Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 4/14/2016

U.S. Registration Number  3034407

Your response to the outstanding Office action regarding the Section 8 Affidavit was timely received on April 11, 2016.  After consideration of the response and the facts of record, the refusal to accept the Section 8 Affidavit is maintained for the reason(s) set forth below. 

The Section 8 Affidavit cannot be accepted because, the response substitute specimen failed to show service usage for “non-downloadable publishing software in the field of music”.

SPECIMEN

The specimen submitted with the Section 8 Affidavit is unacceptable because it shows the mark used on or in connection with services that are different from those identified in the registration.  See In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm’r Pats. 1993).  Specifically, the specimen shows use for “a screenshot of the website showing the services being rendered”. The services in the registration comprise the following:  Providing temporary use of online, non-downloadable publishing software in the field of music.  The specimen must be used on or in connection with the services listed in the registration.  TMEP §1604.12(a).

Therefore, the owner must submit the following:

(1) A substitute specimen showing current use of the registered mark in commerce for each class of services specified in the registration; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

DECLARATION

The following language is required to support use of any substitute specimen provided, if properly signed and dated: When responding via TEAS, the owner should copy the entire paragraph below into the body of the response, if accurate and applicable, as it is not part of the TEAS declaration.

“The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.”

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 statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.                                                                         

                                                                        __________________________                 

Signature of Authorized Person

__________________________

Print/Type Name & Position

__________________________

Date

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

(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);

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

(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).

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 of the registration.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(b).

DEFICIENCY SURCHARGE:  The owner must submit a $100 deficiency surcharge if its response to this Office action is received after the expiration of the grace period, i.e., after June 27, 2016.  37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).

If you disagree with this refusal to accept the Section 8 Affidavit, you may file a petition to the Director to review this decision.  37 C.F.R. §§2.146(a)(2), 2.165; TMEP §§1604.18 et seq.  The petition must be filed within six months from the issuance date of this letter and be accompanied by a fee of $100.  37 C.F.R. §§2.6, 2.146(c), 2.165(b).  Any facts to be proven on petition must be in the form of an affidavit or declaration under 37 C.F.R. §2.20; and signed by someone with firsthand knowledge of the facts to be proved.  37 C.F.R. §2.146(c). 

/Dawn Hembry/

Dawn Hembry

Dawn.Hembry@USPTO.GOV

Post Registration Division

571\272-9506(Office)

571\273-9506(Fax)

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp.  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. For questions about the Office action itself, please contact the assigned specialist.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this registration will be placed in the official registration record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status 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/trademarks/teas/correspondence.jsp.