UNITED STATES PATENT AND TRADEMARK OFFICE
REGISTRATION NO: 2,653,573
REGISTRANT: M&B
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December 9, 2008 *2653573* |
CORRESPONDENT ADDRESS: Pascale Longuet Law Office of Pascale Longuet 240 E 47TH ST, Ste 37C NEW YORK NY 10017-3042
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RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: GS27
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: longuet@earthlink.net |
Please provide in all correspondence:
1. Registration date, registration number, mark and registrant's name. 2. Date of this Office Action. 3. Examiner's name and Post Registation Division. 4. Your telephone number and e-mail address.
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Registration Number 2,653,573
The Sections 8 & 15 Combined Affidavit submitted on November 5, 2008, cannot be accepted or acknowledged for the reasons set forth below.
The party who filed the Section 8 Affidavit must establish its ownership of the subject 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) and 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.
The filer of the Section 8 Affidavit must clarify its name and ownership of the subject registration. The owner’s name on the registration is identified as M&B, but the party who filed the Section 8 Affidavit is identified as M&B SAS. If the mistake was merely a clerical error, please state so for the record and clarify the owner’s actual name. A typographical or clerical error in the owner’s name can be corrected. In re Atlanta Blue Print Co., 19 USPQ2d 1078 (Comm’r Pats. 1990); TMEP §1604.07(f).
If the Section 8 Affidavit was filed by an entity other than the owner of record, then the filer of the Section 8 Affidavit must establish its ownership of the registration as of the date the Section 8 Affidavit was signed. 37 C.F.R. §3.73(b); TMEP §§1604.07(a) and (b).
Also, the owner must submit (1) a substitute specimen showing current use in commerce of the registered mark on or in connection with the goods and/or 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); TMEP §1604.12(c).
The specimen of record does not show use of the registered mark in commerce. It appears to be an artist’s rendering of the registered mark, and does not show the mark actually used in commerce on the goods or in the sale or advertising of the services.
Examples of acceptable specimens for goods includes labels, tags, instruction manuals, and photographs that show the mark on the goods or on packaging for the goods. TMEP §904.04 et seq. Examples of acceptable specimens for services includes 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 Section 8 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 5th and 6th year anniversary after the date of registration or the date of publication under 15 U.S.C. §1062.
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.
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Signature of Authorized Person
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Type or Print Name
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Date
RESPONSE TIME DEADLINE: A complete response must be received within 6 months from the mailing date of this Office action or prior to expiration of the 6th year anniversary date on November 26, 2008, 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); 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 November 26, 2008 date of 6th year anniversary. 37 C.F.R. §§2.6 and 2.164(a)(1).
Burnie Gillis
Trademark Specialist
Post Registration Division
Office of Trademark Services
(571) 272-9526
Fax: (571) 273-9526
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINER.