Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

 

 

POST REGISTRATION OFFICE ACTION

 

 

ISSUE/MAILING DATE: 1/5/2017

U.S. Registration Number  4027346

 

The Sections 8 & 15 Combined Affidavit was received on October 28, 2016.  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 Issue

The Section 8 Affidavit of record does not include a specimen, which is required for a Section 8 Affidavit based on continued use.  15 U.S.C. §1058(b); 37 C.F.R. §2.161(g); TMEP §1604.12(a).

 

Therefore, the owner must submit the following:

 

(1) A 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 or prior to expiration of the 6^th year anniversary date on September 20, 2017, 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 September 20, 2017 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.

 

/macyma/

MACY MA

Trademark Specialist

Post Registration Division

Phone 571-272-9538

Fax 571-273-9538

macy.ma@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp.  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. For questions about the Office action itself, please contact the assigned specialist.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this registration will be placed in the official registration record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner 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 Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status 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/trademarks/teas/correspondence.jsp.