To: | SDT, Inc. (tgwynne@whitakerchalk.com) |
Subject: | TRADEMARK REGISTRATION NO. 2862407 - PDX - N/A |
Sent: | 01/25/11 10:33:43 AM |
Sent As: | PRG@uspto.gov |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION
REGISTRATION NO. 2862407
REGISTRANT: SDT, Inc.
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CORRESPONDENT’S ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageC.htm
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MARK: PDX
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CORRESPONDENT’S REFERENCE/DOCKET NO. N/A
CORRESPONDENT’S EMAIL ADDRESS: |
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ISSUE/MAILING DATE: 1/25/11
Registration Number 2862407
The Sections 8 & 15 Combined Affidavit submitted on 7-08-2010, cannot be accepted or acknowledged for the reasons set forth 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).
Information for Combined Affidavits Not Filed in the Name of the Owner
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, 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 Combined Affidavit with a new specimen and filing fee. Please note that a deficiency surcharge is required if the Combined 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. 37 C.F.R. §2.6. If the owner opts to file a complete new affidavit and fee, this must be explicitly stated in the filing; otherwise, it will be treated as a correction of the owner name. The fee for filing a 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 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 Combined 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), 2.167, 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, that affirms the representations in the original affidavit.
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 6-year Section 8, that is, between the 5th and 6th year anniversary after the date of registration or the date of publication under 15 U.S.C. §1062 .
The mark has been in continuous use in commerce for five (5) consecutive years after the date of registration or the date of publication under 15 U.S.C. §1062(c), and is still in use in commerce on or in connection with all goods and/or services listed in the existing registration. There has been no final decision adverse to the owner’s claim of ownership of such mark for such goods and/or services, or to the owner’s rights to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the United States Patent and Trademark Office or in the courts.
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
Sharon Roberts
Post Registration Specialist
sharon.roberts@uspto.gov
571-272-9549-office
571-273-9549-fax
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.
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.