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: 2/28/2018

U.S. Registration Number  3402206

The Combined Section 8 Affidavit & Section 9 Renewal Application submitted on January 29, 2018, cannot be accepted for the reasons set forth below.

COMBINED SECTION 8 AFFIDAVIT AND SECTION 9 RENEWAL ISSUES

       I.          OWNER DIFFERENT

The party who filed the Section 8 Affidavit must establish its ownership of the registration.  Trademark Act Section 8 requires the current owner of the registration to file the Section 8 Affidavit.  15 U.S.C. §1058; 37 C.F.R. §§2.161(a), 3.73(b); TMEP §1604.07(a).  Office records do not show clear chain of title in the party who filed the Section 8 Affidavit.

Office records show clear chain of title to the registration in Georgetown University (United States, CONGRESSIONAL-CHARTERED CORPORATION).  However, the party who filed the Section 8 Affidavit is identified as Georgetown University (District of Columbia, CONGRESSIONAL-CHARTERED CORPORATION). 

The party who filed the Section 8 Affidavit must establish its current ownership of the registration.  15 U.S.C. §1058; 37 C.F.R. §2.161(a); TMEP §1604.07(a).  Ownership can be established by satisfying one of the following:  (1) recording the appropriate documents with the Assignment Services Branch of the Office; or (2) submitting actual evidence showing the transfer of title to the party who filed the Section 8 Affidavit.  37 C.F.R. §3.73(b); TMEP §§502.01, 1604.07(b).  More information about these two methods for establishing ownership of the registration appears directly below. 

(1)   If the present owner chooses to record the appropriate documents with the Assignment Services Branch, the documents must be recorded before expiration of the time for filing a response.  In addition, you must notify the undersigned when the documents have been recorded.  For information regarding recording assignments, name changes and mergers, please visit the webpage http://www.gov.uspto.report/web/trademarks/workflow/assign.htm and see TMEP §§503 et seq.  For specific questions, please contact the Assignment Services Branch at 571-272-3350.  To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov.  To record an assignment, the owner must submit the assignment documents along with a cover sheet and the required fee.  37 C.F.R. §§3.28, 3.31.  The fees for recording an assignment are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document.  37 C.F.R. §2.6(b)(6).  The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.  37 C.F.R. §3.25.

(2)   If the present owner prefers to submit actual evidence of ownership directly to the undersigned trademark specialist, copies of the actual documents transferring title or a statement explaining the valid transfer of legal title must be submitted.  If submitting a statement of facts explaining the transfer of title, this statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §3.73; TMEP §§502 et seq.

Acceptance Notice Issued in Name of Owner of Record

Please note that if the party who filed the Section 8 Affidavit submits sufficient evidence to establish ownership but the ownership documents are not recorded with the Assignment Services Branch before expiration of the time to file a response, then the acceptance notice will issue in the name of the owner of record.  37 C.F.R. §3.85; TMEP §502.02.  An updated acceptance notice will not issue if ownership documents are recorded following the expiration of the time to file a response; however, the new owner may file a request for a new certificate in the new owner’s name, along with the required fee.  See 37 C.F.R. §2.6(a)(8); TMEP §502.03.     

There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.  TMEP §1604.07(a).

Information for Section 8 Affidavits Not Filed in the Name of the Owner

If the Section 8 Affidavit was not filed in the name of the owner of the registration and there is time remaining in the statutory filing period, including grace period, when responding to this Office action, the true owner may (1) submit a correction of the name in the filing of record or (2) file a complete new Section 8 Affidavit with a new specimen and filing fee.  Please note that a deficiency surcharge is required if the Section 8 Affidavit was submitted before the grace period began and a correction of the name in the filing of record is received during the grace period.  37 C.F.R. §2.164(a)(1); TMEP §1604.17(a).  The deficiency surcharge is $100 if submitted online using the Trademark Electronic Application System (“TEAS”) and $200 if submitted on paper.  37 C.F.R. §2.6.  The fee for filing a Section 8 Affidavit is $125 per class for filings submitted through TEAS and $225 per class for filings submitted on paper.  37 C.F.R. §2.6.  If the new Section 8 Affidavit is filed during the six-month grace period, the owner must pay the filing fee for the Section 8 Affidavit and the grace period fee.  15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161; TMEP §1604.07(a).  The grace period fee is $100 per class for filings submitted through TEAS and $200 per class for filings submitted on paper.  37 C.F.R. §2.6. 

If the Section 8 Affidavit was not filed in the name of the owner of the registration and there is no time remaining in the grace period when responding to this Office action, the true owner may submit a correction of the name in the filing of record with payment of the deficiency surcharge, but may not file a new Section 8 Affidavit.  15 U.S.C. §1058. 

Confirmation Required: Affidavit Signed by Authorized Signatory

If a correction of the name in the filing of record is submitted at any time, the true owner must confirm that the original affidavit was signed by a person properly authorized to sign on behalf of the owner.  37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).  If the original affidavit was not signed by an authorized signatory, the owner must also submit a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, attesting to the use or excusable nonuse of the mark during the relevant period for filing the 10-year Section 8.

    II.          ADVISORY - PERSONS WHO CAN SIGN RESPONSES

Responses to Office actions must be properly signed.  37 C.F.R. §§2.163(b), 2.193(e)(2); TMEP §611.03(b).  When an owner is represented by an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §611.03(b).  The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent owners located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.  See 37 C.F.R. §§2.17(e), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §602.  Attorneys who fail to meet these requirements, as well as non-attorneys, are generally not permitted to represent owners in trademark matters before the USPTO; and thus, they may not sign responses.  See 5 U.S.C. §500(b), (d); 37 C.F.R. §11.14(a)-(c), (e); TMEP §§602, 602.02, 608.01. 

Where an owner is represented by an attorney, and then later retains a different attorney from a different firm, the newly retained attorney may not sign responses until the owner files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

Where an owner is not represented by an attorney, the response must be signed by the individual owner or someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq.  In the case of joint owners, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

   III.          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 10^th year anniversary date on March 25, 2018, whichever is later.  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, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

   IV.          ADVISORY

If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the owner 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.

/Tracy Welch/

Tracy Welch

Paralegal Specialist

OFC OF TM SVC

ITU/Divisional Unit

571-272-9631

571-273-9631 fx

tracy.welch@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.