To: | Insight Imports (roserigole@strategyip.com) |
Subject: | TRADEMARK REGISTRATION NO. 3232293 - FLAME - 10054 |
Sent: | 03/19/13 03:44:46 PM |
Sent As: | PRG@uspto.gov |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION
REGISTRATION NO. 3232293
REGISTRANT: Insight Imports
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CORRESPONDENT’S ADDRESS: |
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MARK: FLAME
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CORRESPONDENT’S REFERENCE/DOCKET NO. 10054
CORRESPONDENT’S EMAIL ADDRESS: |
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ISSUE/MAILING DATE: 3/19/2013
Registration Number 3232293
The Sections 8 & 15 Combined Affidavit submitted on March 4, 2013, cannot be accepted or acknowledged for the reasons set forth below.
OWNERSHIP DISCREPANCY
(1) If the present owner chooses to record the appropriate documents with the Assignment Services Branch, the documents must be recorded before expiration of the time for filing a response. In addition, you must notify the undersigned when the documents have been recorded. For information regarding recording assignments, name changes and mergers, please visit the webpage http://www.gov.uspto.report/web/trademarks/workflow/assign.htm and see TMEP §§503 et seq. For specific questions, please contact the Assignment Services 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. To record an assignment, the owner must submit the assignment documents along with a cover sheet and the required fee. 37 C.F.R. §§3.28, 3.31. The fees for recording an assignment are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document. 37 C.F.R. §2.6(b)(6). The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title. 37 C.F.R. §3.25.
(2) If the present owner prefers to submit actual evidence of ownership directly to the undersigned trademark specialist, copies of the actual documents transferring title or a statement explaining the valid transfer of legal title must be submitted. If submitting a statement of facts explaining the transfer of title, this statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §3.73; TMEP §§502 et seq.
Please note that if the party who filed the Combined Affidavit submits sufficient evidence to establish ownership but the ownership documents are not recorded with the Assignment Services Branch before expiration of the time to file a response, then the acceptance notice will issue in the name of the owner of record. 37 C.F.R. §3.85; TMEP §502.02. There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership. TMEP §1604.07(a).
Information for Combined Affidavits Not Filed in the Name of the Owner
If the Combined Affidavit was not filed in the name of the owner of the registration and there is time remaining in the statutory filing period, including grace period, when responding to this Office action, the true owner may (1) submit a correction of the name in the filing of record or (2) file a complete new Combined Affidavit with a new specimen and filing fee. Please note that a deficiency surcharge is required if the Combined Affidavit was submitted before the grace period began and a correction of the name in the filing of record is received during the grace period. 37 C.F.R. §2.164(a)(1); TMEP §1604.17(a). The deficiency surcharge is $100. 37 C.F.R. §2.6. If the owner opts to file a complete new affidavit and fee, this must be explicitly stated in the filing; otherwise, it will be treated as a correction of the owner name. The fee for filing a Combined Affidavit is $300 per class. 37 C.F.R. §2.6. If the new Combined Affidavit is filed during the six-month grace period, the owner must pay the filing fee for the Combined Affidavit and the grace period fee. 15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161; TMEP §1604.07(a). The grace period fee is $100 per class. 37 C.F.R. §2.6.
If the Combined Affidavit was not filed in the name of the owner of the registration and there is no time remaining in the grace period when responding to this Office action, the true owner may submit a correction of the name in the filing of record with payment of the deficiency surcharge, but may not file a new Combined Affidavit. 15 U.S.C. §1058.
Confirmation Required: Affidavit Signed by Authorized Signatory
If a correction of the name in the filing of record is submitted at any time, the true owner must confirm that the original affidavit was signed by a person properly authorized to sign on behalf of the owner. 37 C.F.R. §§2.161(b), 2.167, 2.193(e)(1); TMEP §1604.08(a). If the original affidavit was not signed by an authorized signatory, the owner must also submit a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit.
(ADVISORY NOTE: Although a telephone discussion may take place with the Trademark Specialist, it would not change or clarify the questioning of current ownership/legal entity of trademark. Please review current Section 8 application, and submit clarification or objection in a formal response, directions on how to do so show below.)
(TMEP) 503.01(d) Recording Does Not Constitute Response to Office Action
Recording a document with the Assignment Services Branch does not constitute a response to an outstanding Office action.
How to find ASSIGNMENT Application
Go to
2) under title POPULAR LINKS
3) click on TRADEMARK BASICS
4) in BLUE SECTION double click ASSIGNMENT
Any errors in the assignment records are corrected by recording a correction document with the Assignment Division of the USPTO. You must notify the undersigned Trademark Specialist, when the corrected documents are submitted for recordation in a formal response. The filing of a document with the Assignment Division does not extend the time period for responding to this Office action. Fee(s) maybe required. Assignment Services Branch 571-272-3350.
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.)
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 by e-mail is not acceptable.
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.
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.
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
CHECK THE STATUS OF THE REGISTRATION OR REVIEW INCOMING & OUTGOING CORRESPONDENCE
Go to
2) POPULAR LINKS
3) Trademarks: Check Status/Documents [TSDR]
4) Choose either TARR (status of registration) OR TSDR1.0 (review/print documents)
4) #5 CORRESPONDENCE AND ATTORNEY/DOMESTIC REPRESENTATIVE FORMS (double click)
Please note the 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.
/Dawn Hembry/
Dawn Hembry
Dawn.Hembry@USPTO.GOV
Post Registration Division
571\272-9506(Office)
571\273-9506(Fax)