| Global Format; No Form Number (Rev 8/2009) |
| OMB No. 0651-0054 (Exp. 10/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 78310388 |
| REGISTRATION NUMBER | |
| FORM TEXT | |
|
To the Director of Trademarks:
Applicant respectfully petitions the Director to revive the mark after failure to respond to the December 17, 2014 office action, and return jurisdiction to the Examining Attorney to allow the Examining Attorney to consider the foreign renewal, attached hereto as Ex. 1, that fully satisfies the December 17, 2014 office action.
In support of this petition, attorneys for Applicant state that the previous attorney of record recently left the law firm on or about July 17, 2015 and, while the firm retained the matter and representation has been ongoing, the newly responsible attorneys did not receive notice of the pending office action or the Notice of Abandonment. It was only through diligent review of the status of the mark that the newly responsible attorneys learned that the mark had been abandoned due to failure to respond to the office action. 37 C.F.R. §§2.66(a)(2) and 2.146(i). The newly responsible attorneys learned about the abandonment on or about September 11, 2015 while analyzing the docket after taking it over from the previous attorney of record after her departure. As such, the previous attorney of record had been diligently checking the status of the mark every six months through the PTO website and through use of an internal docketing system, and the newly responsible attorneys have also been diligently checking the status of the mark every six months through the PTO website, through use of an internal docketing system, and contacting foreign counsel in Venezuela since they learned about the pending application on or about September 11, 2015. The delay was unintentional.
While the December 17, 2014 office action requested a foreign registration certificate demonstrating the foreign registration was valid and in force, the only available foreign registration certificate had already been submitted on June 5, 2014 in response to a previous office action. Although the foreign registration certificate that had been previously submitted expired on September 14, 2014, the enclosed foreign renewal, filed on August 25, 2014, created a new trademark expiration date of August 25, 2029. See Ex. 1 and Declaration as to Foreign Registration by Nicolás Rossini, Venezuelan Attorney for Applicants, attached hereto as Ex. 2, at ¶¶ 3-6. In Venezuela, renewals are calculated from the date the renewal application is stamped as received, and no additional documentation, such as a notice of acceptance, is provided to the registrant. Ex. 2 at ¶¶ 4-5. The renewal application is the only proof in Venezuela that the trademark is live. The foreign trademark registration has been valid and in force throughout the entire application process. 37 C.F.R. § 2.34(a)(3)(iii); Ex. 2 at ¶ 7. Therefore, the attached renewal should fully satisfy all issues from the December 17, 2014 office action. Ex. 1.
Finally, in response to an earlier office action, dated June 13, 2014, the previous attorney of record respectfully requested on December 15, 2014 that the application be suspended while the Applicant was requesting a certified copy of the corresponding home country registration to demonstrate that the mark was still valid. Ultimately, the application was not suspended, but the diligence by the previous attorney of record should provide additional evidence that any delay was unintentional.
Please do not hesitate to contact the undersigned if anything further is required. |
|
| ATTACHMENT(S) | |
| ORIGINAL PDF FILE | ARAKU_P254829_-_Ex_1_201591463110587.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\783\103\78310388\xml22\PDD0002.jpg |
| \\TICRS\EXPORT16\IMAGEOUT16\783\103\78310388\xml22\PDD0003.jpg | |
| ORIGINAL PDF FILE | DECLARATION_ARAKUDESIGN_201591463135211.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\783\103\78310388\xml22\PDD0004.jpg |
| \\TICRS\EXPORT16\IMAGEOUT16\783\103\78310388\xml22\PDD0005.jpg | |
| \\TICRS\EXPORT16\IMAGEOUT16\783\103\78310388\xml22\PDD0006.jpg | |
| PAYMENT SECTION | |
| NUMBER OF CLASSES | 1 |
| FEE PER CLASS | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Amanda Katzenstein/ |
| SIGNATORY'S NAME | Amanda Katzenstein |
| SIGNATORY'S POSITION | Associate Attorney, Novak Druce Connolly Bove + Quigg LLP, District of Columbia bar member |
| DATE SIGNED | 10/14/2015 |
| SUBMISSION SIGNATURE | /Amanda Katzenstein/ |
| SIGNATORY'S NAME | Amanda Katzenstein |
| SIGNATORY'S POSITION | Associate Attorney, Novak Druce Connolly Bove + Quigg LLP, District of Columbia bar member |
| DATE SIGNED | 10/14/2015 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Oct 14 18:39:35 EDT 2015 |
| TEAS STAMP | USPTO/PDD-XX.XXX.XXX.XXX- 20151014183935484101-7831 0388-20151014182321432006 -CC-5185-2015101418232143 2006 |
| Global Format; No Form Number (Rev 8/2009) |
| OMB No. 0651-0054 (Exp. 10/31/2017) |
To the Director of Trademarks:
Applicant respectfully petitions the Director to revive the mark after failure to respond to the December 17, 2014 office action, and return jurisdiction to the Examining Attorney to allow the Examining Attorney to consider the foreign renewal, attached hereto as Ex. 1, that fully satisfies the December 17, 2014 office action.
In support of this petition, attorneys for Applicant state that the previous attorney of record recently left the law firm on or about July 17, 2015 and, while the firm retained the matter and representation has been ongoing, the newly responsible attorneys did not receive notice of the pending office action or the Notice of Abandonment. It was only through diligent review of the status of the mark that the newly responsible attorneys learned that the mark had been abandoned due to failure to respond to the office action. 37 C.F.R. §§2.66(a)(2) and 2.146(i). The newly responsible attorneys learned about the abandonment on or about September 11, 2015 while analyzing the docket after taking it over from the previous attorney of record after her departure. As such, the previous attorney of record had been diligently checking the status of the mark every six months through the PTO website and through use of an internal docketing system, and the newly responsible attorneys have also been diligently checking the status of the mark every six months through the PTO website, through use of an internal docketing system, and contacting foreign counsel in Venezuela since they learned about the pending application on or about September 11, 2015. The delay was unintentional.
While the December 17, 2014 office action requested a foreign registration certificate demonstrating the foreign registration was valid and in force, the only available foreign registration certificate had already been submitted on June 5, 2014 in response to a previous office action. Although the foreign registration certificate that had been previously submitted expired on September 14, 2014, the enclosed foreign renewal, filed on August 25, 2014, created a new trademark expiration date of August 25, 2029. See Ex. 1 and Declaration as to Foreign Registration by Nicolás Rossini, Venezuelan Attorney for Applicants, attached hereto as Ex. 2, at ¶¶ 3-6. In Venezuela, renewals are calculated from the date the renewal application is stamped as received, and no additional documentation, such as a notice of acceptance, is provided to the registrant. Ex. 2 at ¶¶ 4-5. The renewal application is the only proof in Venezuela that the trademark is live. The foreign trademark registration has been valid and in force throughout the entire application process. 37 C.F.R. § 2.34(a)(3)(iii); Ex. 2 at ¶ 7. Therefore, the attached renewal should fully satisfy all issues from the December 17, 2014 office action. Ex. 1.
Finally, in response to an earlier office action, dated June 13, 2014, the previous attorney of record respectfully requested on December 15, 2014 that the application be suspended while the Applicant was requesting a certified copy of the corresponding home country registration to demonstrate that the mark was still valid. Ultimately, the application was not suspended, but the diligence by the previous attorney of record should provide additional evidence that any delay was unintentional.
Please do not hesitate to contact the undersigned if anything further is required.
FORM FILE NAME(S)
