UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 1/30/2009

 

This letter responds to the communication filed on December 30, 3008.  Please note that all issues not discussed in this office action have been resolved.  The examining attorney maintains and continues the §2(e)(4) refusal and ownership requirement.  The amended identification is acceptable.

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

The examining attorney issues this action because of a new issue raised in the applicant’s response as explained in the message left for the applicant’s attorney on January 21, 2009.

 

 

ENTITY

 

Applicant has requested that the owner name of record be amended.  Applicant does not appear to have submitted or recorded documents showing a name change or a transfer of ownership of the mark in the application.  Here, the amendment appears to be a complete substitution of the original applicant for a different applicant, rather than merely correcting the way in which the original applicant was listed in the application.  Therefore, until applicant clarifies whether the proper party filed the original application and the assignee is a successor to applicant’s business, the request to amend the owner name is denied.

 

An intent-to-use application is void if it was filed in the name of a party who was not entitled to use the mark as of the application filing date.  37 C.F.R. §2.71(d); Am. Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000); TMEP §§803.06, 1201.02(b); see 15 U.S.C. §1051(b).  In addition, an intent-to-use application is void if, prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant’s business or to a portion of the applicant’s business to which the mark pertains, if that business is ongoing and existing.  15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996); TMEP §501.01(a).  A void application cannot be cured by amendment or assignment.  37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  In such cases, the true owner must file a new application.  TMEP §803.06.

 

If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another entity, then the new owner must submit documentation to establish a clear chain of title as follows:

 

(1)     The new owner must record an assignment, name change or other documentation affecting title with the Office’s Assignment Services Division showing a clear chain of title to the mark in the new owner, and promptly notify the examining attorney that such documentation has been recorded; or

 

(2)     The new owner must submit either a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33, explaining in detail the chain of title to the current owner, or submit documentation showing transfer of title to the new owner.

 

37 C.F.R. §3.73(b)(1); TMEP §502.01; see 15 U.S.C. §1060.

 

Assignments can be filed electronically at http://etas.gov.uspto.report/.  There is a fee for recording such ownership changes.  37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d).

 

If the party applying to register the mark is in fact the owner of the mark, but there is a typographical error or other minor mistake in the manner in which the name of the applicant is set forth in the application, the mistake may be corrected by amendment.  U.S. Pioneer Elecs. Corp. v. Evans Mktg., Inc., 183 USPQ 613 (Comm’r Pats. 1974); see TMEP §1201.02(c) (providing examples of correctable and non-correctable errors). 

 

A declaration under 37 C.F.R. §2.20 follows below [NOTE: the declaration does not contain any required statement]:

 

The undersigned 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 the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

                                                                                                       

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

COPIES OF DOCUMENTS

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: http://portal.gov.uspto.report/external/portal/tow.  Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

 

QUESTIONS ABOUT THIS ACTION

 

For questions regarding the legal issues raised in this action, please contact the undersigned attorney.  Please note that the examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application.  See In re American Physical Fitness Research Institute Inc., 181 USPQ 127 (TTAB 1974).

 

If needed, the applicant should contact the Trademark Assistance Center (TAC) for technical help in using the Trademark Electronic Application System (TEAS).  TAC may be reached via e-mail at TEAS@uspto.gov.  TAC may also be reached by telephone at (571) 272-9250 or (800) 786-9199.  TAC technical support is available 24 hours a day, 7 days a week (select option # 3 if calling).

 

For all other non-legal matters, including status inquiries and petitions to revive or reinstate an application, please contact TAC.  For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time, Monday through Friday, except on federal holidays.

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209

571.273.9114 Law Office Facsimile

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 1/30/2009 FOR

APPLICATION SERIAL NO. 77510858

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77510858&doc_type=OOA&mail_date=20090130 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 1/30/2009.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.