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:  February 28, 2020

Status

Your response to the outstanding Office action regarding the Sections 8 & 15 Combined Affidavit, was timely received on February 21, 2020.

Requirements for Audit Not Satisfied – CLASS 9 ONLY

As part of the audit to assess and promote the accuracy and integrity of the trademark register as to the actual use of the mark with the goods and/or services identified in the registration, the owner/holder of the registration was required to submit proof of use for two additional goods and/or services per class.  37 C.F.R. §§2.161(h), 7.37(h).  Although the owner/holder submitted a response to the Office action, the owner/holder only included a request to delete some or all of the goods and/or services inquired about as part of the audit, as well additional goods in the registration.

Specifically, in the Sec. 8 & 15, you have established acceptable proof of use for the following goods:

• peripheral equipment for computers
• apparatus and installations and the operation and management of a telecommunications network
• telecommunications apparatus, namely, modems, to enable connection to databases and the global computer network
• modems
• electronic monitoring equipment and instruments for use in relation to telephony networks, telemetry, signaling and system capabilities for use in tracking telecommunications and electronic signals and for monitoring electronic traffic across telecommunications lines, telemetry, signaling and system capabilities
• electrical and electronic instruments for use in controlling, testing, signaling and checking telecommunications and electronic signals for controlling, testing, signaling and checking the movement of electric and electronic traffic across telecommunications lines, telemetry, signaling and system capabilities

As the owner/holder has not satisfied the requirements of the audit, the owner/holder must verify the accuracy of the claim of use in the affidavit of use by providing proof of use for all the remaining goods in Class 9 in the registration without acceptable proof of use.  Id.

Therefore, the owner/holder must submit the following:

(1)   Proof of current use of the registered mark in commerce for the following goods and/or services:

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The owner/holder 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 proof of use, during the relevant period for filing the affidavit of use.”  37 C.F.R. §§2.161(h), 7.37(h).

Additionally, you must identify the corresponding goods and/or services supported by each item submitted as proof of use.  See id. 

Examples of proof of use.  Electronic proof of use may be an actual image, such as a photograph, scanned copy, or screen capture, of the physical item. Acceptable proof of use for goods includes the mark shown on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Tags or labels must be shown affixed to the goods or must consist of actual tags or labels that identify the specific goods on which they are used and include informational matter that typically appears on a tag or label in use in commerce for these types of goods.  Similarly, a package must show or identify the goods therein.  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  Acceptable proof of use for services includes signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).

Form Declaration

Please note that the below statement verifying proof of use is slightly different than the standard substitute specimen statement.

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the use of the mark as evidenced by the submitted item(s) showing proof of use, if properly signed and dated:

The owner/holder 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 proof of use, during the relevant period for filing the affidavit of use.

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 the facts set forth above are true; 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

WARNING:  If the owner/holder responds with unacceptable proof of use for any goods and/or services queried, the Office will delete these goods and/or services from the registration.

Detailed information regarding the audit program is provided on the following webpage – http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program.

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.  If a response is not received, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

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.