Offc Action Outgoing

PHYSIO-CONTROL

Behr GmbH & Co.

Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

    REGISTRATION NO:       2799673

 

    REGISTRANT:       Behr GmbH & Co.

 

 

  October 15, 2009     

76303448

    CORRESPONDENT ADDRESS:

  Paul D. Strain and Norm J. Rich

  Foley & Lardner LLP

  3000 K Street, N.W., Suite 600

  WASHINGTON DC 20007-5143

 

RETURN ADDRESS: 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

 

 

 

    MARK:       PHYSIO-CONTROL

 

 

 

    CORRESPONDENT’S REFERENCE/DOCKET NO:   016906-0225        

 

    CORRESPONDENT EMAIL ADDRESS: 

 

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 Registration Division.

4. Your telephone number and e-mail address.

 

 

 

 POST REGISTRATION OFFICE ACTION

 

 

 

Registration Number  2799673

 

The Section 8 Affidavit, filed on September 10, 2009, is not accepted for the reason(s) set forth below.

 

The owner must submit a statement that clarifies the goods and/or services in the registration for which the mark is still in use in commerce.  15 U.S.C. §1058(b); 37 C.F.R. §2.161(e)(1); TMEP §1604.09(a).  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.

 

The Section 8 Affidavit of record lists goods and/or services that are different from the goods and/or services identified in the registration.  Specifically, the Section 8 Affidavit identifies the goods and/or services as “land vehicle panels comprising dash controls,” and the registration identifies the goods and/or services as “land vehicle instrument panels comprising dash controls.”  The identification of goods and/or services set forth in the Section 8 Affidavit cannot be different from or broader in scope than those listed in the registration.

 

If the Section 8 Affidavit is intended to cover fewer than all the goods and/or services in the registration, then the owner must specify the goods and/or services being deleted.  37 C.F.R. §2.161(e)(2).  Goods and/or services omitted from a Section 8 Affidavit will be deleted from the registration.

 

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.

 

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

 

The following persons are authorized to sign a Section 8 Affidavit on behalf of the owner:

(1)   A person with legal authority to bind the owner;

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

(3)   An attorney as defined in 37 C.F.R. §11.1 who has actual or implied written or verbal power of attorney from the owner.

37 C.F.R. §2.161(b); TMEP §1604.08(a).

 

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 6th year anniversary date on December 30, 2009, 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)-(c); 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 date of 6th year anniversary.  37 C.F.R. §§2.6 and 2.164(a)(1).

 

 

 

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the registrant may avoid cancellation of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §2.163(c).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §2.161(d)(1)-(2).  For more information about this, please contact the undersigned.

 

 

 

Sincerely,

 

Tamika Whitsey

TM Specialist

Post Registration Division

571-272-4321 office

571-273-4321 fax

tamika.whitsey@uspto.gov

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINER.

 

PLEASE ENCLOSE THIS FORM WITH YOUR RESPONSE

**This form must be included with your response to ensure proper fee processing.**

 

Registration No.   2799673

 

The Post Registration Paralegal has determined that the amounts indicated below are outstanding:

 

$________ Section 8 affidavit filing fee (fee code 6205)

 

$_____ Section 8 affidavit grace period surcharge (fee code 6206)

 

$________ Section 8 affidavit deficiency surcharge (fee code 6207)

 

$________ Section 9 renewal application filing fee (fee code 6201)

 

$_____ Section 9 renewal application grace period surcharge (fee code 6203)

 

$________ Section 9 renewal application deficiency surcharge (fee code 6204)

 

$________ Section 15 affidavit filing fee (fee code 6208)

 

$________ Section 7 correction (registrant error) filing fee (fee code 6212)

 

$________ Section 7 amendment filing fee (fee code 6214)

 

$________ Section 7 issue new certificate of registration filing fee (fee code 6211)

 

$_100___ Deficiency surcharge Sec. 8—if response filed after December 30, 2009 (fee code 6207)

                                                                                                     Date

 

 


uspto.report is an independent third-party trademark research tool that is not affiliated, endorsed, or sponsored by the United States Patent and Trademark Office (USPTO) or any other governmental organization. The information provided by uspto.report is based on publicly available data at the time of writing and is intended for informational purposes only.

While we strive to provide accurate and up-to-date information, we do not guarantee the accuracy, completeness, reliability, or suitability of the information displayed on this site. The use of this site is at your own risk. Any reliance you place on such information is therefore strictly at your own risk.

All official trademark data, including owner information, should be verified by visiting the official USPTO website at www.uspto.gov. This site is not intended to replace professional legal advice and should not be used as a substitute for consulting with a legal professional who is knowledgeable about trademark law.

© 2024 USPTO.report | Privacy Policy | Resources | RSS Feed of Trademarks | Trademark Filings Twitter Feed