). Therefore, you must provide facts showing an extraordinary situation that justifies a waiver of the rule requiring a response to the Post Registration Office action within six months of the mail date. Without such facts, your petition will be denied.
Note that it is well settled that an inadvertent error that could have been avoided by the exercise of reasonable care does not constitute an extraordinary situation, within the meaning of the rules. In re Buckhead Marketing & Distribution, Inc., 71 USPQ2d 1620 (Dir USPTO 2004); In re Universal Card Group, Inc., 25 USPQ2d 1157 (Comm’r Pats. 1992; In re Merck & Co., Inc., 24 USPQ2d 1317 (Comm’r Pats. 1992); TMEP §1708.
II. Substitute Specimen May be Required/Statement on Use of Specimen Required
It is noted that you provided a specimen with your petition in an effort to satisfy the requirement in the Post Registration Office action. However, the exact nature of the specimen provided is unclear. Specifically, it is unclear how the specimen is used on or in connection with the goods in commerce. The term “in commerce” means use of the mark in the ordinary course of trade on goods that are sold or transported im commerce. Accordingly, in the event you elect to respond with facts that support extraordinary circumstances to justify waiver of the rule on timely responses, you must also provide additional information regarding the specimen provided with your petition, or you may elect to provide another acceptable and properly verified specimen.
Note that the $100 deficiency surcharge is also required.
The following language must be provided to support use of the specimen provided on petition or any additional specimen:
Sample Declaration
The following is a properly worded declaration under 37 C.F.R. §2.20. This language should be inserted at the end of the statement of facts concerning extraordinary circumstances and the statement concerning the use of the substitute specimen.
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 statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_______________________________
(Signature)
______________________________
(Print or Type Name and Position)
_______________________________
(Date)
You are hereby granted thirty (30) days from the date of this letter to perfect the petition by submitting the necessary verified statement of the facts supporting extraordinary circumstances and to provide information regarding the specimen.
To respond to this email, please use the “Response to Petition to Director Inquiry Letter” form online at http://www.gov.uspto.report/trademarks/teas/petition_forms.jsp . Please select form No. 12.
If no response to this letter is received within thirty-days, the petition will be denied, without consideration on the merits.
Please contact me if you have any questions.
/Montia Givens Pressey/
Montia Givens Pressey
Attorney Advisor
Office of the Deputy Commissioner
for Trademark Policy