UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION
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U.S. REGISTRATION NO. 4242213
OWNER: CERULEAN PHARMA INC.
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CORRESPONDENT’S ADDRESS: |
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MARK: CERULEAN
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CORRESPONDENT’S REFERENCE/DOCKET NO. TPHA 0812164
CORRESPONDENT’S EMAIL ADDRESS: |
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CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:
http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp
ISSUE/MAILING DATE: 12/30/2017
U.S. Registration Number 4242213
The Section 8 Affidavit, filed on December 11, 2017, is not accepted for the reason(s) set forth below.
Ownership
(1) If the present owner chooses to record the appropriate documents with the Assignment Services Branch, the documents must be recorded before expiration of the time for filing a response. In addition, you must notify the undersigned when the documents have been recorded. For information regarding recording assignments, name changes and mergers, please visit the webpage http://www.gov.uspto.report/web/trademarks/workflow/assign.htm and see TMEP §§503 et seq. For specific questions, please contact the Assignment Services Branch at 571-272-3350. To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov. To record an assignment, the owner must submit the assignment documents along with a cover sheet and the required fee. 37 C.F.R. §§3.28, 3.31. The fees for recording an assignment are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document. 37 C.F.R. §2.6(b)(6). The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title. 37 C.F.R. §3.25.
(2) If the present owner prefers to submit actual evidence of ownership directly to the undersigned trademark specialist, copies of the actual documents transferring title or a statement explaining the valid transfer of legal title must be submitted. If submitting a statement of facts explaining the transfer of title, this statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §3.73; TMEP §§502 et seq.
Acceptance Notice Issued in Name of Owner of Record
Please note that if the party who filed the Section 8 Affidavit submits sufficient evidence to establish ownership but the ownership documents are not recorded with the Assignment Services Branch before expiration of the time to file a response, then the acceptance notice will issue in the name of the owner of record. 37 C.F.R. §3.85; TMEP §502.02. An updated acceptance notice will not issue if ownership documents are recorded following the expiration of the time to file a response; however, the new owner may file a request for a new certificate in the new owner’s name, along with the required fee. See 37 C.F.R. §2.6(a)(8); TMEP §502.03.
There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership. TMEP §1604.07(a).
Information for Section 8 Affidavits Not Filed in the Name of the Owner
If the Section 8 Affidavit was not filed in the name of the owner of the registration and there is time remaining in the statutory filing period, including grace period, when responding to this Office action, the true owner may (1) submit a correction of the name in the filing of record or (2) file a complete new Section 8 Affidavit with a new specimen and filing fee. Please note that a deficiency surcharge is required if the Section 8 Affidavit was submitted before the grace period began and a correction of the name in the filing of record is received during the grace period. 37 C.F.R. §2.164(a)(1); TMEP §1604.17(a). The deficiency surcharge is $100 if submitted online using the Trademark Electronic Application System (“TEAS”) and $200 if submitted on paper. 37 C.F.R. §2.6. The fee for filing a Section 8 Affidavit is $125 per class for filings submitted through TEAS and $225 per class for filings submitted on paper. 37 C.F.R. §2.6. If the new Section 8 Affidavit is filed during the six-month grace period, the owner must pay the filing fee for the Section 8 Affidavit and the grace period fee. 15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161; TMEP §1604.07(a). The grace period fee is $100 per class for filings submitted through TEAS and $200 per class for filings submitted on paper. 37 C.F.R. §2.6.
If the Section 8 Affidavit was not filed in the name of the owner of the registration and there is no time remaining in the grace period when responding to this Office action, the true owner may submit a correction of the name in the filing of record with payment of the deficiency surcharge, but may not file a new Section 8 Affidavit. 15 U.S.C. §1058.
Confirmation Required: Affidavit Signed by Authorized Signatory
If a correction of the name in the filing of record is submitted at any time, the true owner must confirm that the original affidavit was signed by a person properly authorized to sign on behalf of the owner. 37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a). If the original affidavit was not signed by an authorized signatory, the owner must also submit a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, attesting to the use or excusable nonuse of the mark during the relevant period for filing the 6-year Section 8.
Assignment Information
For information regarding how to record ownership documents such as assignments, name changes and mergers, please see TMEP §§503 et seq. For specific questions, please contact the Assignment Services Branch at 571-272-3350. To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov. There is a fee for recording ownership documents.
To record an assignment, the owner must submit the assignment documents along with a cover sheet and the required fee. 37 C.F.R. §§3.28, 3.31. The fees for recording an assignment are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document. 37 C.F.R. §2.6(b)(6). The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title. 37 C.F.R. §3.25.
The registration lists the following classes of goods and/or services: class(es) 5 and 42. The specimen(s) submitted with the Section 8 Affidavit is not acceptable for class(es) 5 and 42 because it does not show current use of the mark for class(es) 5 and 42.
Therefore, the owner must submit the following:
(1) A substitute specimen for class(es) 5 and 42 showing current use of the registered mark in commerce for the goods and/or 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 6-year Section 8.” 37 C.F.R. §2.161(g); TMEP §1604.12(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. 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.
The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit, if properly signed and dated:
The substitute specimen was in use in commerce during the relevant period for filing the 6-year Section 8.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and 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
The following persons are properly authorized to sign a Section 8 Affidavit on behalf of the owner:
(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).
DEFICIENCY SURCHARGE INFORMATION: If the response to this Office action is received by the Office after 6th year anniversary date, a $100 deficiency surcharge must be submitted if the response is submitted online using the Trademark Electronic Application System (“TEAS”) and a $200 deficiency surcharge must be submitted if the response is submitted on paper. 37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a). (Note: This only applies when the response time deadline above falls after the 6th year anniversary date.)
ADVISORY: If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the owner may avoid cancellation of its registration by filing a new affidavit of use within the grace period. 37 C.F.R. §2.163(c). Additional fees are required to file a new affidavit during the grace period. 37 C.F.R. §2.161(d)(1)-(2). For more information about this, please contact the undersigned.
/Faith A. Baker/
Trademark Specialist
Trademark Services
Post Registration Division
571-272-9548
571-273-9548-fax
faith.baker@uspto.gov
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist.
E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this registration will be placed in the official registration record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.