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: 6/24/2012

Registration Number 3033772

The Section 8 Affidavit, filed on June 18, 2012, 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 use of the registered mark in commerce.  It appears to be a photocopy of the drawing or a picture or rendering 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.”  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.

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.  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(b).

DEFICIENCY SURCHARGE:  The owner must submit a $100 deficiency surcharge if its response to this Office action is received after the expiration of the grace period, i.e., after June 27, 2012.  37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).

Tamika Whitsey

TM Specialist

Tamika.whitsey@upsto.gov

571-272-4321 (work)

571-273-4321 (fax)

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. 3033772

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 ______ (fee code 6207)

                                                                                                     Date

$_______ Deficiency surcharge— Sec. 9 if response filed after June 27, 2012 (fee code 6204)

                                                                                                     Date

PLEASE NOTE THAT A FEE OF $_________ WAS PREVIOUSLY REFUNDED BECAUSE THE FEE SUBMITTED WAS INSUFFICIENT TO COVER THE FILING FEE REQUIREMENT.   ALL FEES LESS THAN OR IN EXCESS OF THE AMOUNT PER FEE CODE ARE ELECTRONICALLY REFUNDED OR CREDITED TO A DEPOSIT ACCOUNT OR BANK CHECKING ACCOUNT.