| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form No Form Number (Rev 01/2012) |
| OMB No. 0651-0055 (Exp 10/31/2021) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77428980 |
| REGISTRATION NUMBER | 4088195 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/77428980/mark.png |
| LITERAL ELEMENT | APPLE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| FORM TEXT | |
|
Registrant timely responds herein to the USPTO’s Post-Registration Office Action (the “Office Action”) dated December 13, 2018.[1] The Office Action reports that the USPTO cannot acknowledge the Section 15 portion of Registrant’s Sections 8 & 15 Combined Affidavit, because a third party filed a petition to cancel the registration more than two monthsafterRegistrant filed its Section 15 Affidavit.
The Office Action correctly notes that the cancellation action was not pending when the Section 15 Affidavit was filed. It asserts, however, that TMEP § 1605.04 would have the USPTO withhold acknowledgment of a Section 15 Affidavit when a cancellation proceeding is instituted after a Section 15 Affidavit is filed. Id.
The full text of TMEP § 1605.04 confirms that the USPTO may indeed withhold Section 15 acknowledgement if an action is instituted after the Section 15 filing. That authority, however, applies only in cases, unlike Registrant’s, in which a proceeding is instituted before the USPTO reviews the Section 15 Affidavit:
If the USPTO finds that there is a proceeding pending that involves the owner’s right to register the mark or to keep the mark on the register, the USPTO will not acknowledge the affidavit or declaration, even if the proceeding was instituted after the owner filed the §15 affidavit or declaration but before the affidavit or declaration was reviewed by the USPTO.
Id. (Emphasis Added).
In this case, the USPTO had already reviewed Registrant’s Section 15 Affidavit before the cancellation action was filed, so Registrant’s Section 15 is not subject to the withholding rule.
The USPTO had not only reviewed the Section 15 Affidavit before the cancellation action was instituted, it had communicated to the Registrant in writing that the Section 15 Affidavit was “acceptable.” The USPTO issued that written communication nearly four weeks beforethe cancellation action was instituted. The USPTO sent that communication to Registrant in a Post Registration Office Action,issued as part of the USPTO’s random audits to determine whether marks being maintained in Section 8 filings are in use with all of the goods/services identified in their respective registrations.
Accordingly, the relevant authority indicates that the USPTO should acknowledge Registrant’s Section 15 Affidavit, as prescribed in TMEP § 1605.04, 15 U.S.C. §§1065(1), (2), and 37 C.F.R. §2.167(d), (e).
For ease of reference, here is the relevant timeline:
January 17, 2018: Registrant timely files its Combined Declaration under Sections 8 & 15.
February 22, 2018: After reviewing the Combined Declaration, the USPTO issues a random post-registration Office Action audit request, addressing only the Section 8 portion of Registrant’s filing. The USPTO confirms in writing to Registrant in that audit that it had already reviewed and found the Section 15 acceptable. The USPTO’s communication to Registrant notes: “The Sections 8 & 15Combined Affidavit received on 1/17/2018 is otherwise acceptable; however, the owner of the registration must comply with an audit as explained below.” (Emphasis added.)
March 19, 2018: A petition to cancel the subject registration is filed with the TTAB See http://ttabvue.gov.uspto.report/ttabvue/v?pno=92068213&pty=CAN(Cancellation No. 92068213). The petitioner filed his action nearly four weeks after the USPTO had sent Registrant written confirmation that its Section 15 Affidavit had been reviewed and found acceptable.
Accordingly, the plain text of the USPTO’s February 22, 2018, Office Action audit confirms unequivocally that Registrant’s Section 15 Affidavit meets the TMEP’s requirement of having been “reviewed by the USPTO” prior to the cancellation’s institution. Not only had the USPTO reviewed the Section 15, it confirmed that it had found the Section 15 “acceptable.”
Consequently, maintaining a refusal to acknowledge the Section 15 is unsupported by the relevant authority and would be improper. This is so especially because the Office Action audit related to Registrant’s Section 8 filing and had no bearing on Registrant’s Section 15 Affidavit, which the USPTO had already reviewed.[2]
The only reason that the USPTO did not acknowledge Registrant’s timely filed Section 15 on February 22 is that the Section 8 portion of the Combined Declaration was randomly subjected to the USPTO’s Post-Registration Audit Program.[3] Had Registrant filed its Section 15 separately from its Section 8, the Section 8 audit would not have delayed issuance of the USPTO’s Section 15 Acknowledgement. The same would be true had Registrant’s registration not been randomly selected a Section 8 audit. Furthermore, Registrant’s Response to the audit request satisfied the USPTO in full, and the USPTO approved the Section 8 Declaration in its entirety.
