Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

NOTICE OF INCOMPLETE STATEMENT OF USE

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID THE DENIAL OF YOUR STATEMENT OF USE, WE MUST RECEIVE A PROPER RESPONSE TO THIS NOTICE WITHIN THIRTY (30) DAYS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 9/27/2011

Serial Number  77256745

The statement of use filed on September 23, 2011 meets the minimum filing requirements and is provisionally accepted.  However, to avoid abandonment of the application, a response satisfying the deficiencies stated below must be received in the United States Patent and Trademark Office (USPTO) within thirty (30) days of the issuance date of this letter.

STATEMENT OF USE IS DEFICIENT AS FOLLOWS:

FILER’S NAME DIFFERS FROM CURRENT OWNER NAME – CLARIFICATION REQUIRED:  The owner of the mark shown in Office records is “Sagent Holding Co.;” however, the party who filed the statement of use is identified as “Sagent Pharmaceuticals, Inc.”  The party who files a statement of use must be the owner of the mark at the time the statement of use is filed.  See 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88; In re Colombo Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).  Therefore, the statement of use cannot be accepted because it was filed by someone other than the owner of record. 

The filer must clarify whether it was the owner of the mark at the time the statement of use was filed.  Evidence to establish ownership can be provided after the expiration of the deadline for filing the statement of use, if the statement of use was filed by the true owner.  See 37 C.F.R. §§3.71, 3.73; TMEP §1109.10. 

FILER WAS OWNER:  If the filer of the statement of use was the owner at the time of filing, this party must submit evidence to establish that it has clear chain of title, as follows:

(1)  Record an assignment or other document of title with the Assignment Services Branch showing clear chain of title to the party filing the statement of use, and promptly notifying the undersigned that such documentation has been recorded (requests for recordation can be filed online at http://etas.uspto.gov.); or

(2)  Submit evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, supported by an affidavit or signed declaration under 37 C.F.R. §2.20, that a valid transfer of legal title occurred prior to filing the statement of use.

37 C.F.R. §3.73(b)(1); TMEP §§502, 502.01; see 15 U.S.C. §1060; 37 C.F.R. §2.193(e)(1).  Please note that a new owner must record the assignment, change of name, or other document affecting title with the Assignment Services Branch of the USPTO to obtain a certificate of registration in the name of the new owner (or in applicant’s new name).  37 C.F.R. §3.85.

A response to this Office action must still be submitted, even if an assignment or other document of title is recorded.

FILER WAS NOT OWNER:  If the filer of the statement of use was not the owner of the mark at the time of filing and:

(1) there is time remaining in the statutory period, the true owner must file a new statement of use within the statutory period to avoid abandonment of the application.  See 15 U.S.C. §1051(d); 37 C.F.R. §2.88.  The time for filing a statement of use expires on September 30, 2011.

Applicant is strongly encouraged to review Section 1201.02(c) of the Trademark Manual of Examining Procedure (TMEP) for correctible and non-correctible errors in how the applicant is identified.  The TMEP is available online at the USPTO website at http://tess2.gov.uspto.report/tmdb/tmep/.

There is time remaining in the statutory time period for filing a statement of use.  Applicant must respond to the outstanding issues raised in this Office action within the specified time period to avoid abandonment of the application. 

Please call the undersigned with any questions. 

/Stakhar/

Surinder Takhar

Paralegal Specialist

ITU/ Divisional Unit

571-272-9512

571-273-9512 Fax

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Intent-to-Use (ITU) 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 application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant.  If an applicant is represented by an attorney, the attorney must sign the response. 

TEAS PLUS APPLICATION:  To maintain the reduced fee status, TEAS Plus applicant must respond online via TEAS.  Otherwise, applicant is subject to an additional $50 fee for each class.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(1)(i).

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  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/teas/eTEASpageE.htm.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER IDENTIFIED ABOVE.