Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 12/12/2015

U.S. Registration Number  3007654

The Sections 8 & 15 Combined Affidavit was received on October 16, 2015.  The Section 15 portion of the Combined Affidavit can be acknowledged.  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 shows the mark used on or in connection with goods that are different from those identified in the registration.  See In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm’r Pats. 1993).  Specifically, the specimen shows use for woodchip soaker.  The goods and services in the registration comprise the following: household utensils, namely, spatulas, utensils for barbeques, namely, tongs, grillbrushes, basting brushes, non-electric grill woks, grill grids, grill baskets, grill fishbaskets, kabob racks, kabob skewers, corn cob holders, grill cleaners, namely,grill cleaning brushes, fly swatters.  The specimen must be used on or in connection with the goods listed in the registration.  TMEP §1604.12(a).

Therefore, the owner must submit the following:

(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods 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 goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq. 

If submitting a webpage, brochure, or catalog (printed or web) or similar specimen for Trademark goods these are acceptable as a display associated with the goods if it:

1. contains a picture or textual description of the identified goods
2. shows the mark sufficiently near the picture or description of the identified goods to associate the mark with the goods
3. provide information necessary to order the identified goods; Acceptable methods of ordering (i.e. shopping cart, order forms, Call 1-800-xxx-xxxx to Order Now or e-mail your order (an e-mail address may be an acceptable means of ordering if the address itself indicates that orders may be placed or are accepted via e-mail (e.g., order@t.markey.com)). Trademark Specialist will not visit website.

The mere inclusion of a phone number, Internet address, and/or mailing address on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods.  There must be an offer to accept orders or instructions on how to place an order.  In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) (fact sheet brochures held not to qualify as a catalog under Lands’ End, where the specimen included no information as to how to order the goods).  

TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)        

CATALOG REFERRENCE 904.03(H) and 904.03(I)-904.03((i)A-C3)

DECLARATION (Please include the bold wording into the response Declaration)

The following language is required to support use of any substitute specimen provided, if properly signed and dated:

“The substitute specimen was in use in commerce 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 statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

                                                                        __________________________                   

Signature of Authorized Person

__________________________

Provide Name & Position  

__________________________

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).

Response Application Statement for Section 8/9 Renewal

The Registrant/Legal Representative must submit a substitute specimen along with a SPECIMEN DESCRIPTION: A specimen description should describe the item being submitted as the specimen; for the goods in the registration for which the mark is still in use in commerce.

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 October 18, 2015, 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 after date of 10^th year anniversary.  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.

How to respond to this Office Action:

You may submit a formal response via: Trademark Electronic Application System (TEAS),  regular mail to: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451, or facsimile, the response cover sheet must include the following information: registration number, office location 'Post Registration', and name of Trademark Specialist to expedite forwarding.  Responding to office action via e-mail is not acceptable.

How to find Post Registration Response Application                                

Go to                                                                                                                                      

1) www.USPTO.GOV                                                                                                            

2) Choose  Trademarks                                                                                           

3) Under Tools & Links click (Filing online)

4)  Proceed to #8 Registration Maintenance/Renewal/Correction Forms

5) Proceed to #11 Response Application to Post Registration Office Action (click) follow prompts to complete application

 Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at http://www.gov.uspto.report/teas/eTEASpageD.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.

Should you need assistance for the following: Navigating through Post Registration TEAS Response applications, USPTO website, or general Trademark questions please contact: TrademarkAssistanceCenter@uspto.gov, or telephone 571-272-9250 or 1-800-786-9199. FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED TRADEMARK SPECIALIST.

CHECK THE STATUS OF THE REGISTRATION OR REVIEW INCOMING & OUTGOING CORRESPONDENCE

Go to

1) www.USPTO.GOV

2) Choose Trademarks

3) Under Tools & Links

4) Proceed to Check Status or view Documents [TSDR]

5) Click TSDR (use drop arrow to insert the application serial/registration number choose status or document)

6) You may print any document(s) in this field

TO UPDATE CORRESPONDENCE AND OR ATTORNEY/DOMESTIC REPRESENTATIVE FORMS

Go to

1) www.USPTO.GOV

2) Choose Trademarks

3)  Under Tools & Links click (Filing online)

4) Proceed to #5 CORRESPONDENCE AND ATTORNEY/DOMESTIC REPRESENTATIVE FORMS follow prompts to complete application

Please note USPTO is tasked with preserving the integrity of its administrative records and providing the public with a complete registration file; please submit a Response filing.

To expedite inquiries about this office action, please contact the undersigned Trademark Specialist via e-mail.

WARNING

Because there are procedural, tactical, and financial considerations involved regarding your questions, you may wish to hire an attorney specializing in trademark or intellectual property law for a legal opinion.  For attorney referral information, you may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm or a local telephone directory.  The USPTO cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application. For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations. These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document. Many solicitations require that you pay “fees.”

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation. All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.” For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.

/Dawn Hembry/

Dawn Hembry

Dawn.Hembry@USPTO.GOV

Post Registration Division

571\272-9506(Office)

571\273-9506(Fax)