To: | HELLA GMBH & CO. KGAA (rshapiro@sasiplaw.com) |
Subject: | TRADEMARK REGISTRATION NO. 4006887 - HELLA - CPA170206 |
Sent: | 09/24/18 03:58:08 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. 4006887
OWNER: HELLA GMBH & CO. KGAA
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CORRESPONDENT’S ADDRESS: |
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MARK: HELLA
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CORRESPONDENT’S REFERENCE/DOCKET NO. CPA170206
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: 9/24/2018
U.S. Registration Number 4006887
Your response to the outstanding Office action regarding the Sections 8 & 15 Combined Affidavit was timely received on September 6, 2018. Upon review of your response, the following issues remain:
Requirements for Audit Not Satisfied
As part of the audit to assess and promote the accuracy and integrity of the trademark register as to the actual use of the mark with the goods and/or services identified in the registration, the owner or holder/owner of the registration was required to submit proof of use for two additional goods and/or services per class. 37 C.F.R. §§2.161(h), 7.37(h). Although the owner or holder/owner submitted a response to the Office action, the owner or holder/owner did not sufficiently respond to the requirements of the audit.
Specifically, you have established acceptable proof of use for: lighting ballasts, in Class 09; and Electric light bulbs; Lighting apparatus for vehicles, in Class 11. However, acceptable proof has not been established for the remaining goods in the application.
The proof of use provided is unacceptable because it is merely advertising material. Applicant indicated that the specimen submitted was a catalog. However, the catalog fails to provide the means for ordering the goods, either in the form of an order form, or an entreaty for consumers to contact the company to order the relevant goods. As such, the catalog is merely advertising material. Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is unacceptable to show trademark use. TMEP §904.04(b). Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b)-(c). Furthermore, the catalog submitted is four years old, and therefore does not show that the mark is currently in use with the goods.
With respect to the requested software, page 109 of the Response appears to show the mark in use with software. However, this software appears to be Class 42 online non-downloadable software. Furthermore, it does not appear to perform the function of the requested software in the audit. As such, this is also unacceptable proof of use.
As the owner or holder/owner has not satisfied the requirements of the audit, the owner or holder/owner must verify the accuracy of the claim of use in the affidavit of use by providing proof of use for all the remaining goods and/or services in the registration without acceptable proof of use. Id.
Therefore, the owner or holder/owner must submit the following:
(1) Proof of current use of the registered mark in commerce for the following goods and/or services:
Automotive, industrial, construction, locomotive, aviation, navigation and marine safety-warning lights, namely, strobes, rotating lights and bar lights; lighting control panels; lighting control software for use in commercial and industrial facilities; lighting controls; luminous safety beacons; safety equipment, namely, safety-warning beacon lights; lighting beacons and strobes for airport runways, taxiways, ramps, approaches, and towers, in International Class 09; and
Ceiling lights; Electric lighting fixtures; Electric lighting fixtures, namely, power failure backup safety lighting; Electric lighting fixtures, namely, sconces; Electric track lighting units; Fiber optic lighting fixtures used in conjunction with electrical illuminators; Flat panel lighting apparatus; Fluorescent lighting tubes; Lamps for outdoor use; Landscape lighting installations; LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED and HID light fixtures; LED light assemblies for street lights, signs, commercial lighting, automobiles, buildings, and other architectural uses; LED light bulbs; LED lighting fixtures for indoor and outdoor lighting applications; Lighting apparatus for theatres, clubs and discotheques; Lighting fixtures; Lighting fixtures for use in parking decks and garages; Lighting fixtures for use in parking lots and walkways; Lights for illuminating stairs, doors and other portions of buildings; Outdoor lighting, namely, paver lights; Outdoor portable lighting products, namely, headlamps; Wall lights; lamps for street lighting; lamps for airport lighting; lamps for interior office lighting; lamps for interior residence lighting; lamps for facility lighting; Lights, lamps and lighting fixtures for furniture cabinets, furniture shelves, sales counters, work and living areas, cubicles and closets, in International Class 11; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The owner or holder/owner 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.” 37 C.F.R. §§2.161(h), 7.37(h).
To demonstrate acceptable proof of use for goods, the owner or holder/owner must submit photographs that show the mark on the actual goods or packaging, or photographs of displays associated with the actual goods at their point of sale. A tag or label that is not shown affixed to the goods is not acceptable proof of use. Similarly, a package that does not show or identify the goods therein is not acceptable proof of use. 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.
Form Declaration
Please note that the below statement verifying proof of use is slightly different than the standard substitute specimen statement.
The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the use of the mark as evidenced by the submitted item(s) showing proof of use, if properly signed and dated:
The owner or holder/owner 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.
The signatory 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 this submission, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.
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Signature of Authorized Person
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Type or Print Name
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Date
WARNING: If the owner or holder/owner responds with unacceptable proof of use for any goods and/or services queried, the Office will delete these goods and/or services from the registration.
Detailed information regarding the audit program is provided on the following webpage – http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program.
/Laura Golden/
Examining Attorney
Law Office 103
(571) 272-3928
laura.golden@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.