UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 2/25/2011

Registration Number  2928536

The Sections 8 & 15 Combined Affidavit was received on January 18, 2011  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.

The specimen submitted with the Section 8 Affidavit is unacceptable because it does not show trademark use of the registered mark in commerce.  It appears to be signage or a picture of the registered mark, and does not show the mark actually used in commerce on the goods or in the sale or advertising of the services.  See 37 C.F.R. §2.56(c); TMEP §904.04(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 and/or 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 6-year Section 8/10-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.  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.

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Combined 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 6-year Section 8, that is, between the 5^th and 6^th 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

The following persons are authorized to sign a Combined Affidavit on behalf of the owner:

(1)   A person with legal authority to bind the owner;

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

(3)   An attorney as defined in 37 C.F.R. §11.1 who has actual or implied written or verbal power of attorney from the owner.

37 C.F.R. §2.161(b); TMEP §1604.08(a).

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 6^th year anniversary date on March 1, 2011, 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 6^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 6^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.

Sincerely,

Tamika Whitsey

TM Specialist

Post Registration Division

571-272-4321 office

571-273-4321 fax

tamika.whitsey@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.

PLEASE ENCLOSE THIS FORM WITH YOUR RESPONSE

**This form must be included with your response to ensure proper fee processing.**

Registration No.2928536 

The Post Registration Paralegal has determined that the amounts indicated below are outstanding:

$________ Section 8 affidavit filing fee (fee code 6205)

$_____ Section 8 affidavit grace period surcharge (fee code 6206)

$________ Section 8 affidavit deficiency surcharge (fee code 6207)

$________ Section 9 renewal application filing fee (fee code 6201)

$_____ Section 9 renewal application grace period surcharge (fee code 6203)

$________ Section 9 renewal application deficiency surcharge (fee code 6204)

$________ Section 15 affidavit filing fee (fee code 6208)

$________ Section 7 correction (registrant error) filing fee (fee code 6212)

$________ Section 7 amendment filing fee (fee code 6214)

$________ Section 7 issue new certificate of registration filing fee (fee code 6211)

$_100___ Deficiency surcharge Sec. 8—if response filed after March 1, 2011 (fee code 6207)

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