Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 POST REGISTRATION OFFICE ACTION

 

 

Registration Number 2868567

 

The Sections 8 & 15 Combined Affidavit submitted on August 2, 2010, cannot be accepted or acknowledged for the reasons set forth below.

 

Ownership

 

The party who filed the Combined Affidavit must establish its ownership of the subject registration.  The Trademark Act requires the current owner of the registration to file the Combined Affidavit.  15 U.S.C. §§1058 and 1065; 37 C.F.R. §§2.161(a), 2.167(a) and 3.73(b); TMEP §§1604.07(a) and 1605.04.  Office records do not show clear chain of title in the party who filed the Combined Affidavit.

 

Office records show clear chain of title to the registration in Sinex Aviation Technologies Corporation.  However, the party who filed the Combined Affidavit is identified as EMPOWERMX. 

 

The party who filed the Combined Affidavit must establish its current ownership of the registration.  15 U.S.C. §§1058, 1065; 37 C.F.R. §§2.161(a), 2.167(a), 3.73(b); See TMEP §§1604.07(a), 1605.04.  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 Combined Affidavit.  37 C.F.R. §3.73(b); TMEP §502.01.  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.

 

Please note that if the party who filed the Combined 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.  There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.  TMEP §1604.07(a). 

 

If the Combined 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, the true owner may (1) correct the Combined Affidavit to reflect current ownership or (2) file a new Combined Affidavit with a new fee.  The fee for filing a new Combined Affidavit is $300 per class.  37 C.F.R. §2.6.  If the new Combined Affidavit is filed during the six-month grace period, the owner must pay the filing fee for the Combined 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.  37 C.F.R. §2.6.

 

If the Combined Affidavit was not filed in the name of the owner of the registration and there is no time remaining in the grace period, the true owner may correct the Combined Affidavit to reflect current ownership with payment of the deficiency surcharge, but may not file a new Combined Affidavit.  15 U.S.C. §1058.  The deficiency surcharge is $100.  37 C.F.R. §2.6.

 

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.

 

 

 

 

 

 

/Michael McMillan/

TM SPECIALIST

POST REGISTRATION UNIT

OFC: 571-272-9541

FAX:  571-273-9541

 

 

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.