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: 4/28/2019

U.S. Registration Number 3625154

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on March 22, 2019.  The Section 9 portion of the combined filing can be granted.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

ISSUES PERTAINING TO SECTION 8 PORTION ONLY

Item 1 of 2 – Specimen Deficiency – Class 8 only

The specimen submitted with the Section 8 Affidavit is unacceptable because it shows the mark used on or in connection with goods that are different from those identified in the registration.  See In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm’r Pats. 1993). 

Specifically, the specimen shows use for grooming implements for pets in the nature of a slicker brush for removing hair. 

The goods in the registration comprise the following: grooming implements for pets in the nature of a hand held shedding blade for removing shedding hair from dogs and cats.  The specimen must be used on or in connection with the goods listed in the registration.  TMEP §1604.12(a).

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) 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 10-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. 

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 10-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).

Item 2 of 2 - Registration Selected for Audit

The USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register.  See 37 C.F.R. §§2.161(h), 7.37(h). This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods identified in the registration. 

Detailed information regarding the audit program is provided on the following webpage – http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program.

To comply with the audit, you must submit proof of use of the registered mark for two additional goods per class.  Id. 

If proof of use for the goods identified is not available, the identified goods and any other goods not currently in use should be deleted from the registration. 

Therefore, the owner must submit the following:

(1) Proof of current use of the registered mark in commerce for the following goods:

o   water fertilizers, namely, fertilizers for optimizing plant growth and replenish nutritive requirements of plants for use in aquariums

o   pet products and supplies, namely, chemical analysis kit for testing home garden pond water, in international class 1; and

o   skin and coat conditioner for dogs, namely, non-medicated hair conditioner for dogs

o   pet products and supplies in the nature of an odor remover, namely, pet odor removers

o   pet products and supplies, namely, mineral supplements for reptiles and amphibians

o   animal food supplements for conditioning the skin and coats of cats, in international class 5; and

o   aquarium air valves for adjusting air flow specifically designed for use with aquarium air pumps

o   water pumps, namely, aquarium and home garden pond water pumps, in international class 7

o   grooming implements for pets in the nature of a hand held shedding blade for removing shedding hair from dogs and cats

o   grooming implements for pets in the nature of nail trimmers, namely, nail scissors, in international class 8; and

o   monitoring equipment for reptile and amphibian terrarium, namely, hygrometers

o   environment, light, and temperature controllers for use with reptile and amphibian terrarium, namely, electronic controllers for use operating water filters for reptile and amphibian terrariums, in international class 9; and

o   terrarium heaters

o   waterfalls for reptile and amphibian terrarium, namely, ornamental and decorative water fountains in the form of a waterfall for use in reptile and amphibian terrariums, in international class 11; and

o   pet products and supplies, namely, harnesses

o   pet products and supplies, namely, leashes, in international class 18; and

o   pet products and supplies, namely, aquarium sand

o   natural sand substrates for reptile and amphibian terrarium, namely, gravel and sand specifically for use in reptile and amphibian terrariums, in international class 19

o   pet ramps

o   ornaments for home garden ponds, namely, ornaments of plastic for decorating home garden ponds not being Christmas tree ornaments, in international class 20; and

o   rodent habitat rotatably-mounted for feeding and keeping a caged animal, namely, indoor terrariums for rodents

o   pet products and supplies, namely, aquarium fish nets, in international class 21; and

o   coconut fiber substrates for reptile and amphibian terrarium, namely, compressed coconut husk fiber for use as animal bedding for digging, burrowing and incubation

o   seed mixture for birds, in International Class 31; and

 (2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The owner or holder/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 proof of use, during the relevant period for filing the affidavit of use.”  37 C.F.R. §§2.161(h), 7.37(h). 

Acceptable proof of use for goods includes photographs that show the mark on the actual goods or packaging, or photographs of displays associated with the actual goods at their point of sale.  A tag or label that is not shown affixed to the goods is not acceptable proof of use.  Similarly, a package that does not show or identify the goods therein is not acceptable proof of use. 

Form Declaration

Please note that the below statement verifying proof of use is slightly different than the standard substitute specimen statement. 

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the use of the mark as evidenced by the item(s) submitted as proof of use, if properly signed and dated:

The owner or holder/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 proof of use and specimen(s), during the relevant period for filing the affidavit of use.

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that the facts set forth above are true; 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

WARNING: 

If your response to this Office action does not meet the requirements of the audit, or includes a request to delete the goods identified for the audit, and goods remain in the registration without acceptable proof of use, a second Office action will issue requiring proof of use for all remaining goods for which proof of use is not of record.  See 37 C.F.R. §§2.161(h), 7.37(h).  

Therefore, the owner should delete all goods for which proof of use cannot be provided.

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 10^th year anniversary date on May 26, 2019, whichever is later.  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, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(a).

DEFICIENCY SURCHARGE INFORMATION: 

If the response to this Office action is received by the Office after May 26, 2019, a $100 deficiency surcharge must be submitted if the response is submitted online using the Trademark Electronic Application System (“TEAS”) and a $200 deficiency surcharge must be submitted if the response is submitted on paper.  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 10^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.

/Phillip D. White/

Post Registration Division

phillip.white@uspto.gov

571-272-9665

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.