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:  July 8, 2019

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on 6.17.2019.  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.

Specimen Unacceptable

The specimen submitted with the Section 8 Affidavit is unacceptable because it does not reference the services specified in the registration. 

A specimen for a service mark must show use of the mark “in the sale or advertising of services.”  See Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(2).  Specimens for service marks must show an association between the mark and the services identified in the registration.  In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997).  If the specimen does not show the mark with reference to, or association with, the services, the specimen fails to show service mark usage.  See In re DSM Pharms., Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008).

Therefore, the owner must submit the following:

(1) A substitute specimen showing current use of the registered mark in commerce for each class of services specified in the registration; and

(2) 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.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

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.

Registration Selected for Audit

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 goods and/or services identified in 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.

To comply with the audit, you must submit proof of use of the registered mark for two additional goods and/or services per class.  Id.   If proof of use for the goods and/or services identified is not available, the identified goods and/or services and any other goods and/or services not currently in use should be deleted from the registration.

Therefore, the owner must submit the following:

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

·       Distribution of customized promotional products for advertising purposes;        and

·       Mail order catalog services featuring customizable promotional products, namely, … binoculars in International Class 35.

(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 and/or services that each individual piece of evidence of current proof of use supports.  See id.

Acceptable proof of use for services includes signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.

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 item(s) submitted as 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 your response to this Office action does not meet the requirements of the audit, or includes a request to delete the goods and/or services identified for the audit, and goods and/or services remain in the registration without acceptable proof of use, a second Office action will issue requiring proof of use for all remaining goods and/or services for which proof of use is not of record.  See 37 C.F.R. §§2.161(h), 7.37(h).  Therefore, the owner or holder/owner should delete all goods and/or services for which proof of use cannot be provided.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or on or before the registration expiration date of 8.4.2019, whichever is later.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation and/or expiration of the registration.  If a response is not received, and there is no time remaining in the grace period to file a new affidavit and/or renewal application, the registration will cancel and/or expire in its entirety. 37 C.F.R. §§2.163(b)-(c) and 2.184(b)(1); TMEP §§1604.16, 1606.12 and 1606.13(a).

DEFICIENCY SURCHARGE INFORMATION:  A $100 deficiency surcharge must be submitted if the response to this Office action is received by the Office after the registration expiration date of 8.4.2019 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 registration expiration date and the response is submitted on paper.  37 C.F.R. §§2.6, 2.164(a)(1) and 2.185(a)(1).

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the registrant may avoid cancellation and/or expiration of its registration by filing a new affidavit of use and a new renewal application within the grace period.  37 C.F.R. §§2.163(c) and 2.184(b)(1).  Additional fees are required to file a new renewal application during the grace period.  37 C.F.R. §§2.161(d)(1)-(2) and 2.183(b)-(c).  For more information about this, please contact the undersigned.

In spring 2019, the USPTO is likely to issue proposed changes to the federal trademark regulations to require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

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.

/Katrina J. Goodwin/

Examining Attorney

Law Office 122

571-272-7605

Katrina.Goodwin@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.