Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION

 POST REGISTRATION OFFICE ACTION

Registration Number  2916088

The Section 8 Affidavit, filed on June 25, 2010, is not accepted for the reason(s) set forth below.

SPECIMEN

The owner must submit (1) a substitute specimen showing current use in commerce of the registered mark on or in connection with the goods in the registration, and (2) a statement that the substitute specimen was in use in commerce during the relevant period for filing the 6-year Section 8.  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.161(g)(1); TMEP §1604.12(c).

The current specimen comprises advertising and/or marketing materials which are unacceptable to show trademark use for goods because they do not show use of the registered mark on the goods or on packaging for the goods.  TMEP §904.05.

Examples of acceptable specimens for goods include tags, labels, instruction manuals, and photographs that show the mark on the goods or on packaging for the goods.  TMEP §904.04 et seq.

DECLARATION TO SIGN AND DATE

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit, if properly signed and dated:

The 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 specimen, during the relevant period for filing the 6-year Section 8, that is, between the 5^th and 6^th year anniversary after the date of registration or the date of publication under 15 U.S.C. §1062.

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and 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

The following persons are authorized to sign a Section 8 Affidavit on behalf of the owner:

(1)   A person with legal authority to bind the owner;

(2)   A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; and

(3)   An attorney as defined in 37 C.F.R. §11.1 who has actual or implied written or verbal power of attorney from the owner.

37 C.F.R. §2.161(b); TMEP §1604.08(a).

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 6^th year anniversary date on January 4, 2011, whichever is later.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16 and 1604.17(a).

DEFICIENCY SURCHARGE INFORMATION:  A $100 deficiency surcharge must be submitted if the response to this Office action is received by the Office after date of 6^th year anniversary.  37 C.F.R. §§2.6 and 2.164(a)(1).

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 of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §2.163(c).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §2.161(d)(1)-(2).  For more information about this, please contact the undersigned.

How to respond to this Office Action:

Use the Trademark Electronic Application System (TEAS) Response to Post-Registration 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 registration.  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 registrant; (2) someone with legal authority to bind registrant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent registrant. 

You may also submit a response via regular mail to: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451, e-mail(include a j-peg for specimen substitution), or facsimile, the response must include the following: registration number, office location 'Post Registration', and name of Trademark Specialist to expedite forwarding.

The filing date of a document with the Office is the date the document is received in the Office.  37 C.F.R. §2.195(a); TMEP §§303 and 303.01.  However, if a “certificate of mailing” by first class mail or a “certificate of facsimile transmission” under 37 C.F.R. §2.197 is added to the response and the procedures in 37 C.F.R. §§2.195(c) and 2.197 are satisfied, then the document will be considered timely filed if the document is mailed or transmitted prior to expiration of the response time period regardless of whether it was received in the Office after the response time period.  TMEP §§305.02 and 306.05 et seq.

Certificate of Mailing under 37 C.F.R. §2.197:

I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail with postage paid in an envelope addressed to:  Commissioner for Trademarks, P.O. Box, 1451, Alexandria, VA 22313-1451, on the date shown below.

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Signature

____________________________

Typed or Printed Name

____________________________

Date

Certificate of Facsimile transmission under 37 C.F.R. §2.197:

I hereby certify that this correspondence is facsimile transmitted to the United States Patent and Trademark Office on the date shown below.

____________________________

Signature

____________________________

Typed or Printed Name

____________________________

Date

To expedite inquiries about this office action, please contact the undersigned Trademark Specialist via e-mail.

Should you need assistance for the following: Navigating through USPTO website, Post Registration TEAS Response applications, or general Trademark questions please contact: TrademarkAssistanceCenter@uspto.gov, or telephone either 571-272-9250 or 1-800-786-9199.

DAWN HEMBRY

/DAWN HEMBRY/

DAWN.HEMBRY@USPTO.GOV

TRADEMARK SPECIALIST

POST REGISTRATION DIVISION

571\272-9506(OFFICE)

571\273-9506(FAX)

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  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.