UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION
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U.S. REGISTRATION NO. 2743792
REGISTRANT: OTTO INTERNATIONAL (USA), LLC
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CORRESPONDENT’S ADDRESS: |
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MARK: BOMBAY KIDS
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CORRESPONDENT’S REFERENCE/DOCKET NO. 662026006000
CORRESPONDENT’S EMAIL ADDRESS: |
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CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER:
http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp
ISSUE/MAILING DATE: 5/21/2014
U.S. Registration Number 2743792
Your response to the outstanding Office action regarding the Section 8 Affidavit was timely received on February 10, 2014. After consideration of the response and the facts of record, the refusal to accept the Section 8 Affidavit is maintained for the reason(s) set forth below. The registration will be cancelled in due course.
The Section 8 Affidavit cannot be accepted because discontinuance from the market for an indefinite period in order to perform ordinary business practices does not constitute special circumstances.
The explanation of special circumstances of record appears to indicate that the nonuse was within the control of the owner in this case. Specifically, the owner has indicated that it is not currently using the mark because “voluntary petition for reorganization under Chapter 11 and work to develop a number of items to be sold.”
For a proper claim of excusable nonuse, the owner must show that (1) the nonuse is due to special circumstances beyond the owner’s control, and (2) the nonuse does not reflect an intention to abandon the mark. In re Moorman Manufacturing Co., 203 USPQ 712 (Comm’r Pats. 1979); 37 C.F.R. §2.161(f)(2); TMEP §1604.11.
If you disagree with this refusal to accept the Section 8 Affidavit, you may file a petition to the Director to review this decision. 37 C.F.R. §§2.146(a)(2), 2.165; TMEP §§1604.18 et seq. The petition must be filed within six months from the issuance date of this letter and be accompanied by a fee of $100. 37 C.F.R. §§2.6, 2.146(c), 2.165(b). Any facts to be proven on petition must be in the form of an affidavit or declaration under 37 C.F.R. §2.20; and signed by someone with firsthand knowledge of the facts to be proved. 37 C.F.R. §2.146(c).
/Burnie Gillis/
Burnie Gillis
Trademark Specialist
Post Registration
Tel #571-272-9526
Fax #571-273-9526
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration. For technical assistance with online forms, e-mail TEAS@uspto.gov.
WHO MUST SIGN THE RESPONSE: It must be personally signed by (1) the individual owner; (2) someone with legal authority to bind the owner (e.g., a corporate officer or general partner); or (3) an authorized attorney, if one is appointed to represent the owner. If the owner is represented by an attorney, the attorney must sign the response.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED SPECIALIST.