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:  December 11, 2020

The Combined Section 8 Affidavit & Section 9 Renewal Application received on December 2, 2020, is otherwise acceptable; however, the owner of the registration must comply with an audit as explained below. 

Registration Selected for Audit

The USPTO is performing random audits of U.S. trademark registrations to assess and promote the accuracy and integrity of the trademark register.  See 37 C.F.R. §§2.161(h), 7.37(h). This registration has been randomly selected for audit to determine whether the mark is in use with all of the services identified in the declaration of use submitted to maintain 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.

To comply with the audit, you must submit proof of use of the registered mark for two additional services per class.  Id. 

Specifically, the owner must submit the following:

(1)   Proof of current use of the registered mark in commerce for the following services:

“Medical spa services, namely, laser hair removal” and “full body massage services” in International Class 44; and

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The owner was using the mark in commerce on or in connection with the 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).

Additionally, you must identify the corresponding services supported by each item submitted as proof of use.  See id. 

Examples of proof of use.  Electronic proof of use may be an actual image, such as a photograph, scanned copy, or screen capture, of the physical item.

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. 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).

If proof of use for the requested services is unavailable, the identified services and any other services not currently in use should be deleted from the registration. Please see the WARNING below for the possible consequence of deleting any services identified for audit.

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 item(s) submitted as proof of use, if properly signed and dated:

The owner was using the mark in commerce on or in connection with the 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.

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

WARNING:  If your response to this Office action does not meet the requirements of the audit, or includes a request to delete any of the services identified for the audit, and services remain in the registration without acceptable proof of use, a second Office action will issue requiring proof of use for all remaining services for which proof of use is not of record.  See 37 C.F.R. §§2.161(h), 7.37(h).  Therefore, the owner should delete all services for which proof of use cannot be provided. 

If the owner deletes any audited services, it may provide proof of use for all remaining services for which proof of use is not of record to avoid a possible second Office action. 

Fee Changes

On January 2, 2021, the USPTO will be changing and establishing new fees for certain post registration filings.  See Trademark Fee Adjustment, 85 Fed. Reg. 73,197 (Nov. 17, 2020) (to be codified at 37 C.F.R. pts. 2 and 7).  One of the new fees will be required when a trademark owner deletes goods, services, or classes from a registration after a Section 8 or 71 Affidavit or Declaration is filed and before it is accepted.  This new fee is required for each request to delete filed on or after January 2, 2021, regardless of when the Section 8 or 71 Affidavit or Declaration was filed, and even if the fee was paid for a previous deletion in the same class.  However, this fee is not required if deletions are either made within the Section 8 or 71 Affidavit or Declaration or in a Section 7 Request filed before the Section 8 or 71 Affidavit or Declaration is filed.  See the fee rule webpage for more information about the fee changes.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or on or before the registration expiration date of February 22, 2021, whichever is later.  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)(1); TMEP §§1604.16 and 1606.12.

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the registrant may avoid cancellation and/or expiration of its registration by filing a new affidavit of use and a new renewal application within the grace period.  37 C.F.R. §§2.163(c) and 2.184(b)(1).  Additional fees are required to file a new renewal application during the grace period.  37 C.F.R. §§2.161(d)(1)-(2) and 2.183(b)-(c).  For more information about this, please contact the undersigned.

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.

/Celia Abednego/

Celia Abednego

United States Patent and Trademark Office

Post Registration Division (Work Project)

Wk. Phone: 571-272-9492

celia.abednego@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.