Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

 

U.S. Registration No. 3726032   Mark:  CINNAMON
Correspondence Address:         Matthew E. Moersfelder        DAVIS WRIGHT TREMAINE LLP        920 Fifth Avenue, Suite 3300        Seattle WA 98104-1610
Owner:  Samco Inc.
Reference/Docket No. 41229-5               Correspondence Email Address:         seatm@dwt.com

 

 

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:  January 6, 2020

 

 

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on December 16, 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 FOR INTERNATIONAL CLASS 35

 

The specimen submitted with the Section 8 Affidavit is unacceptable because the digitized image is illegible due to technical difficulties and does not clearly show the registered mark in use in commerce for the identified goods and/or services.  A Section 8 Affidavit must include a specimen showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed.  15 U.S.C. §1058(b); 37 C.F.R. §2.161(g).

 

Therefore, the owner must satisfy one of the following:

 

(1)  Submit a true and unaltered copy of the originally submitted specimen filed with the Section 8 Affidavit, and a statement by the person who transmitted the affidavit to the Office that the resubmitted specimen is a true copy of the specimen that was originally submitted with the Section 8 Affidavit.  No verification or fee is necessary.  See TMEP §1604.12(b).      

 

(2)  Submit a substitute specimen showing current use of the registered mark in commerce for each class of goods and/or services specified in the registration, and 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.”  A fee may be required, depending on when a response is received.  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.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 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

 

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 of the registration.  If a response is not received, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(b).

 

DEFICIENCY SURCHARGE:  The owner must submit a $100 deficiency surcharge if its response to this Office action is received after the expiration of the grace period, i.e., after June 15, 2020, and the response is submitted online using the Trademark Electronic Application System (“TEAS”).  A $200 deficiency surcharge must be submitted if the response is received after the expiration of the grace period and the response is submitted on paper.  37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).

 

 

 

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.

 

 

 

/Rosalind Howard/

Rosalind Howard

Lead Trademark Specialist

Post Registration

Phone 571-272-9363

Fax 571-273-9363

Rosalind.Howard@uspto.gov

 

 

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.