Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 10/25/2017

U.S. Registration Number  2949257

The Section 7 Amendment submitted on September 20, 2017 is not accepted for the reasons set forth below.

The proposed amendment to the mark would materially alter the character of the mark and thus cannot be accepted.  15 U.S.C. §1057(e); 37 C.F.R. §2.173(d).  A registered mark can be amended only if the change does not alter the character and commercial impression of the mark, i.e., the change creates essentially the same impression as the original mark.  In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996); TMEP §1609.02(a).

The owner seeks to amend the mark in the registration from “The mark consists of the words "SHIELD SECURITY" to the left of a stylized door knob with a lock design. The letter "C" in "SECURITY" has an underline beneath it.” to “The mark consists of the words "SHIELD SECURITY" to the left of a stylized shield design. The letter "C" in "SECURITY" has an underline beneath it.”  The proposed amendment would result in a mark with a different visual impression from that of the original mark, i.e., the two marks do not appear as essentially the same mark.  Accordingly, the Section 7 Amendment is not accepted.

To verify the contents of the Section 7 Amendment and specimen(s), as well as any submitted corrections or further amendments, the owner may submit the following statement and declaration under 37 C.F.R. §2.20, properly signed and dated:

The owner was using the amended mark in commerce on or in connection with the goods and/or services in the registration when the Section 7 Amendment was filed as evidenced by the specimen submitted.

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 owner has six months from the issuance date of this letter to respond to all the issues raised in this letter.  In order to expedite the processing of your Section 7 Amendment, the early submission of a response to this letter is encouraged.  If a complete response is not received in the Office within this time period, then the Section 7 Amendment will be considered abandoned.  37 C.F.R. §2.176.  The fee for filing the Section 7 Amendment will not be refunded.

/Burnie Gillis/

Burnie Gillis

Trademark Specialist Post Registration

Tel #571-272-9526

Fax #571-273-9526

Burnie.Gillis@uspto.gov

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp.  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. For questions about the Office action itself, please contact the assigned specialist.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this registration will be placed in the official registration record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner 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 Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status 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/trademarks/teas/correspondence.jsp.