UNITED STATES PATENT AND TRADEMARK OFFICE
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U. S. APPLICATION SERIAL NUMBER: 76/538839
U. S. REGISTRATION NUMBER: 3,056,784
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*3056784* |
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CORRESPONDENCE ADDRESS:
Craig Phillips Dickinson Wright PLLC Suite 300 2600 West Big Beaver Troy MI 48084 |
RETURN ADDRESS:
Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SLIM LINE
APPLICANT/REGISTRANT: COLE KEPRO INTERNATIONAL, LLC
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ISSUE/MAILING DATE: May 15, 2019 |
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CORRESPONDENT’S REFERENCE/DOCKET NO: 50859-50
CORRESPONDENT’S EMAIL ADDRESS: cphillips@dickinsonwright.com
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PETITION TO DIRECTOR INQUIRY LETTER
This letter acknowledges receipt on October 4, 2018 of Cole Kepro International, LLC’s petition to the Director of the United States Patent and Trademark Office (Director) to review the decision set forth in the Office action dated April 7, 2018 regarding the above referenced registration. See 37 C.F.R. §§2.146(a)(2), 2.165; TMEP §§1604.18 et seq.
The petition is incomplete and you must provide an additional fee in order for the United States Patent and Trademark Office (USPTO) to consider your petition. Specifically, you must provide the following:
Petitioner must submit the required fee within thirty (30) days from the date of this letter to complete the petition. See 37 C.F.R. §2.146(c); TMEP §§1705.03, 1712.02(b)(ii).
FACTS
On August 8, 2016, petitioner filed a combined Trademark Act Section 8 declaration of use or excusable nonuse and Section 9 renewal application (combined filing). 15 U.S.C. §§1058(a), 1059(a); see 37 C.F.R. §§2.160(a), 2.182. In an Office action dated November 2, 2016, the Post Registration specialist refused the Section 8 portion of the combined filing because the specimen consisted of advertising material for goods and did not show use of the registered mark on the goods or on packaging for the goods. The Post Registration specialist also advised you that a $100 deficiency surcharge must be submitted if the response is submitted online using the Trademark Electronic Application System (“TEAS”).
In a May 2, 2017 response to the Office action, petitioner provided a substitute specimen. In a second Office action dated April 7, 2018, the Post Registration specialist maintained the refusal to accept the Section 8 portion of the combined filing because the substitute specimen was not acceptable to show use of the mark in commerce in connection with the identified goods. The Post Registration specialist also advised petitioner that if he or she disagreed with the refusal to accept the Section 8 portion of the combined affidavit that he or she may file a petition to the Director accompanied by a fee of $100 if filed using TEAS.
Petitioner filed the instant petition on October 4, 2018 requesting review of the Post Registration decision on April 7, 2018 and included the identical substitute specimen previously provided in the May 2, 2017 response. Petitioner provided arguments in favor of accepting the specimen submitted with the May 2, 2017 response and paid the required $100 petition fee. However, petitioner did not provide the required deficiency fee. The petition is therefore incomplete and the USPTO still needs the required fee before the petition can be considered. See 37 C.F.R. §2.146(d)(1), (d)(2)(ii); TMEP §1712.02(b)(ii).
DEFICIENCY FEE Required
You must submit a deficiency surcharge, in addition to the petition fee already paid. See TMEP §1604.12(c). This surcharge is required because the Section 8 affidavit portion of the combined filing was deficient due to an unacceptable specimen and no acceptable substitute specimen being filed prior to the expiration of the grace period. See TMEP §1604.12(c). The deficiency surcharge fee is $100 if submitted electronically through TEAS or $200 if submitted on paper. 37 C.F.R. §2.6(a)(20)-(21).
ADVISORY - PETITION LIKELY TO BE DENIED
Even if you timely submit the required deficiency fee, your petition will likely be denied.
When a Post Registration specialist continues the refusal to accept a Section 8 affidavit, the owner may file a petition for review of the action under 37 C.F.R. §2.146(a)(2) within six months of the issuance date. See TMEP §1604.18(a). The Director reviews the actions of the Post Registration staff on §8 affidavits, §71 affidavits, §9 renewal applications, and §7 amendments, to determine whether the judgment of the specialist was correct. See In re Umax Data Sys., Inc., 40 USPQ2d 1539, 1541 (Comm’r Pats. 1996) (announcing change in standard of review of petitions to review Post Registration decisions on §7 amendments).
The second Office action dated April 7, 2018 maintained and continued the refusal to accept the specimens supporting the Section 8 affidavit. The petition requesting review of the decision included arguments that the owner’s specimen submitted both with the combined filing and the May 2, 2017 response shows the registered mark in close proximity to the goods, shows information necessary to order the goods, and the owner’s specimen comprises point of sale materials.
This specimens remain unacceptable because in most cases including the telephone number and e-mail address alone will not transform mere advertising into point-of-sale displays even though it is common to sell products on-line or over the telephone. Although the telephone number, facsimile address, physical address and web page addresses are included, there are no accompanying special instructions for placing or accepting orders or information such as pricing information and other specification information allowing one to place an order. Therefore, petitioner has failed to provide an acceptable substitute specimen in support of the Section 8 portion of the combined filing.
If you wish to pursue this petition, despite the fact that it will likely be denied, you must submit the deficiency fee associated with the substitute specimen within thirty (30) days from the mailing date of this letter. See TMEP §1705.03.
If the United States Patent and Trademark Office does not receive a deficiency fee within thirty (30) days, the petition will be denied without consideration on the merits and the registration will be cancelled in due course. Id. The petitioner will not have met the requirements for filing a petition. Id.
To respond to this letter online, please submit a petition form at http://teas.uspto.gov with the required fee.
Please contact me if you have any questions.
Sincerely,
/Judy Grundy/
Attorney Advisor
Office of the Deputy Commissioner
for Trademark Examination Policy
judy.grundy@uspto.gov
571-272-8501
How to respond to this Office action:
You are encouraged to respond to this Office action via the “Response to Petition to Director Inquiry Letter” online response form available at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours before responding if you received notification of the Petition Inquiry by e-mail. For technical assistance with the online form, please e-mail TEAS@uspto.gov.
To check the status of your application at any time, visit the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.
For general and other useful information about trademarks, you are encouraged to visit the USPTO web site at http://www.gov.uspto.report/main/trademarks.htm.