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: 12/13/2018

U.S. Registration Number 4088195

Please note this Office action corrects and supersedes the September 27, 2018 & December 12, 2018, Office actions.  A response to this Office action is due according to the time period to respond indicated below. 

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 evidence of proof of use is acceptable, and the owner has therefore satisfied the requirements of the audit outlined in the February 22, 2018 Office action.

However, upon review of the official record for the registration, it is noted that a new issue has arisen that must be addressed.  Subsequent to the filing of the Sections 8&15 Combined Affidavit, a proceeding was instituted with the Trademark Trial and Appeal Board   involving ownership of the subject registered mark, i.e., Cancellation No. 92068213. Accordingly, although the Section 8 portion of the Combined Affidavit is accepted, the Office cannot acknowledge the Section 15 portion of the filing.

A Section 15 Affidavit must include a verified statement by the owner 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.  Although the proceeding was not pending when the Section 15 Affidavit was filed, per TMEP Section 1605.04, the Office will not acknowledge a Section 15 Affidavit even if the proceeding was instituted after the owner filed the Section 15 Affidavit.

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.

Celia Abednego

/Celia C. Abednego/

Post Registration Division (on work project)

celia.abednego@uspto.gov (for inquiries only)

571-272-9492

571-273-9500 (fax)

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

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.