Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

INTENT TO USE OFFICE ACTION

ISSUE/MAILING DATE: 3/13/2013

Serial Number  77678262

The statement of use filed on February 26, 2013, does not meet the minimum filing requirements and is not accepted for the reason(s) set forth below.  Applicant may respond to this Office action by correcting the deficiencies noted below.  To avoid abandonment of the application, applicant’s response to this Office action must be received in the United States Patent and Trademark Office (USPTO) on or before August 26, 2013, the deadline for filing a statement of use or the previously granted extension period.  37 C.F.R. §2.88.

SUMMARY OF ISSUES that applicant must address:

·       Clarification of ownership

STATEMENT OF USE IS DEFICIENT AS FOLLOWS:

TYPOGRAPHICAL ERROR IN NAME OF APPLICANT MUST BE CORRECTED:  The owner of the mark shown in Office records is “AS IP Holldco, LLC;” however, the party who filed the statement of use is identified as “AS IP Holdco, LLC.”  The difference in the names appears to be a typographical error which can be corrected by amendment.  See TMEP §1201.02(c).  Accordingly, applicant must correct the typographical error in the applicant’s name as set out in the statement of use.  Id.  Applicant must submit a response to this Office action that explains the typographical error, and attach a substitute statement of use that states the proper owner name.

Applicant is strongly encouraged to review Section 1201.02(c) of the Trademark Manual of Examining Procedure (TMEP) to confirm that the error is correctible and notify the undersigned accordingly.  The TMEP is available online at the USPTO website at http://tess2.gov.uspto.report/tmdb/tmep/.

A statement of use cannot be amended to designate a party who was not the owner of the applied-for mark as of the filing date of the statement of use.  See 15 U.S.C. §1051(d)(1); 37 C.F.R. §§2.71(d), 2.88; In re Colombo Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994); TMEP §803.06.  A statement of use filed in the name of a party who is not the owner of the mark is void and cannot be corrected by amendment.  See Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, (TTAB 2007).  Although the party filing the statement of use must be the owner of the mark at the time of filing, evidence to establish ownership can be provided after expiration of the deadline for filing the statement of use.  See 37 C.F.R. §§2.88(b)(1), (e)(3), 3.71, 3.73; TMEP §1109.10.

If the response is received in the Office after the due date, the application will be abandoned. 

Applicant must respond to the outstanding issues raised in this Office action within the specified time period to avoid abandonment of the application. 

Please call the undersigned with any questions. 

/Lynette Patterson/

Lynette Patterson

Paralegal Specialist

ITU/Divisional Unit

Phone - (571) 272-9507

Fax - (571) 273-9507

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Intent-to-Use (ITU) Office action form at http://www.gov.uspto.report/teas/eTEASpageD.htm.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant.  If an applicant is represented by an attorney, the attorney must sign the response.

TEAS PLUS APPLICATION:  To maintain the reduced fee status, TEAS Plus applicant must respond online via TEAS.  Otherwise, applicant is subject to an additional $50 fee for each class.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(1)(i).

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER IDENTIFIED ABOVE.