Petition to Director Granted

United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 77158597   U.S. Registration No. 3625154   Mark:  HAGEN
Correspondence Address:         Douglas R. Wolf        WOLF, GREENFIELD & SACKS, P.C.        600 ATLANTIC AVE        BOSTON MA 02210-2206
Owner:  ROLF C. HAGEN, INC.
Reference/Docket No. R01372022400   Correspondence Email Address:         drwtrademarks@wolfgreenfield.com

 

 

PETITION TO DIRECTOR GRANTED

 

 

Issue date:  January 11, 2021

 

Rolf C. Hagen, Inc. (petitioner) has petitioned the Director of the United States Patent and Trademark Office (USPTO) to reinstate a cancelled registration and accept a late response to a Post Registration Office action issued in connection with a combined Trademark Act Section 8 declaration of use or excusable nonuse and Trademark Act Section 9 renewal application (combined filing).  The Director has authority to review this request under 37 C.F.R. §§2.146(a)(5), 2.148 and has delegated this matter to the Commissioner for Trademarks and the staff of the Office of the Deputy Commissioner for Trademark Examination Policy. 35 U.S.C. §3(a)-(b); 37 C.F.R. §2.146(h).  The petition is granted.

 

FACTS

 

On May 26, 2009, the USPTO issued the above identified registration.  On March 22, 2019, petitioner filed a combined filing.  15 U.S.C. §§1058 and 1059.  In an Office action dated April 28, 2019, the Post Registration examiner refused the combined filing because an acceptable specimen of use was not submitted for International Class 008.   Petitioner was further notified that the registration was randomly selected for the Post Registration Proof of Use Audit Program (Audit Program) to determine whether the mark is in use with all of the goods identified in the registration.  Petitioner was advised that as part of the Audit Program, proof of use for two additional goods from International Classes 001, 003, 005, 007, 008, 009, 011, 018, 019, 020, 021, and 031 was required.  Specifically, petitioner was advised that it must submit proof of use for:

 

·       water fertilizers, namely, fertilizers for optimizing plant growth and replenish nutritive requirements of plants for use in aquariums, in International Class 001;

·       pet products and supplies, namely, chemical analysis kit for testing home garden pond water, in International Class 001; 

·       skin and coat conditioner for dogs, namely, non-medicated hair conditioner for dogs, in International Class 003;

·       pet products and supplies in the nature of an odor remover, namely, pet odor removers, in International Class 003

·       pet products and supplies, namely, mineral supplements for reptiles and amphibians, in International Class 005;

·       animal food supplements for conditioning the skin and coats of cats, in International Class 005;

·       aquarium air valves for adjusting air flow specifically designed for use with aquarium air pumps, in International Class 007;

·       water pumps, namely, aquarium and home garden pond water pumps, in International Class 007;

·       grooming implements for pets in the nature of a hand held shedding blade for removing shedding hair from dogs and cats, in International Class 008;

·       grooming implements for pets in the nature of nail trimmers, namely, nail scissors, in International Class 008;

·       monitoring equipment for reptile and amphibian terrarium, namely, hygrometers; in International Class 009;

·       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 009;

·       terrarium heaters, in International Class 011;

·       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 011;

·       pet products and supplies, namely, harnesses, in International Class 018;

·       pet products and supplies, namely, leashes, in International Class 018;

·       pet products and supplies, namely, aquarium sand, in International Class 019;

·       natural sand substrates for reptile and amphibian terrarium, namely, gravel and sand specifically for use in reptile and amphibian terrariums, in International Class 019;

·       pet ramps, in International Class 020;

·       ornaments for home garden ponds, namely, ornaments of plastic for decorating home garden ponds not being Christmas tree ornaments, in International Class 020;

·       rodent habitat rotatably-mounted for feeding and keeping a caged animal, namely, indoor terrariums for rodents, in International Class 021;

·       pet products and supplies, namely, aquarium fish nets, in International Class 021;

·       coconut fiber substrates for reptile and amphibian terrarium, namely, compressed coconut husk fiber for use as animal bedding for digging, burrowing and incubation, in International Class 031; and

·       seed mixture for birds, in International Class 031;

 

Petitioner was also notified that if the response did not meet the requirements of the Audit Program, or if there was a request to delete any of the goods identified for audit while other goods remained in the registration without acceptable proof of use of record, then a second Office action would issue requiring proof of use for all of the remaining goods in the registration for which proof of use was not of record. 

 

On October 28, 2019, petitioner submitted a response providing an acceptable specimen of use for International Class 008, acceptable proof of use for some of the goods audited, and requested that the remaining goods to which the audit requirement applied be deleted from the registration.

 

On October 29, 2019, the Post Registration examiner informed petitioner that the Audit Program requirements were not satisfied because petitioner provided proof of use for some of the goods while requesting deletion of the other goods to which the requirement applied.  Petitioner was advised that, under the Audit Program, it was now required to provide proof of use for all of the remaining goods in the registration for which acceptable proof of use had not been provided. 

