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:  March 29, 2021

WARNING: Failure to timely respond to this Office action will result in the cancellation of the entire registration. 37 C.F.R. §§2.163(c), 7.39(b).

This Office action supersedes all prior Office actions and now includes a deadline for responding.  The Office apologizes for the oversight and any inconvenience.   

Status

The response to the outstanding Office action regarding the Combined Section 8 Affidavit or Declaration & Section 9 Renewal Application was timely received on October 28, 2019 (and Petition to the Director on August 7, 2020).

However, the response did not satisfy all requirements and further action is required.

Requirements for Audit Not Satisfied

The owner/holder of the registration was required to (1) submit proof of use for two additional goods and/or services per audited class with a verified statement or (2) delete any goods and/or services for which proof of use was not provided, pay the required deletion fee, and submit acceptable proof of use for all remaining goods and/or services in the audited class(es).  37 C.F.R. §§2.161(b), (c), 7.37(b), (c).  Although the owner/holder submitted a response to the Office action, the owner/holder included a request to delete audited goods and/or services and/or did not submit acceptable proof of use for all remaining goods and/or services in the audited class(es).

The requirements for the audit have not been satisfied and the affidavit or declaration of use submitted to maintain the registration cannot be accepted unless the owner/holder verifies the accuracy of the claim of use in the affidavit or declaration of use by (1) providing proof of use for the remaining goods and/or services in the audited class(es) in the registration without acceptable proof of use of record and/or (2) deleting goods and/or services in the audited class(es) for which proof of current use of the mark in commerce cannot be provided.  See 15 U.S.C. §§1058(b), 1141k(b); 37 C.F.R. §§2.161(b), 7.37(b).

The owner’s/holder’s request to delete the following goods and/or services has been entered.

Class 1:

·    pet products and supplies, namely, chemical analysis kit for testing home garden pond water

·    Activated carbon for use as aquarium filtering media, namely, activated absorbing carbons for oxygenating, purifying, and removing liquid and organic waste from aquarium water

·     Chemical solution for the biological reduction of turtle waste, namely, bacteria which help break down and eliminate turtle waste and odors

Class 20:

·    Pet ramps

·    Beds for household pets

·    Pet products and supplies for use in creating aquariums and terrariums, namely, decorative foam for decorating reptile and amphibian terrariums and aquariums

Acceptable proof of use is of record for the following goods and/or services in the audited class(es).

Class 1 in its entirety

Class 3, in its entirety

Class 5, in its entirety

Class 7, in its entirety

Class 8, in its entirety

Class 9

·     Pet products and supplies, namely, electronic aquarium monitor for measuring temperature and providing signals when temperature is outside a prescribed temperature range, and for scheduling at prescribed periods aquarium maintenance and filter material changes;

·     home aquarium goods, namely, thermometers;

·     monitoring equipment for reptile and amphibian terrarium, namely, thermometers and hygrometers;

·     hygrometer;

·     environmental monitoring system for use with reptile and amphibian terrariums comprised of electronic meters and electronic sensors that measure temperature;

·     electronic controllers for use with reptile and amphibian terrarium, namely, environmental monitoring system for use with reptile and amphibian terrariums comprised of electronic meters and electronic sensors that measure temperature;

·     aquarium thermometers to determine the aquarium temperature

Class 11, in its entirety

Class 16, in its entirety

Class 17, in its entirety

Class 18, in its entirety

Class 19, in its entirety

Class 20, in its entirety

Class 21, in its entirety

Class 28, in its entirety

Class 31, in its entirety

Proof of use is not of record for the following goods and/or services in the audited class(es).

Class 9:

·     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

·     horizontal thermometer not for medical use;

·     environmental monitoring system for use with reptile and amphibian terrariums comprised of electronic meters and electronic sensors that measure pressure, humidity;

·     electronic controllers for use with reptile and amphibian terrarium, namely, environmental monitoring system for use with reptile and amphibian terrariums comprised of electronic meters and electronic sensors that measure pressure, humidity

The submitted proof of use of is not acceptable for these goods and/or services because it did not satisfy the proof of use requested for Class 9 in the response to the original Office action, for “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. The evidence appears to merely be a light controller and not a controller for water filters.

Please note that upon a secondary review of the specimens of record, the Office has determined that the specimens for the remaining above-mentioned goods in Class 9 were not sufficient to satisfy the proof of use requirements.  

