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:  March 31, 2022

WARNING: Failure to timely respond to this Office action will result in the cancellation of the entire registration. 37 C.F.R. §§2.163(c), 7.39(b).

Status

The response to the outstanding Office action regarding the Combined Section 8 Affidavit or Declaration & Section 9 Renewal Application was timely received on March 28, 2022.

Upon review of the response, the following issues were resolved: audit resolved for Class 28

However, the response did not satisfy all requirements and further action is required.

Requirements for Audit Not Satisfied – CLASS 16

The owner/holder of the registration was required to (1) submit proof of use for two additional goods and/or services per audited class with a verified statement or (2) delete any goods and/or services for which proof of use was not provided, pay the required deletion fee, and submit acceptable proof of use for all remaining goods and/or services in the audited class(es).  37 C.F.R. §§2.161(b), (c), 7.37(b), (c).  Although the owner/holder submitted a response to the Office action, the owner/holder did not provide acceptable proof of use for all of the audited goods in the audited class.

The requirements for the audit have not been satisfied and the affidavit or declaration of use submitted to maintain the registration cannot be accepted unless the owner/holder verifies the accuracy of the claim of use in the affidavit or declaration of use by (1) providing proof of use for the remaining goods and/or services in the audited class(es) in the registration without acceptable proof of use of record and/or (2) deleting goods and/or services in the audited class(es) for which proof of current use of the mark in commerce cannot be provided.  See 15 U.S.C. §§1058(b), 1141k(b); 37 C.F.R. §§2.161(b), 7.37(b).

Acceptable proof of use is of record for the following goods and/or services in the audited class.

Class 16:

·         Paper and cardboard packaging and containers, namely, gift boxes and collectible presentation boxes for action and vinyl figures

Proof of use is not of record for the following goods and/or services in the audited class.

Class 16:

·         Paper bags, namely, gift bags, shopping bags and merchandise bags

In its response, the owner submitted various shopping bags. However, these goods all appear to be made from leather, imitation leather, or textile material. The bags described in Class 16 are paper-based goods.

To respond to this action, the owner/holder must:

(1)   Submit proof of use of the registered mark for the goods and/or services for which acceptable proof of is not of record in the audited class(es), as identified above, and submit a statement verifying proof of use.

Examples of proof of use.  Proof of use must demonstrate current use of the mark in commerce with the good(s) and/or in the sale or advertising of the service(s) selected for audit.  In particular, proof of use is evidence that clearly shows how you are using your mark in commerce on the specific audited good(s) or service(s).  It may be an actual image, such as a photograph, scanned copy, or screen capture, of the physical item.  Acceptable proof of use for goods includes the mark shown on the actual goods or their packaging, or displays associated with the actual goods at their point of sale.  See 37 C.F.R. §2.56(b)(1), (c); see TMEP §904.03(a)-(m).  Tags or labels must be shown affixed to the goods or must consist of actual tags or labels that identify the specific goods on which they are used and include informational matter that typically appears on a tag or label in use in commerce for these types of goods.  Similarly, packaging must show or identify the goods therein.  A webpage submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  See 2.56(b)(1), (c); see TMEP §904.03(i).  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.  See 37 C.F.R. §2.56(b)(2), (c); see TMEP §1301.04(a), (h)(iv)(C).  Any webpage printout or screenshot submitted as proof of use, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  See 37 C.F.R. §2.56(c).

Instructions for submitting proof of use. Clearly label or describe which good(s) and/or service(s) is supported by each item submitted as proof of use.  See 37 C.F.R. §§2.161(b), 7.37(b).  In addition, if the submission includes multiple pages, please identify the relevant page numbers for the audited good(s) and/or service(s).

Instructions for submitting statement verifying proof of use. To provide the required verification in the electronic Response to Post-Registration Office action form, check the box located at the bottom of each class for which proof of use is provided to automatically populate the below required statement, and sign the declaration at the end of the form. 

The owner/holder 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.

            AND/OR

(2)   Delete any goods and/or services without proof of use of record and/or for which use cannot be confirmed and pay deletion fee.

If the owner/holder cannot provide proof of current use of the mark in commerce for any remaining goods and/or services listed in audited class(es) in the affidavit or declaration submitted to maintain the registration, the owner/holder must delete those goods and/or services and submit a fee of $250 for each class in which goods and/or services are being deleted.  37 C.F.R. §§2.6(a)(12)(ii), 2.161(c), 7.6(a)(6)(iv), 7.37(c).  No additional proof of use or verification is required if deleting all goods and/or services in the audited class(es) for which proof of use has not been provided.  Please be reminded that registration owners/holders are expected to conduct a reasonable inquiry to confirm use of their marks in commerce with all goods and services that they include in the Section 8 or 71 affidavit or declaration submitted to maintain the registration.  See 15 U.S.C. §§1058(b), 1141k(b).  Therefore, if use cannot be confirmed for any goods and/or services in the registration, the goods and/or services must be deleted.

WARNING:  If the owner/holder responds by providing unacceptable proof of use for any goods and/or services for which acceptable proof of use is not already of record, the requirements for the audit will not have been satisfied and the affidavit or declaration of use submitted to maintain the registration cannot be accepted. A final Office action will issue requiring deletion of the goods and/or services and submission of the deletion fee to avoid cancellation of the registration in its entirety.

Detailed information regarding the audit program is provided on the Post Registration Audit Program webpage.

$100 Deficiency Surcharge Required

The Trademark Act requires that the owner/holder list the goods and/or services with which the mark is in use in commerce in the affidavit or declaration. 15 U.S.C. §§1058(b)(1)(B), 1141k(b)(1)(B).  The owner/holder deleted good(s) and/or service(s) from the affidavit or declaration after it was filed to correct the inaccurate list of goods and/or services with which the mark is in use in commerce.  Although this deficiency in the affidavit or declaration is correctable, corrections submitted after the grace period for filing the original affidavit or declaration must be accompanied by a deficiency surcharge.  15 U.S.C. §§1058(c), 1141k(c); 37 C.F.R. §§2.6, 2.164, 7.6, 7.39(c).  Accordingly, because the owner/holder did not provide an accurate list of goods and/or services with which the mark is in use in commerce during the grace period, the owner/holder must submit the $100 deficiency surcharge.  37 C.F.R. §§2.6, 2.164, 7.6, 7.39(c); TMEP §§1604.17(b), 1613.17(b).

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 2.185(a)(2); TMEP §§1604.16, 1604.17(b) and (c), and 1606.13(b).

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.

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

571-272-8844

jordan.baker@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.