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:  September 17, 2020

The Combined Section 8 Affidavit & Section 9 Renewal Application submitted on August 10, 2020, cannot be accepted for the reasons set forth below.

COMBINED SECTION 8 AFFIDAVIT AND SECTION 9 RENEWAL ISSUES

Owner/holder must provide owner’s/holder’s domicile address.  All post registration filings must include the owner’s/holder’s domicile address, and domicile dictates whether an owner/holder is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the owner/holder at the USPTO.  See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). 

An individual owner’s/holder’s domicile is the place a person resides and intends to be the person’s principal home.  See 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity owner’s/holder’s domicile is the principal place of business, i.e., headquarters, where a juristic entity’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(p); Examination Guide 4-19, at I.A.  An owner/holder whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

The post registration filing lists the owner/holder as a juristic entity and specifies the owner’s/holder’s domicile as a post office box instead of a street address.  In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of the owner’s/holder’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3.  Thus, the owner/holder must provide its domicile street address.  See 37 C.F.R. §2.189.  Alternatively, an owner/holder may demonstrate that the listed address is, in fact, the owner’s/holder’s domicile.  Examination Guide 4-19, at I.A.3.

If the owner/holder amends the post registration filing to list a domicile street address located outside of the United States or its territories, the owner/holder is foreign-domiciled and must appoint a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14 as its representative before the post registration filing may be accepted and/or acknowledged, or granted.  See Hiring a U.S.-licensed trademark attorney for more information.  If the owner’s/holder’s domicile street address is located within the United States or its territories, the owner/holder is not required to appoint a U.S.-licensed attorney.

To appoint a U.S.-licensed attorney.  To appoint an attorney, the owner/holder should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form.  The newly-appointed attorney must submit a TEAS Response to Post-Registration Office action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. 

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, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled and will expire in its entirety.  37 C.F.R. §§2.163(b)-(c) and 2.184(b); 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.

Rosalind Howard

/Rosalind Howard/

Lead Trademark Specialist

Post Registration

Phone 571-272-9363

Rosalind.Howard@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.