Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 9/27/2018

 U.S. Registration Number 4088195

Status

A response to the outstanding Office action regarding the Sections 8 & 15 Combined Affidavit was timely received on August 21, 2018.

Upon review of the response, it has been determined that the evidence of proof of use is acceptable, and therefore the owner has satisfied the requirements of the audit outlined in the February 22, 2018 Office action.

The Sections 8 & 15 Combined Affidavit was received on January 17, 2018.  The Section 8 portion of the Combined Affidavit is accepted. However, the Office cannot acknowledge the Section 15 portion because, since the filing of the Combined Affidavit and during the response period for the proof of use audit, a proceeding has been instituted before the Trademark Trial and Appeal Board involving ownership of the subject registered mark, i.e., Cancellation No. 92068213.

A Section 15 Affidavit must include a verified statement by the registrant that there is no proceeding pending in the United States Patent and Trademark Office or in a court involving the registrant’s rights to the mark nor a final decision adverse to the registrant’s claim of ownership and use of the mark. 37 C.F.R. §§2.167(d) and (e); TMEP §1605.04. The pending proceeding contradicts this claim

TIME PERIOD FOR RESPONDING: The registrant should respond to this Office action within 6 months from the issuance date of this Office action. All requirements in this Office action must be satisfied, if possible, in order for the Section 15 Affidavit to be acknowledged. Failure to respond in this time period will result in the abandonment of the Section 15 Affidavit.

A Section 15 Affidavit can be acknowledged if the party who filed the Section 15 Affidavit is the current registrant, and if the registrant can make all the claims required by statute. 15 U.S.C. §1065; 37 C.F.R. §2.167.  If the Section 15 Affidavit cannot be acknowledged at this time, the registrant may wish to file a new Section 15 Affidavit and fee at a later time when all statutory claims can be made.

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this registration will be placed in the official registration record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen.  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/trademarks/teas/correspondence.jsp.