To: | Celtic F.C. Limited (DOCK@hrfmlaw.com) |
Subject: | U.S. Trademark Registration No. 4033044 - THE CELTIC FOOTBALL CLUB 1888 - 5362.001 |
Sent: | 11/03/21 12:52:37 PM |
Sent As: | prg@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Owner’s Trademark Registration
U.S. Registration No. 4033044
Mark: THE CELTIC FOOTBALL CLUB 1888
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Correspondence Address: |
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Owner: Celtic F.C. Limited
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Reference/Docket No. 5362.001
Correspondence Email Address: |
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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 3, 2021
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.
*This Office Action supersedes the prior action which, due to a computer glitch, issued prior to completion. The undersigned apologizes for any confusion and/or inconvenience.
Issue date: November 3, 2021
WARNING: Failure to timely respond to this Office action will result in the cancellation of the entire registration. 37 C.F.R. §§2.163(c), 7.39(b).
The Combined Section 8 Affidavit or Declaration & Section 9 Renewal Application, received on October 4, 2021, cannot be accepted until the owner/holder complies with the audit requirements explained below.
#1 of 2 – Identification of Goods in Int’l Classes 9, 21, 50, 26 and 28 only
Class 9:
Class 21:
Class 24:
Class 26:
· heat adhesive ornamental cloth patches
Class 28:
· hand-held units for playing electronic games other than those adapted for use with television receivers only or for use with external display screen or monitor
#2 of 2 - Registration Selected for Audit
The USPTO has randomly selected this registration for audit to determine whether the mark is in use with all of the goods and/or services identified in the affidavit or declaration of use submitted to maintain the registration. The USPTO performs random audits of U.S. trademark registrations to assess and promote the accuracy and integrity of the trademark register. See 37 C.F.R. §§2.161(b), 7.37(b).
Detailed information regarding the audit program is provided on the Post Registration Audit Program webpage. Please note that registration owners/holders are expected to have conducted a reasonable inquiry to confirm use of their marks in commerce (or excusable nonuse) with all goods and services they include in the Section 8 or 71 affidavit or declaration submitted to maintain the registration. See 15 U.S.C. §§1058(b), 1141k(b). If the owner/holder does not submit acceptable proof of use of the mark for the goods and/or services selected for audit, the affidavit or declaration of use cannot be accepted. The owner/holder may delete goods or services from the registration for which proof of use cannot be provided in response to the audit, but must pay a $250 per class fee each time goods or services, or entire classes, are deleted. See 37 C.F.R. §§2.6(a)(12)(ii), 2.161(c), 7.6(a)(6)(iv), 7.37(c).
The owner/holder must take one of the following actions to satisfy the requirements of the audit:
(1) Submit proof of use of the registered mark for the two additional goods and/or services per class specified below and submit a statement verifying the proof of use.
The following goods and/or services have been selected for audit.
Class 9:
· calculators
· accessories for mobile phones, namely, lanyards
Class 16:
· Christmas cards
· Passport holders
Class 20:
· containers of wood and of plastic, namely, packaging containers
· plastic pennants
Class 21:
· lunch boxes
· food and/or drink containers for pets, namely, pet feeding dishes
Class 24:
· cloth flags
· plastic table covers
Class 25:
· clothing, namely, skirts
· football boots
Class 26:
· rosettes used as a badge heat adhesive ornamental cloth patches
Class 28:
· teddy bears
· sporting articles, namely, articles for use in the games of football/soccer and rugby, namely, goalkeeper's gloves
Class 36:
· Insurance agency and brokerage in the field of travel insurance;
· Insurance agency and brokerage in the field of health insurance;
Class 41:
· rental of stadium facilities
· soccer schools, namely, soccer camps
Examples of proof of use. Proof of use must demonstrate current use of the mark in commerce with the good(s) and/or in the sale or advertising of the service(s) selected for audit. In particular, proof of use is evidence that clearly shows how you are using your mark in commerce on the specific audited good(s) or service(s). It may be an actual image, such as a photograph, scanned copy, or screen capture, of the physical item. Acceptable proof of use for goods includes the mark shown on the actual goods or their packaging, or displays associated with the actual goods at their point of sale. See 37 C.F.R. §2.56(b)(1), (c); see TMEP §904.03(a)-(m). Tags or labels must be shown affixed to the goods or must consist of actual tags or labels that identify the specific goods on which they are used and include informational matter that typically appears on a tag or label in use in commerce for these types of goods. Similarly, packaging must show or identify the goods therein. A webpage submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. See 2.56(b)(1), (c); see TMEP §904.03(i). 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. See 37 C.F.R. §2.56(b)(2), (c); see TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as proof of use, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. See 37 C.F.R. §2.56(c).
Instructions for submitting proof of use. Clearly label or describe which good(s) and/or service(s) selected for audit is supported by each item submitted as proof of use. See 37 C.F.R. §§2.161(b), 7.37(b). In addition, if the submission includes multiple pages, please identify the relevant page numbers for the audited good(s) and/or service(s).
Instructions for submitting statement verifying proof of use. To provide the required verification in the electronic Response to Post-Registration Office action form, check the box located at the bottom of each class for which proof of use is provided to automatically populate the below required statement, and sign the declaration at the end of the form.
The owner/holder 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.
OR
(2) Delete audited (and all other) goods and/or services for which proof of use of the registered mark cannot be provided and/or for which use cannot be confirmed and pay the required deletion fee and submit proof of use with a verified statement for any remaining goods and/or services in the audited class(es).
If the owner/holder cannot provide proof of current use of the mark in commerce for the audited goods or services and any remaining goods and/or services listed in the audited class(es) in the affidavit or declaration submitted to maintain the registration, the owner/holder must delete those goods and/or services and submit a fee of $250 for each class in which goods and/or services are being deleted. 37 C.F.R. §§2.6(a)(12)(ii), 2.161(c), 7.6(a)(6)(iv), 7.37(c). If all goods and/or services for which the owner/holder cannot provide acceptable proof of use in the audited class(es) are deleted, the required deletion fee is paid, and only goods and/or services for which acceptable proof of use is provided remain in the audited class(es), the audit will conclude.
WARNING: A second Office action requiring proof of use for all remaining goods and/or services in the audited class(es) for which acceptable proof of use is not of record will issue if the owner/holder responds to this action by deleting any audited goods and/or services and not also providing proof of use showing current use of the mark in commerce with all remaining goods and/or services listed in the audited class(es) in the affidavit or declaration of use submitted to maintain the registration. See the instructions in option (1) above for submitting proof of use and the statement verifying proof of use.
Please note, if an additional Office action(s) is required because acceptable proof of use is not provided, and a subsequent response(s) includes a request to delete goods and/or services, the $250 fee for each class is incurred with each such request, even if the fee was paid for a previous deletion in the same class. See 37 C.F.R. §§2.161(c), 7.37(c).
DEFICIENCY SURCHARGE: Along with any required deletion fee(s), a one-time deficiency surcharge also may be required when correcting any deficiency in the affidavit or declaration, including if the owner/holder deletes goods and/or services to correct the listing of goods and/or services on or in connection with which the mark is in use in commerce specified in the affidavit or declaration. See 15 U.S.C. §§1058(b), (c), 1141k(b), (c); see 37 C.F.R. §§2.164(a), 7.39(c).
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.
Phillip D. White
/Phillip D. White/
Post Registration Audit Program
571-272-9665
phillip.white@uspto.gov (inquiries only
RESPONSE GUIDANCE