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:  November 14, 2019

Status

Your response to the outstanding Office action regarding the Combined Section 8 Affidavit & Section 9 Renewal Application was timely received on 9.18.2019.

Upon review of your response, the following issues were resolved: acceptable specimen provided.

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 services identified in the registration, the owner of the registration was required to submit proof of use for two additional goods and/or services 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.

Specifically, you have established acceptable proof of use for: Distribution of customized promotional products for advertising purposes. 

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 services 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 services:

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… pencils;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… pen holders;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… bag tags;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,…  sunscreen;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… sanitizer;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… safety glasses

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely… eyewear retainers;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… optical cases;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… compasses;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… cutting tools;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… leashes;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… pedometers;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… key rings;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… desk clocks;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… coasters;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,.. calendars;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,.. memo pads;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… memo pad holders;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… mouse pads;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… office novelties;

·         Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely,… sculptures;

·         Electronic catalog services featuring customizable promotional products, namely, … pencils;

·         Electronic catalog services featuring customizable promotional products, namely, pen holders;

·         Electronic catalog services featuring customizable promotional products, namely,… bag tags;

·         Electronic catalog services featuring customizable promotional products, namely,…  sunscreen;

·         Electronic catalog services featuring customizable promotional products, namely,… sanitizer;

·         Electronic catalog services featuring customizable promotional products, namely,… safety glasses;

·         Electronic catalog services featuring customizable promotional products, namely,… eyewear retainers;

·         Electronic catalog services featuring customizable promotional products, namely,…  optical cases;

·         Electronic catalog services featuring customizable promotional products, namely,… compasses;

·         Electronic catalog services featuring customizable promotional products, namely,… cutting tools;

·         Electronic catalog services featuring customizable promotional products, namely,… leashes;

·         Electronic catalog services featuring customizable promotional products, namely,… pedometers;

·         Electronic catalog services featuring customizable promotional products, namely,… key rings;

·         Electronic catalog services featuring customizable promotional products, namely,… desk clocks;

·         Electronic catalog services featuring customizable promotional products, namely,… coasters;

·         Electronic catalog services featuring customizable promotional products, namely,…  calendars;

·         Electronic catalog services featuring customizable promotional products, namely,… memo pads;

·         Electronic catalog services featuring customizable promotional products, namely,…  memo pad holders;

·         Electronic catalog services featuring customizable promotional products, namely,… mouse pads;

·         Electronic catalog services featuring customizable promotional products, namely,… office novelties; and

·         Electronic catalog services featuring customizable promotional products, namely,… sculptures

(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. 

To demonstrate acceptable proof of use for goods, the owner or holder/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.  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 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 or holder/owner responds with unacceptable proof of use for any goods and/or services queried, the Office will delete these goods and/or services 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.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  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, 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 and 1606.12.

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.