Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER:

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

 POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 3/16/2015

U.S. Registration Number  3038904

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on February 23, 2015.  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:

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.

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 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

The following persons are properly authorized to sign a Section 8 Affidavit on behalf of the owner:

(1)             A person with legal authority to bind the owner (e.g., a corporate officer or general partner);

(2)             A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or

(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).

ENTITY:

The owner is listed on the registration as an individual United States citizen.  The affidavit proposes a change of the entity to “other.  An individual applicant must  set forth the country of which he or she is a citizen.

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 January 10, 2016, whichever is later.  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, 1604.17(a).

DEFICIENCY SURCHARGE INFORMATION:  A $100 deficiency surcharge must be submitted if the response to this Office action is received by the Office January 10, 2016.  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).  (Note:  This only applies when the response time deadline above falls after the 10^th year anniversary date.)

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.

/Deborah Y. Ahmed/

Deborah Y. Ahmed

Trademark Specialist

Post Registration Division

571 272-9122

Deborah.Ahmed@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.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) the individual owner; (2) someone with legal authority to bind the owner (e.g., a corporate officer or general partner); or (3) an authorized attorney, if one is appointed to represent the owner.  If the 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 complete 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.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED SPECIALIST.