Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

This Office action is in response to applicant’s communication filed on February 22, 2011. Applicant’s communication is referenced hereinafter as “Response”.

The previous Office Action of February 8, 2011, and all supporting evidence attached thereto, is incorporated by reference herein.

After review of the Response, the following is determined:

New Requirement: request to change owner name – no assignment filed/recorded

Applicant has requested that the owner name be amended; however, applicant has not provided or recorded acceptable ownership transfer documentation. In the February 22, 2011 Response, applicant provided copies of an assignment, however the assignment pertains to U.S. Registration No. 1990938, not the present application. The provided assignment was not recorded with the Office for the present application and indeed does not cover the present application.

The name of the original applicant is Major Avignon; the request is to amend this to Water, Inc.. The request to change the applicant’s name raises a question regarding whether the proper party filed the initial application. Therefore, applicant must clarify whether the proper party filed the original application. In addition, the request to amend the owner name is denied until clear chain of title to the new party is established.

An application is void if it was filed in the name of a party who did not own the applied for mark as of the application filing date. 15 U.S.C. §1051; 37 C.F.R. §2.71(d); Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 1460, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988); TMEP §§803.06, 1201.02(b). A void application cannot be cured by amendment or assignment. 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). In such cases, the true owner must file a new application. TMEP §803.06.

If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another entity, then the new owner must submit documentation to establish a clear chain of title as follows:

(1) The new owner must record an assignment, name change or other documentation affecting title with the Office’s Assignment Services Branch showing a clear chain of title to the mark in the new owner, and promptly notify the examining attorney that such documentation has been recorded; or

(2) The new owner must submit either a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the current owner, or submit documentation showing transfer of title to the new owner. However, the registration will not issue in the new owner name without recording chain of title documentation with the Office and notifying the examining attorney, as specified in (1) above.

37 C.F.R. §3.73(b)(1); TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §2.193(e)(1).

Assignments and other documents affecting title can be filed electronically at http://etas.gov.uspto.report/. There is a fee for recording such ownership changes. 37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d). Merely recording an assignment or other ownership transfer document does not constitute a response to an Office action. See TMEP §503.01(d).

If the party applying to register the mark is in fact the owner of the mark, but there is a typographical error or other minor mistake in the manner in which the name of the applicant is set forth in the application, the mistake may be corrected by amendment. U.S. Pioneer Elecs. Corp. v. Evans Mktg., Inc., 183 USPQ 613 (Comm’r Pats. 1974); see TMEP §1201.02(c) (providing examples of correctable and non-correctable errors).

/Kaelie E. Kung/

Trademark Examining Attorney

Law Office 103

kaelie.kung@uspto.gov

571-272-8265

TO RESPOND TO THIS LETTER: Go to 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 application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. 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.