As such, the Office has decided that reissuing a 2^nd Office action to provide the owner the opportunity to address the prior missed issue is proper.

To respond to this action, the owner/holder must:

(1)   Submit proof of use of the registered mark for the goods and/or services for which acceptable proof of is not of record in the audited class(es), as identified above, and submit a statement verifying proof of use.

Examples of proof of use.  Proof of use must demonstrate current use of the mark in commerce with the good(s) and/or in the sale or advertising of the service(s) selected for audit.  In particular, proof of use is evidence that clearly shows how you are using your mark in commerce on the specific audited good(s) or service(s).  It may be an actual image, such as a photograph, scanned copy, or screen capture, of the physical item.  Acceptable proof of use for goods includes the mark shown on the actual goods or their packaging, or displays associated with the actual goods at their point of sale.  See 37 C.F.R. §2.56(b)(1), (c); see TMEP §904.03(a)-(m).  Tags or labels must be shown affixed to the goods or must consist of actual tags or labels that identify the specific goods on which they are used and include informational matter that typically appears on a tag or label in use in commerce for these types of goods.  Similarly, packaging must show or identify the goods therein.  A webpage submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  See 2.56(b)(1), (c); see TMEP §904.03(i).  Acceptable proof of use for services includes signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); see TMEP §1301.04(a), (h)(iv)(C).  Any webpage printout or screenshot submitted as proof of use, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  See 37 C.F.R. §2.56(c).

Instructions for submitting proof of use. Clearly label or describe which good(s) and/or service(s) is supported by each item submitted as proof of use.  See 37 C.F.R. §§2.161(b), 7.37(b).  In addition, if the submission includes multiple pages, please identify the relevant page numbers for the audited good(s) and/or service(s).

Instructions for submitting statement verifying proof of use. To provide the required verification in the electronic Response to Post-Registration Office action form, check the box located at the bottom of each class for which proof of use is provided to automatically populate the below required statement, and sign the declaration at the end of the form. 

The owner/holder 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.

            AND/OR

(2)   Delete any goods and/or services without proof of use of record and/or for which use cannot be confirmed and pay deletion fee.

 If the owner/holder cannot provide proof of current use of the mark in commerce for any remaining goods and/or services listed in audited class(es) in the affidavit or declaration submitted to maintain the registration, the owner/holder must delete those goods and/or services and submit a fee of $250 for each class in which goods and/or services are being deleted.  37 C.F.R. §§2.6(a)(12)(ii), 2.161(c), 7.6(a)(6)(iv), 7.37(c).  No additional proof of use or verification is required if deleting all goods and/or services in the audited class(es) for which proof of use has not been provided.  Please be reminded that registration owners/holders are expected to conduct a reasonable inquiry to confirm use of their marks in commerce with all goods and services that they include in the Section 8 or 71 affidavit or declaration submitted to maintain the registration.  See 15 U.S.C. §§1058(b), 1141k(b).  Therefore, if use cannot be confirmed for any goods and/or services in the registration, the goods and/or services must be deleted.

WARNING:  If the owner/holder responds by providing unacceptable proof of use for any goods and/or services for which acceptable proof of use is not already of record, the requirements for the audit will not have been satisfied and the affidavit or declaration of use submitted to maintain the registration cannot be accepted. A final Office action will issue requiring deletion of the goods and/or services and submission of the deletion fee to avoid cancellation of the registration in its entirety.

DEFICIENCY SURCHARGE:

Along with any required deletion fee(s), a one-time deficiency surcharge also may be required if the owner/holder deletes goods and/or services to correct the listing of goods and/or services on or in connection with which the mark is in use in commerce specified in the affidavit or declaration.  See 15 U.S.C. §§1058(b), (c), 1141k(b), (c); see 37 C.F.R. §§2.164(a), 7.39(c). 

Detailed information regarding the audit program is provided on the Post Registration Audit Program webpage.

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 and/or expiration 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 and will expire in its entirety.  37 C.F.R. §§2.163(b)-(c) and 2.184(b); TMEP §§1604.16 and 1606.12.

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.

Phillip D. White 

/Phillip D. White/

Program Analyst

OTQRT

571-272-9665

phillip.white@uspto.gov (inquiries only)

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.