Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 2/9/2012

Registration Number  2949322

Your response to the outstanding Office action regarding the Section 8 Affidavit was timely received on September 23, 2011.  After consideration of the response and the facts of record, the refusal to accept the Section 8 Affidavit is maintained for the reason(s) set forth below.  The registration will be cancelled in due course.

The Section 8 Affidavit cannot be accepted because office records show THE CRICKET COMPANY, a California Corporation as the owner of the registration.  Although the party who filed the Section 8 Affidavit has submitted sufficient evidence to show its ownership of the registration, this change in ownership does not appear to have been recorded with the Assignment Services Branch. 

The acceptance notice for the Section 8 Affidavit will issue in the name of the owner of record unless (1) ownership documents are recorded with the Assignment Services Branch before expiration of the time to file a response to this Office action, and (2) the undersigned has been timely notified of the recordal within the response time period.  37 C.F.R. §3.85; TMEP §§502.02, 1604.07(c). 

To expedite recordation, the owner is encouraged to file the request 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.

If you disagree with this refusal to accept the Section 8 Affidavit, you may file a petition to the Director to review this decision.  37 C.F.R. §§2.146(a)(2), 2.165; TMEP §§1604.18 et seq.  The petition must be filed within six months from the issuance date of this letter and be accompanied by a fee of $100.  37 C.F.R. §§2.6, 2.146(c), 2.165(b).  Any facts to be proven on petition must be in the form of an affidavit or declaration under 37 C.F.R. §2.20; and signed by someone with firsthand knowledge of the facts to be proved.  37 C.F.R. §2.146(c). 

Vicky Copeland

Trademark Specialist

Post Registration Division

Office of Trademark Services

(571) 272- 9521

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.