The USPTO offers registrants the option to file a Combined Section 8 and 15 Declaration for administrative efficiency. Trademark owners enjoy the benefit of a single filing, and the USPTO enjoys greater efficiency in assigning a single examiner to review the combined filing. If the USPTO were to erroneously withhold acknowledgement of the Section 15, because the Registrant filed it in combination with a Section 8 that was later randomly audited, the USPTO would signal to trademark owners a strong incentive to double the number of post-registration filings, by forgoing the more efficient Combined 8 & 15 Declaration, to avoid an unnecessary risk associated with filing the more efficient Combined 8 & 15 Declaration.
Consequently, a misapplication of TMEP§ 1605.04 would have the unintended consequence of encouraging registrants to avoid using the efficient Combined Declaration form.
For the reasons set out above, Registrant respectfully requests that the USPTO issue notice acknowledging Registrant’s January 17, 2018-filed Section 15 Affidavit, which the USPTO reviewed and found acceptable nearly four weeks before a third party filed a cancellation action.
Should the USPTO have any questions or would like to discuss this matter, please contact the below-signed Attorney of Record. Thank you. [1]The December 13 Office Action supersedes two, earlier-issued Office Actions that included factual errors (one on September 27, 2018 and the other on December 12, 2018). The subject of this Response addresses the same issue common to all three Office Actions. Therefore, for the sake of economy, by referring to the December 13 Office Action, Registrant addresses the same issue raised in all three Office Actions. [2]See February 22 audit action (“The USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register. See 37 C.F.R. §§ 2.161(h), 7.37(h). This registration has been randomly selected for audit to determine whether the mark is in use with all of the services identified in the registration.”)
The cited CFR authorities relate to the USPTO’s authority to request additional information from a registrant for the proper examination of a Section 8 or Section 71 Declaration of Use. See 37 C.F.R. § 2.161(h) (“The Office may require the owner to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 of the Act or for the Office to assess and promote the accuracy and integrity of the register.”); see also 37 C.F.R. § 7.37(h) (“The Office may require the holder to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 71 of the Act or for the Office to assess and promote the accuracy and integrity of the register.”).
[3]The Audit Program selects at random Section 8 filings that include four or more goods/services in a single class. See http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program(no discussion of the Audit Program affecting the acceptability of a registrant’s Section 15 that is filed with the USPTO). |
|
| Substitute specimen bypass warning provided | The filer has elected to bypass the checkbox indicating that a substitute specimen was in use in commerce during the relevant period for filing the 6-year or 10-year Section 8/71. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Karen Marie Kitterman/ |
| SIGNATORY'S NAME | Karen Marie Kitterman |
| SIGNATORY'S POSITION | Attorney of Record, California bar member |
| SIGNATORY'S PHONE NUMBER | 669-227-7171 |
| DATE SIGNED | 03/08/2019 |
| SUBMISSION SIGNATURE | /Karen Marie Kitterman/ |
| SIGNATORY'S NAME | Karen Marie Kitterman |
| SIGNATORY'S POSITION | Attorney of Record, California bar member |
| SIGNATORY'S PHONE NUMBER | 669-227-7171 |
| DATE SIGNED | 03/08/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Mar 08 22:04:38 EST 2019 |
| TEAS STAMP | USPTO/TRS-XX.XXX.XXX.XX-2 0190308220438864923-40881 95-20190308213247229301-N /A-N/A-201903082132472293 01 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form No Form Number (Rev 01/2012) |
| OMB No. 0651-0055 (Exp 10/31/2021) |
Registrant timely responds herein to the USPTO’s Post-Registration Office Action (the “Office Action”) dated December 13, 2018.[1] The Office Action reports that the USPTO cannot acknowledge the Section 15 portion of Registrant’s Sections 8 & 15 Combined Affidavit, because a third party filed a petition to cancel the registration more than two monthsafterRegistrant filed its Section 15 Affidavit.
The Office Action correctly notes that the cancellation action was not pending when the Section 15 Affidavit was filed. It asserts, however, that TMEP § 1605.04 would have the USPTO withhold acknowledgment of a Section 15 Affidavit when a cancellation proceeding is instituted after a Section 15 Affidavit is filed. Id.
The full text of TMEP § 1605.04 confirms that the USPTO may indeed withhold Section 15 acknowledgement if an action is instituted after the Section 15 filing. That authority, however, applies only in cases, unlike Registrant’s, in which a proceeding is instituted before the USPTO reviews the Section 15 Affidavit:
If the USPTO finds that there is a proceeding pending that involves the owner’s right to register the mark or to keep the mark on the register, the USPTO will not acknowledge the affidavit or declaration, even if the proceeding was instituted after the owner filed the §15 affidavit or declaration but before the affidavit or declaration was reviewed by the USPTO.
Id. (Emphasis Added).
In this case, the USPTO had already reviewed Registrant’s Section 15 Affidavit before the cancellation action was filed, so Registrant’s Section 15 is not subject to the withholding rule.
The USPTO had not only reviewed the Section 15 Affidavit before the cancellation action was instituted, it had communicated to the Registrant in writing that the Section 15 Affidavit was “acceptable.” The USPTO issued that written communication nearly four weeks beforethe cancellation action was instituted. The USPTO sent that communication to Registrant in a Post Registration Office Action,issued as part of the USPTO’s random audits to determine whether marks being maintained in Section 8 filings are in use with all of the goods/services identified in their respective registrations.
