Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 10/18/2014

U.S. Registration Number  2893755

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on October 6, 2014  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.

SPECIMEN class 035

The Trademark Specialist could not determine if the specimen for the above mentioned class represented; Providing consumer information on machinery… or retail outlets…

The specimen submitted with the Section 8 Affidavit is unacceptable because it does not reference the services specified in the registration. 

A specimen for a service mark must show use of the mark “in the sale or advertising of services.”  See Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(2).  Specimens for service marks must show an association between the mark and the services identified in the registration.  In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997).  If the specimen does not show the mark with reference to, or association with, the services, the specimen fails to show service mark usage.  See In re DSM Pharms., Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008).

Therefore, the owner must submit the following:

(1) A substitute specimen showing current use of the registered mark in commerce for each class of services specified in the registration; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

When presenting a website specimen, you must submit a screen shot of web page for viewing; the website must show the registered trademark and information about the services provided in relation to the registered trademark.  Trademark Specialist will not visit website.

SERVICE MARK

To show service mark usage, the specimens must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source. 1301.04(a)

Specimens for service marks must show an association between the mark and the services identified in the registration.

DECLARATION TO SIGN AND DATE

The following language is required to support use of any substitute specimen provided, if properly signed and dated:

“The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.”

Renewal of the registration is requested.

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 Combined Section 8 Affidavit & Section 9 Renewal Application 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 §§804.04 and 1604.08(a).

Response Application Statement for Section 8/9 Renewal

The Registrant/Legal Representative must submit a substitute specimen along with a SPECIMEN DESCRIPTION: A specimen description should describe the item being submitted as the specimen; for the services in the registration for which the mark is still in use in commerce.

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 and/or expiration of the registration.  37 C.F.R. §§2.163(b)-(c) and 2.185(a)(2); TMEP §§1604.16, 1604.17(b), and 1606.13(b).

DEFICIENCY SURCHARGE:  The owner must submit a $100 deficiency surcharge if its response to this Office action is received after the expiration of the grace period, i.e., after April 12, 2015.  37 C.F.R. §§2.6, 2.164(a)(2) and 2.185(a)(2).

How to respond to this Office Action:

(ADVISORY NOTE:MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial/registration number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.)

You may submit a formal response via: Trademark Electronic Application System (TEAS),  regular mail to: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451, or facsimile, the response cover sheet must include the following information: registration number, office location 'Post Registration', and name of Trademark Specialist to expedite forwarding.  Responding to office action via e-mail is not acceptable.

How to find Post Registration Response Application  

Go to                                                                                                 

1) www.USPTO.GOV                                                     

2) under title Trademarks

3) click TEAS (file forms on line)                

4) #8 Registration Maintenance/Renewal/Correction Forms (double click)

5) scroll down to #11 Response Application to Post Registration Office Action (double click) follow prompts to complete application

Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at http://www.gov.uspto.report/teas/eTEASpageD.htm.  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:  The response must be personally signed or the electronic signature manually entered by (1) an individual registrant; (2) someone with legal authority to bind registrant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent registrant. 

The filing date of a document with the Office is the date the document is received in the Office.  37 C.F.R. §2.195(a); TMEP §§303 and 303.01.  However, if a “certificate of mailing” by first class mail or a “certificate of facsimile transmission” under 37 C.F.R. §2.197 is added to the response and the procedures in 37 C.F.R. §§2.195(c) and 2.197 are satisfied, then the document will be considered timely filed if the document is mailed or transmitted prior to expiration of the response time period regardless of whether it was received in the Office after the response time period.  TMEP §§305.02 and 306.05 et seq.

Certificate of Mailing under 37 C.F.R. §2.197:

I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail with postage paid in an envelope addressed to:  Commissioner for Trademarks, P.O. Box, 1451, Alexandria, VA 22313-1451, on the date shown below.

____________________________

Signature

____________________________

Typed or Printed Name

____________________________

Date

Certificate of Facsimile transmission under 37 C.F.R. §2.197:

I hereby certify that this correspondence is facsimile transmitted to the United States Patent and Trademark Office on the date shown below.

____________________________

Signature

____________________________

Typed or Printed Name

____________________________

Date

Should you need assistance for the following: Navigating through Post Registration TEAS Response applications, USPTO website, or general Trademark questions please contact: TrademarkAssistanceCenter@uspto.gov, or telephone 571-272-9250 or 1-800-786-9199. FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED SPECIALIST.

CHECK THE STATUS OF THE REGISTRATION OR REVIEW INCOMING & OUTGOING CORRESPONDENCE

Go to

1) www.USPTO.GOV

2) POPULAR LINKS

3) Trademarks: Check Status or view Documents [TSDR]

4) Use drop arrow to pull down US Registration No. enter your (7) digits registration number, click status or document

5) You may print any document(s) in this field.

TO UPDATE CORRESPONDENCE AND OR ATTORNEY/DOMESTIC REPRESENTATIVE FORMS

Go to

1) www.USPTO.GOV

2) under title Trademarks

3)  click on Trademark Electronic Application System (TEAS)

4) #5 CORRESPONDENCE AND ATTORNEY/DOMESTIC REPRESENTATIVE FORMS (double click)

Please note USPTO is tasked with preserving the integrity of its administrative records and providing the public with a complete registration file; please submit a Response filing.

To expedite inquiries about this office action, please contact the undersigned Trademark Specialist via e-mail.

WARNING

Because there are procedural, tactical, and financial considerations involved regarding your questions, you may wish to hire an attorney specializing in trademark or intellectual property law for a legal opinion.  For attorney referral information, you may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm or a local telephone directory.  The USPTO cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

       Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application. For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION: Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations. These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document. Many solicitations require that you pay “fees.”

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation. All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.” For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.

/Dawn Hembry/

Dawn Hembry

Dawn.Hembry@USPTO.GOV

Post Registration Division

571\272-9506(Office)

571\273-9506(Fax)