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: 3/6/2012

Serial Number  77890805

On August 2, 2011, the notice of allowance issued, instructing the applicant to either submit a Statement of Use or a request for extension of time to file a Statement of Use (extension request) within six (6) months of the issuance date of the notice of allowance, i.e., by February 2, 2012.  15 U.S.C. §1051(d); 37 C.F.R. §2.88-89; TMEP §§1108.02, 1109.01.  On February 2, 2012, the applicant submitted a document called “Response to Intent-to-Use/Divisional (ITU/Divisional) Unit Office action with a specimen.”   This document is unacceptable, because it does not meet the minimum filing requirements for filing either a Statement of Use or an extension request.

MINIMUM FILING REQUIREMENTS FOR STATEMENTS OF USE:  In addition to timely filing the Statement of Use within six months of the issue date of the notice of allowance or within a previously granted extension of time, the minimum filing requirements for a Statement of Use are as follows:  (1) the prescribed fee for at least one class; (2) one specimen showing the mark used in commerce; and (3) a statement that “the mark is in use in commerce,” verified in an affidavit or declaration under 37 C.F.R. §2.20 and signed by applicant or a person authorized by applicant.  15 U.S.C. §1051(d); 37 C.F.R. §2.88; TMEP §§1109, 1109.01, 1109.04; see 37 C.F.R. §2.193(e)(1).

MINIMUM FILING REQUIREMENTS FOR EXTENSION REQUESTS:  In addition to the requirement to timely file the extension request within six months of the issuance date of the notice of allowance or within a previously granted extension of time, the minimum filing requirements for extension requests are as follows:  (1) a written request; (2) the prescribed fee for one class of goods and/or services; and (3) a statement that “applicant has a continued bona fide intention to use the mark in commerce on all the goods and/or services in the notice of allowance,” (or if goods and/or services are to be deleted from the application, specifying those goods and/or services that applicant still has an intention to use the mark on), verified in an affidavit or declaration under 37 C.F.R. §2.20, and personally signed by applicant or a person authorized by applicant.  15 U.S.C. §1051(d); 37 C.F.R. §2.89; TMEP §§1108.02 et seq.; see 37 C.F.R. §2.193(e)(1). 

OTHER REQUIREMENTS:  In addition to the minimum filing requirements, an extension request must be filed by the owner of the mark and the fees for all classes specified in the notice of allowance must be submitted.  For second and subsequent extension requests, a verified showing of good cause is required that specifies applicant’s ongoing efforts to make use of the mark in commerce (e.g., product/service research and development, steps to obtain government approval, etc.).  Id.

Accordingly, the above-identified APPLICATION IS ABANDONED because the applicant failed to file a Statement of Use or an extension request.

APPLICANT’S OPTIONS:  Applicant has the option to (1) file a petition to revive this application under 37 C.F.R. §2.66 before expiration of the two month period after the issuance date of the notice of abandonment (the notice of abandonment will issue shortly after this Office action) or (2) file a new application.  Please view the online information sheet at http://www.gov.uspto.report/teas/petinfo.htm for information about petitions to revive.  Applicant is encouraged to file a petition to revive online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html.

Please be advised that, in this situation, if the applicant files a petition to revive, the applicant must submit an extension request with the petition and may also submit a Statement of Use, if applicant is already using the mark in commerce.  Alternatively, the Statement of Use may be submitted at a later date, after the petition to revive and the extension request have been granted.

 Please call the undersigned with any questions.

/Lynette Patterson/

Lynette Patterson

Paralegal Specialist

ITU/Divisional Unit

Phone - (571) 272-9507

Fax - (571) 273-9507

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.