Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 2/6/2018

U.S. Registration Number  3265415

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on January 17, 2018.  The Section 9 portion of the combined filing can be granted.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

ISSUES PERTAINING TO SECTION 8 PORTION ONLY

The owner must submit a statement that clarifies the goods 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), (c).  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 that are different from the goods identified in the registration.  Specifically, the Section 8 Affidavit identifies the goods as “Magnets for medical purposes,” and the registration identifies the goods as “Magnets for medical purposes, namely, magnets for wellness purposes or magnets for therapeutic purposes.”  The identification of goods 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 in the registration, then the owner must specify the goods being deleted.  37 C.F.R. §2.161(e)(2); TMEP §1604.09(b).  Goods 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 10-year Section 8.

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

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, 1604.17(b).

DEFICIENCY SURCHARGE REQUIRED:  The owner must submit a $100 deficiency surcharge with its response to this Office action if the response is submitted online using the Trademark Electronic Application System (“TEAS”).  A $200 deficiency surcharge must be submitted if the response is submitted on paper.  37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).

/Rosalind Howard/

Rosalind Howard

Trademark Specialist

Post Registration

Phone 571-272-9363

Fax 571-273-9363

Rosalind.Howard@uspto.gov

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. For questions about the Office action itself, please contact the assigned specialist.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this registration will be placed in the official registration record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.