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 9, 2022

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on September 8, 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.

Specimen Refusal – Materially Different Mark

The specimen submitted with the Section 8 Affidavit shows a materially different mark from that in the registration.  Specifically, the specimen shows the mark as just the letters ACVD in a plain font, and the registration shows the mark as ACVD lightly stylized within a rectangular outline. The mark does not appear with the rectangular outline in the specimen.

The specimen cannot be accepted because the character of the registered mark appears materially altered on the submitted specimen, and it appears that the registered mark is no longer in use.  In re International Nickel Co., Inc., 282 F.2d 952, 127 USPQ 331 (C.C.P.A. 1960); In re Continental Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958); Ex parte Richards, 153 USPQ 853 (Comm’r Pats. 1967); see TMEP §§807.14 et seq., 1604.13, 1609.02(a).

Therefore, the owner must submit the following:

(1) A substitute specimen that shows use by members of the registered mark in commerce to indicate membership in the owner’s collective membership organization; 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(g); TMEP §1604.12(c).

Examples of specimens include membership cards or certificates, decals, wall plaques, garment patches, flags, pennants, banners, business stationery, clothing, and any other item used by a member to indicate membership in owner’s organization.  See TMEP §1304.02(a)(i)(C).

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).

Declaration

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit or Declaration, if properly signed and dated:

Unless the owner specifically claimed excusable nonuse, the mark was in use in commerce on or in connection with the goods/services or to indicate membership in the collective membership organization identified in the registration, as evidenced by the submitted specimen(s) showing the mark as used in commerce, during the relevant period for filing the 10-year Section 8.

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that 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 properly authorized to sign a Section 8 Affidavit on behalf of the owner:

(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);

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

(3)  An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

37 C.F.R. §§2.161(b), 2.193(e)(1); 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 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.

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

571-272-8844

jordan.baker@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.