Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

OFFICE ACTION

The USPTO must receive the owner’s response to this letter within the time period specified below.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears below.

Issue date:  May 26, 2021

The Sections 8 & 15 Combined Affidavit submitted on November 17, 2020, cannot be accepted or acknowledged for the reasons set forth below.

A)    OWNER’S ENTITY

The party who filed the Combined Affidavit must establish its ownership of the registration.  The Trademark Act requires the current owner of the registration to file the Combined Affidavit.  15 U.S.C. §§1058, 1065; 37 C.F.R. §§2.161(a)(1), 2.167(a), 3.73(b); TMEP §§1604.07(a), 1605.04.  Office records do not show clear chain of title in the party who filed the Combined Affidavit.

The filer of the Combined Affidavit must clarify its name and ownership of the registration.  The owner’s entity on the assignment records lists owner as a corporation, but name and other assignment records identifies the owner as a (LLC) limited liability company. 

Errors in assignment records are corrected by recording a correcting document with the Assignment Recordation Branch.  TMEP §§503.06 et seq.  For information regarding recording assignments, name changes and mergers, please visit the webpage http://www.gov.uspto.report/trademark/trademark-assignments-change-search-ownership and see TMEP §§503 et seq.  For specific questions, please contact the Assignment Recordation Branch at 571-272-3350.  To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov.  There is a fee for recording ownership documents.

You must notify the undersigned paralegal when the corrected document has been submitted for recordation.  The filing of a document with the Assignment Recordation Branch does not extend the time period for responding to this Office action.

If the Combined Affidavit was filed by an entity other than the owner of record, then the filer of the Combined Affidavit must establish its ownership.  37 C.F.R. §3.73(b); TMEP §§1604.07(a)-(b), 1605.04.

B)    VERIFIED SUBSTITUTE SPECIMEN

The owner of the registration provided a specimen with its Section 8 Affidavit; however, although the specimen is identified as a catalog or web page, it is unacceptable to show trademark use as a display associated with the goods because it fails to include the necessary ordering information or a weblink for ordering the goods and thus, appears to be mere advertising material.  See In re Sones, 590 F.3d 1282, 1288-89, 93 USPQ2d 1118, 1123-24 (Fed. Cir. 2009); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); In re Dell Inc., 71 USPQ2d 1725, 1727-29 (TTAB 2004); TMEP §904.03(h), (i); cf. Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 513-14, 24 USPQ2d 1314, 1316 (E.D. Va. 1992). 

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable to show trademark use.  TMEP §904.04(b).  Leaflets, handbills, brochures, advertising circulars and other advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b), (c), 1301.04.

A printed or web catalog, web page or similar specimen is acceptable to show trademark use as a display associated with the goods only if it includes the following:  (1) a picture of the relevant goods or a textual description that identifies the actual features or inherent characteristics of the goods such that the goods are recognizable, (2) the mark appearing sufficiently near the picture or textual description of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders) or a visible weblink to order the goods.  See In re Sones, 590 F.3d at 1288-89, 93 USPQ2d at 1123-24; In re Genitope, 78 USPQ2d at 1822; In re Dell, 71 USPQ2d at 1727-29; Lands’ End, 797 F. Supp. at 513-14, 24 USPQ2d at 1316; TMEP §904.03(h).  Without this necessary information, the specimen is mere advertising and is not acceptable to show use in commerce for goods.  See, e.g., In re Osterberg, 83 USPQ2d 1220, 1222-24 (TTAB 2007); In re Genitope, 78 USPQ2d at 1822. 

The owner may respond by submitting:

(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods 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(a)(7); TMEP §1604.12(c).

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(a)(2), 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.  If a response is not received, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

DEFICIENCY SURCHARGE REQUIRED:  The owner must submit a $100 deficiency surcharge with its response to this Office action.  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).

How to respond.  Click to file a Response to Post-Registration Office action. 

Direct questions about this Office action to the Post Registration staff member below.

/Dana L. Newton/

Trademark Specialist

Post Registration Division

571-272-9544

Dana.Newton@uspto.gov

USPTO

RESPONSE GUIDANCE

• Response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an owner’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted or processed.  If the owner does not have an attorney, the response must be signed by the individual owner, all joint owners, or someone with legal authority to bind a juristic owner.  If the owner has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.