Petition to Director Granted

UNITED STATES PATENT AND TRADEMARK OFFICE

PETITION TO DIRECTOR GRANTED

This acknowledges receipt of Printers' Service, Inc.’s (petitioner’s) August 31, 2016 petition to the Director of the United States Patent and Trademark Office (Director) to correct the record for the above referenced mark regarding the ownership information in the combined Section 8 declaration of use and Section 15 affidavit of incontestability filed on June 19, 2009 and in the combined Section 8 declaration of use and Section 9 application for renewal filed on August 26, 2013.  The Director has the authority to review petitioner’s request.  See 37 C.F.R. §2.146(a)(3).  The petition is granted. 

FACTS

A registration for the above referenced mark issued on December 9, 2003.  On June 19, 2009, petitioner filed a combined Trademark Act Section 8 affidavit or declaration of use or excusable nonuse and Section 15 affidavit of incontestability (combined Section 8 and 15 filing) in the name of Printers’ Service, Inc.[1]  15 U.S.C. §§1058 and 1065.  The combined Section 8 and 15 filing was accepted as filed.  On August 26, 2013, petitioner filed combined Trademark Act Section 8 affidavit or declaration of use or excusable nonuse and Section 9 renewal application (combined Section 8 and 9 filing) identifying petitioner as a Delaware corporation.  15 U.S.C. §§1058 and 1059.  The combined filing was accepted as filed. 

On November 25, 2015, petitioner filed a Section 7 Request for the United States Patent and Trademark Office (USPTO) to amend the place of incorporation for petitioner to identify petitioner as a New Jersey corporation not a Delaware corporation.  Petitioner stated: “Printers' Service, Inc., a New Jersey corporation, is the true owner of Registration No. 2790182, which was granted on December 9, 2003. However, at the time of the filing of the application, the applicant was inadvertently and mistakenly identified as a Delaware corporation. Printers' Service, Inc. was never a Delaware corporation.” Section 7 Request.  Petitioner also provided a copy of the certificate from the Department of State for the State of New Jersey showing petitioner as a New Jersey corporation.  Accordingly, the Section 7 request was granted, the Trademark database updated to identify petitioner as Printers’ Service, Inc., a New Jersey corporation and a new corrected certificate of registration issued on December 15, 2015.  This petition followed on August 31, 2016. 

Petitioner states that due to the error in initially identifying petitioner as a Delaware corporation when the application was filed, an error occurred in identifying the owner of the above registration in the combined Section 8 and 15 filing and the combined Section 8 and 9 filing as a Delaware corporation.  Petition.  Petitioner further declares that that the official entity and owner of the registration since the filing of the application was, and continues to be, Printers’ Service, Inc., a New Jersey corporation.  Petitioner maintains that the owner should have been identified in all filings as Printers' Service, Inc., a New Jersey corporation and requests that the records of the USPTO be updated to reflect this. 

DISCUSSION

The Director may exercise supervisory authority on petition in appropriate circumstances.  35 U.S.C. §2; 37 C.F.R. §2.146(a)(3); TMEP §1707.  In some cases, the Director will exercise supervisory authority even where there has been no clear error or abuse of discretion on the part of the USPTO when a petitioner can show that it has substantially complied with the requirements of the statute or rules.   See In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013); In re Carnicon Dev. Co., 34 USPQ2d 1541, 1543 (Comm’r Pats. 1992) (holding that an assertion of verified date of first use, coupled with statement of current method of use, interpreted as substantially in compliance with the minimum filing requirement for a statement of use for a verified statement that the "mark is in use in commerce.").  Based on the facts of this case, it is appropriate for the Director to exercise supervisory authority.  TMEP §1708. 

At the time the combined Section 8 and 15 filing and combined Section 8 and 9 filing were reviewed by Post Registration, the owner of the mark appeared to be Printers’ Service, Inc., a Delaware corporation. In view of this, the acceptance of the combined filings by the USPTO was proper.  Nonetheless, in light of the statements on petition that petitioner was never a Delaware corporation and that at all times petitioner was a New Jersey corporation, the Director finds that the errors in the combined Section 8 and 15 filing and the combined Section 8 and 9 filing are correctible errors.

In view of the information provided on petition and the information provided in petitioner’s Section 7 request, petitioner’s request that this ownership information be made of record is granted.  However, no other corrective action will be taken by the USPTO with regard to the combined filings.

DECISION

The petition is GRANTED.  It is acknowledged for the record that petitioner filed a request to correct the owner information in conjunction with the combined Section 8 and 15 filing submitted on June 19, 2009 and in the combined Section 8 and 9 filing submitted on August 26, 2013.

As a review of the records of the USPTO indicates that the owner information for the above referenced registration has been updated to properly reflect the owner of the mark as a New Jersey corporation, no further action will be taken on the file at this time.

/Dawnmarie D. Sanok/

Attorney Advisor

Office of the Deputy Commissioner

for Trademark Examination Policy

dawn-marie.sanok@uspto.gov

571-272-9577 (O)

For general and other useful information about trademarks, you are encouraged to visit the USPTO web site at http://www.gov.uspto.report/main/trademarks.htm