UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 POST REGISTRATION OFFICE ACTION

 

 

ISSUE/MAILING DATE: 1/19/2011

Registration Number  2977605

 

The Section 8 Affidavit, filed on December 16, 2010, is not accepted for the reason(s) set forth below.

 

The specimen submitted with the Section 8 Affidavit is unacceptable because it shows the mark used on or in connection with goods and/or services 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 a gift box of an auto loading car CD player with AM/FM 2-Band Radio and Detachable Front Panel.  The goods and services in the registration comprise the following:  12-volt automotive audio and video equipment, namely, DVD players, video monitors, audio speakers, and amplifiers.  The specimen must be used on or in connection with the goods and/or services 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 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.”  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 Section 8 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 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 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 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 July 26, 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. 2977605 

 

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 July 26, 2011 (fee code 6207)

                                                                                                     Date