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: 2/19/2013

Registration Number  3127299

The Section 8 Affidavit, filed on February 8, 2013 is not accepted for the reason(s) set forth below.

REGISTRATION SELECTED FOR PILOT

This registration has been randomly selected to participate in a pilot program to assess the accuracy and integrity of the trademark register as to the actual use of the mark with the goods and/or services identified in the registration.  See 37 C.F.R. §§2.161(h)(2), 7.37(h)(2).

REQUIREMENTS OF PILOT

As part of the pilot program, the owner of the registration must submit proof of use of the registered mark for two additional goods/services per class.  37 C.F.R. §§2.161(h)(2), 7.37(h)(2).

Therefore, the owner must submit the following:

(1) Proof of current use of the registered mark in commerce for the following goods/services:

“Yoga benches” and “balance balls” in International Class 28

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The proof of use was in use in commerce during the relevant period for filing the 6-year Section 8.”  Id.

To demonstrate acceptable proof of use for goods, the owner must submit photographs that show the mark on the actual goods or packaging, or photographs of displays associated with the actual goods at their point of sale.  Acceptable proof of use for services includes signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.

SAMPLE 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 proof of use, during the relevant period for filing the 6-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

NOTE:  Please note that the declaration verifying proof of use for the pilot is slightly different from the standard specimen declaration; however, if a standard specimen declaration is received in response to this Office action, it will be deemed applicable to any submitted proof of use.

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.

NOTE REGARDING PILOT:  If a response to this Office action does not fully address the requirements of the pilot or includes a request to delete the goods/services identified for the pilot, the registration may be subject to further inquiry to verify the accuracy of the identification of goods/services in the registration.  See 37 C.F.R. §§2.161(h)(2), 7.37(h)(2).

Kimberly Krehely

/Kimberly Krehely/

Senior Attorney, Law Office 111

Phone:  571-272-9386

Email:  kim.krehely@uspto.gov

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at http://www.gov.uspto.report/teas/eTEASpageC.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:  It must be personally signed 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.  If a registrant 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 Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR 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/teas/eTEASpageE.htm.

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