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:  January 9, 2020

STATUS

Your response to the outstanding Office action regarding the Combined Section 8 Affidavit & Section 9 Renewal Application was timely received on December 11, 2019.

REQUIREMENTS FOR AUDIT NOT SATISFIED

As part of the audit to assess and promote the accuracy and integrity of the trademark register as to the actual use of the mark with the goods identified in the registration, the owner of the registration was required to submit proof of use for two additional goods per class.  37 C.F.R. §§2.161(h), 7.37(h).  Although the owner submitted a response to the Office action, the owner did not sufficiently respond to the requirements of the audit.

As warned in the prior office action, if your response to the first Office action does not meet the requirements of 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.

The proof of use provided is unacceptable because 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 specimens show use for an iPhone XS Max, an iPhone 6 cellular telephone handset, a webpage screen shot for an iPhone XS, an iPhone X, an iPhone 7, Apple App Store advertisements, and an iPad Pro.  

The goods in the registration comprise the following: Toys, games and playthings, namely, hand-held units for playing electronic games; hand- held units for playing video games; stand alone video game machines; electronic games other than those adapted for use with television receivers only; LCD game machines; electronic educational game machines for children; toys, namely, battery-powered computer games with display screens which feature animation and sound effects (Class 28).

While it is reasonable that the cellular telephone and/or a tablet computer both are capable of being used for the playing of videogames, neither is capable of circumventing the fact that they first and foremost a cellular telephone and tablet computers. Further, the specimens, as provided, do not show the registered mark used for the registered goods in such a way that gaming is a prominent aspect at a point of sale display. The specimen must be used on or in connection with the goods listed in the registration. TMEP §1604.12(a).  The refusal is maintained.

As the owner has not satisfied the requirements of the audit, the owner must verify the accuracy of the claim of use in the affidavit of use by providing proof of use for all the remaining goods in the registration without acceptable proof of use.  Id.

Therefore, the owner must submit the following:

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

(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).

Additionally, you must identify the corresponding goods that each individual piece of evidence of current proof of use supports.  See id. 

To demonstrate acceptable proof of use for goods, the owner must submit 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 submitted item(s) showing 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 the owner responds with unacceptable proof of use for any goods queried, the Office will delete these goods from 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.

THE OWNER MUST SUBMIT THE REQUIRED DEFICIENCY SURCHARGE: 

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. 

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.