Accordingly, the relevant authority indicates that the USPTO should acknowledge Registrant’s Section 15 Affidavit, as prescribed in TMEP § 1605.04, 15 U.S.C. §§1065(1), (2), and 37 C.F.R. §2.167(d), (e).
For ease of reference, here is the relevant timeline:
January 17, 2018: Registrant timely files its Combined Declaration under Sections 8 & 15.
February 22, 2018: After reviewing the Combined Declaration, the USPTO issues a random post-registration Office Action audit request, addressing only the Section 8 portion of Registrant’s filing. The USPTO confirms in writing to Registrant in that audit that it had already reviewed and found the Section 15 acceptable. The USPTO’s communication to Registrant notes: “The Sections 8 & 15Combined Affidavit received on 1/17/2018 is otherwise acceptable; however, the owner of the registration must comply with an audit as explained below.” (Emphasis added.)
March 19, 2018: A petition to cancel the subject registration is filed with the TTAB See http://ttabvue.gov.uspto.report/ttabvue/v?pno=92068213&pty=CAN(Cancellation No. 92068213). The petitioner filed his action nearly four weeks after the USPTO had sent Registrant written confirmation that its Section 15 Affidavit had been reviewed and found acceptable.
Accordingly, the plain text of the USPTO’s February 22, 2018, Office Action audit confirms unequivocally that Registrant’s Section 15 Affidavit meets the TMEP’s requirement of having been “reviewed by the USPTO” prior to the cancellation’s institution. Not only had the USPTO reviewed the Section 15, it confirmed that it had found the Section 15 “acceptable.”
Consequently, maintaining a refusal to acknowledge the Section 15 is unsupported by the relevant authority and would be improper. This is so especially because the Office Action audit related to Registrant’s Section 8 filing and had no bearing on Registrant’s Section 15 Affidavit, which the USPTO had already reviewed.[2]
The only reason that the USPTO did not acknowledge Registrant’s timely filed Section 15 on February 22 is that the Section 8 portion of the Combined Declaration was randomly subjected to the USPTO’s Post-Registration Audit Program.[3] Had Registrant filed its Section 15 separately from its Section 8, the Section 8 audit would not have delayed issuance of the USPTO’s Section 15 Acknowledgement. The same would be true had Registrant’s registration not been randomly selected a Section 8 audit. Furthermore, Registrant’s Response to the audit request satisfied the USPTO in full, and the USPTO approved the Section 8 Declaration in its entirety.
The USPTO offers registrants the option to file a Combined Section 8 and 15 Declaration for administrative efficiency. Trademark owners enjoy the benefit of a single filing, and the USPTO enjoys greater efficiency in assigning a single examiner to review the combined filing. If the USPTO were to erroneously withhold acknowledgement of the Section 15, because the Registrant filed it in combination with a Section 8 that was later randomly audited, the USPTO would signal to trademark owners a strong incentive to double the number of post-registration filings, by forgoing the more efficient Combined 8 & 15 Declaration, to avoid an unnecessary risk associated with filing the more efficient Combined 8 & 15 Declaration.
Consequently, a misapplication of TMEP§ 1605.04 would have the unintended consequence of encouraging registrants to avoid using the efficient Combined Declaration form.
For the reasons set out above, Registrant respectfully requests that the USPTO issue notice acknowledging Registrant’s January 17, 2018-filed Section 15 Affidavit, which the USPTO reviewed and found acceptable nearly four weeks before a third party filed a cancellation action.
Should the USPTO have any questions or would like to discuss this matter, please contact the below-signed Attorney of Record. Thank you.
[1]The December 13 Office Action supersedes two, earlier-issued Office Actions that included factual errors (one on September 27, 2018 and the other on December 12, 2018). The subject of this Response addresses the same issue common to all three Office Actions. Therefore, for the sake of economy, by referring to the December 13 Office Action, Registrant addresses the same issue raised in all three Office Actions.
[2]See February 22 audit action (“The USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register. See 37 C.F.R. §§ 2.161(h), 7.37(h). This registration has been randomly selected for audit to determine whether the mark is in use with all of the services identified in the registration.”)
The cited CFR authorities relate to the USPTO’s authority to request additional information from a registrant for the proper examination of a Section 8 or Section 71 Declaration of Use. See 37 C.F.R. § 2.161(h) (“The Office may require the owner to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 of the Act or for the Office to assess and promote the accuracy and integrity of the register.”); see also 37 C.F.R. § 7.37(h) (“The Office may require the holder to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 71 of the Act or for the Office to assess and promote the accuracy and integrity of the register.”).
[3]The Audit Program selects at random Section 8 filings that include four or more goods/services in a single class. See http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program(no discussion of the Audit Program affecting the acceptability of a registrant’s Section 15 that is filed with the USPTO).