UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION
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U.S. REGISTRATION NO. 3472756
REGISTRANT: BITDEFENDER IPR MANAGEMENT LTD
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CORRESPONDENT’S ADDRESS: |
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MARK: B-HAVE
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CORRESPONDENT’S REFERENCE/DOCKET NO. NDKP0110TUS
CORRESPONDENT’S EMAIL ADDRESS: |
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ISSUE/MAILING DATE: 6/16/2014
U.S. Registration Number 3472756
The Sections 8 & 15 Combined Affidavit was received on June 2, 2014. The Section 15 portion of the Combined Affidavit can be acknowledged. However, the Section 8 portion is not accepted for the reason(s) set forth below.
SPECIMEN
In this case, the specimen submitted with the Section 8 Affidavit does not show the mark in color (RED is claimed as a feature of the mark). However, the registration shows the mark in the color(s) BLACK.
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 specified in the registration; and
(2) Please include the bold wording into the response Declaration
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.
DECLARATION TO SIGN AND DATE
“The substitute specimen was in use in commerce 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 Combined 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).
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 6th 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 6th 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.
How to respond to this Office Action:
(ADVISORY NOTE:MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial/registration number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.)
How to find Post Registration Response Application
Go to
2) under title Trademarks
3) click TEAS (file forms on line)
4) #8 Registration Maintenance/Renewal/Correction Forms (double click)
5) scroll down to #11 Response Application to Post Registration Office Action (double click) follow prompts to complete application
Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at http://www.gov.uspto.report/teas/eTEASpageD.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.
You may submit a formal response via regular mail to: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451, or facsimile, the response cover sheet must include the following information: registration number, office location 'Post Registration', and name of Trademark Specialist to expedite forwarding. Responding to office action by e-mail is not acceptable.
WHO MUST SIGN THE RESPONSE: The response must be personally signed or the electronic signature manually entered 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.
The filing date of a document with the Office is the date the document is received in the Office. 37 C.F.R. §2.195(a); TMEP §§303 and 303.01. However, if a “certificate of mailing” by first class mail or a “certificate of facsimile transmission” under 37 C.F.R. §2.197 is added to the response and the procedures in 37 C.F.R. §§2.195(c) and 2.197 are satisfied, then the document will be considered timely filed if the document is mailed or transmitted prior to expiration of the response time period regardless of whether it was received in the Office after the response time period. TMEP §§305.02 and 306.05 et seq.
Certificate of Mailing under 37 C.F.R. §2.197:
I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail with postage paid in an envelope addressed to: Commissioner for Trademarks, P.O. Box, 1451, Alexandria, VA 22313-1451, on the date shown below.
____________________________
Signature
____________________________
Typed or Printed Name
____________________________
Date
Certificate of Facsimile transmission under 37 C.F.R. §2.197:
I hereby certify that this correspondence is facsimile transmitted to the United States Patent and Trademark Office on the date shown below.
____________________________
Signature
____________________________
Typed or Printed Name
____________________________
Date
Should you need assistance for the following: Navigating through USPTO website, Post Registration TEAS Response applications, or general Trademark questions please contact: TrademarkAssistanceCenter@uspto.gov, or telephone either 571-272-9250 or 1-800-786-9199.
CHECK THE STATUS OF THE REGISTRATION OR REVIEW INCOMING & OUTGOING CORRESPONDENCE
Go to
2) POPULAR LINKS
3) Trademarks: Check Status or view Documents [TSDR]
4) Use drop arrow to pull down US Registration No. enter your (7) digits registration number, click status or document
5) You may print any document(s) in this field.
TO UPDATE CORRESPONDENCE AND OR ATTORNEY/DOMESTIC REPRESENTATIVE FORMS
Go to
2) under title Trademarks
3) click on Trademark Electronic Application System (TEAS)
4) #5 CORRESPONDENCE AND ATTORNEY/DOMESTIC REPRESENTATIVE FORMS (double click)
Please note USPTO is tasked with preserving the integrity of its administrative records and providing the public with a complete registration file; please submit a Response filing.
To expedite inquiries about this office action, please contact the undersigned Trademark Specialist via e-mail.
WARNING
Because there are procedural, tactical, and financial considerations involved regarding your questions, you may wish to hire an attorney specializing in trademark or intellectual property law for a legal opinion. For attorney referral information, you may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm or a local telephone directory. The USPTO cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application. For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.
PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION: Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations. These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document. Many solicitations require that you pay “fees.”
Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation. All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.” For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.
/Dawn Hembry/
Dawn Hembry
Dawn.Hembry@USPTO.GOV
Post Registration Division
571\272-9506(Office)
571\273-9506(Fax)