Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 POST REGISTRATION OFFICE ACTION

Registration Number  2755831

Your response to the outstanding Office action regarding the Section 8 Affidavit was timely received on September 23, 2009.  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.

Specimen Issue

The Section 8 Affidavit cannot be accepted because the owner must submit (1) a substitute specimen showing current use of the registered mark on or in connection with the services in the registration, and (2) a statement that the substitute specimen was in use in commerce during the relevant period for filing the 6-year Section 8.  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.161(g)(1); TMEP §1604.12(c).

The specimen of record is unacceptable to show service mark use because it does not reference the services.  Where a mark is used in advertising the services, the specimen must show an association between the mark and the services in the registration.  A specimen that shows only the mark, with no reference to the services either on the specimen or in descriptive wording in the mark, does not show service mark usage.  See In re Adair, 45 USPQ2d 1211 (TTAB 1997); TMEP §§1301.04(b) and (c).

Examples of acceptable specimens for services include signs, brochures, or advertisements that show the mark used in the sale or advertising of the services.  TMEP §1301.04 et seq.

Specimen Declaration

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 5^th and 6^th 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

.Additionally, the deficiency surcharge fee was not submitted with the response received on September 23, 2009. 

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.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16 and 1604.17(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 August 26, 2009.  37 C.F.R. §§2.6 and 2.164(a)(2).

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) and 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(a)(2) and 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). 

Sincerely,

/dda/

Dana D. Austin

Dana D. Austin

Trademark Specialist

Post Registration Division

(571) 272-9536 (Direct Line)

(571) 273-9536 (Fax)

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.