 

Petitioner did not timely file a response to the Office action issued on October 29, 2019, and the registration was cancelled on June 8, 2020.

 

Petitioner filed the instant petition on August 7, 2020, requesting to submit a late response to the Office action in which it requests deletion of the remaining goods audited in the October 29, 2019 Office action. Petitioner explains that the delay in timely responding to the October 29, 2020 Office action is due to COVID-19.  Specifically, petitioner’s place of business remained close for some time, making it difficult to collect the requested proof of use and specimens. (Petition.)

 

DISCUSSION

 

Proof of Use Audit Program and Requirements for Responding to Office Action

 

In November 2017, the USPTO launched the Audit Program to assess and promote the accuracy and integrity of the trademark register.  See 37 C.F.R. §§2.161(h), 7.37(h); see also Post Registration Proof of Use Audit Program, http://www.gov.uspto.report/trademarks-­maintaining-trademark-registration/post-registration-audit-program.  The Audit Program provides for the random audit of Trademark Act Section 8 or Trademark Act Section 71 affidavits or declarations of use or excusable nonuse that are submitted in support of continued use of the mark when the underlying registration includes either (1) at least one class with four or more goods or services or (2) at least two classes with two or more goods or services in at least two classes.   

 

Under the Audit Program, if an affidavit or declaration of continued use is selected for audit, an Office action will issue requiring proof of use for two additional goods or services for each audited class.  If the response to the Office action “. . . does not include acceptable proof of use for, or merely deletes, the audited goods or services,” the USPTO will issue a second Office action requiring proof of use for all of the remaining goods or services in the registration for which proof of use has not been provided.  Id.; see generally 37 C.F.R. §2.165. If no response to the Office action is provided within six months of the date of issuance, then the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

 

The requirement that petitioner provide proof of use for all the remaining goods in the registration for which proof of use had not yet been provided was consistent with the procedures outlined in the Audit Program.  Petitioner was first required to provide proof of use for two additional registered goods in International Classes 001, 003, 005, 007, 008, 009, 011, 018, 019, 020, 021, and 031, and petitioner responded by requesting deletion of some of the goods from the registration, and providing  proof of use for some of the goods in the registration.  The analyst determined that some of the submitted proof of use was not acceptable, and subsequently issued a second Office action providing petitioner six months to submit proof of use for all remaining goods for which proof of use was not of record.  When petitioner did not respond to the Office action dated October 29, 2019, and USPTO properly cancelled the registration on June 8, 2020. 

 

When a registrant fails to timely respond to an Office action regarding the Audit Program, the registrant may petition the Director under 37 C.F.R. §§2.146(a)(5) and 2.148 to waive Trademark Rule 2.163(b) and accept a late response.  However, the Director may waive Rule 2.163(b) only “in an extraordinary situation, when justice requires and no other party is injured.”  37 C.F.R. §§2.146(a)(5), 2.148, 2.163(b); see TMEP §1708.  To waive this rule, the Director must determine that all three conditions are satisfied.  See TMEP §1708. 

 

Petitioner Has Established Extraordinary Circumstances

 

Petitioner submitted this petition on August 7, 2020, explaining under declaration that its place of business has remained close for some time due to the COVID-19 pandemic, making it difficult to collect the requested proof of use and specimens to respond to the Office action.  (Petition).

 

The Director may waive Trademark Rule 2.163(b) “in an extraordinary situation, when justice requires and no other party is injured.”  37 C.F.R. §§2.146(a)(5), 2.148, 2.163(b); see TMEP §1708.  To waive this rule, the Director must determine that all three conditions are satisfied.  See TMEP §1708.  In this case, the Director finds that a waiver of Rule 2.163(b) is appropriate.  Petitioner’s evidence showing that petitioner’s place of business has remained close for some time due to the COVID-19 pandemic, making it difficult to collect the requested proof of use and specimens, establishes an extraordinary circumstance, in which the Director can conclude that no other party will be injured and justice requires a waiver of this rule.  See TMEP §§1604.16, 1708.  Based on this evidence, petitioner could not have responded to the October 29, 2019, Office action within six months of the issue date.

 

The Director waives Rule 2.163(b) and permits petitioner to submit a late response to the October 29, 2019, Office action.  See 37 C.F.R. §§2.146(a)(5), 2.148.

 

DECISION

 

The petition is granted.  The USPTO will reinstate on petition the above-identified registration.  The registration will then be forwarded to the Post Registration Division to review the response submitted with the petition. 

 

 

/Crystal H. Yi/

Crystal H. Yi

Attorney Advisor (On Detail)

Office of the Deputy Commissioner

for Trademark Examination Policy

U.S. Patent and Trademark Office

571.270.0763

crystal.yi@uspto.gov