Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 4/21/2012

Registration Number  3080804

The Sections 8 & 15 Combined Affidavit was received on April 9, 2012.  The Section 15 portion of the combined affidavit can be acknowledged.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

SPECIMEN

The specimen submitted with the Section 8 Affidavit is unacceptable because it does not show use of the registered mark in commerce.  It appears to be a photocopy of the drawing or a picture or rendering of the registered mark, and does not show the mark actually used in commerce on the goods or in the sale or advertising of the services.  See 37 C.F.R. §2.56(c); TMEP §904.04(a).

The specimen submitted with the Section 8 Affidavit is unacceptable because it consists of advertising material for goods and does not show use of the registered mark on the goods or on packaging for the goods.  See TMEP §904.04(b)-(c). 

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is unacceptable to show trademark use.  TMEP §904.04(b).  Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b)-(c). 

Therefore, the owner must submit the following:

(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods and/or 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 6-year Section 8.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq. 

When presenting a website specimen, you must submit a screen shot of web page for viewing; the website must show the logo and information about the goods and/or services provided under the logo, Trademark Specialist will not visit website.

TRADEMARK

The specimen must show use of essentially the same mark as the mark shown in the registration, and must be used on or in connection with the goods/services listed in the registration. 1604.12(a)

The specimen must be a sample of how the mark is being used in commerce.

DECLARATION TO SIGN AND DATE

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Combined 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, or during the ensuing grace period.

The mark has been in continuous use in commerce for five (5) consecutive years after the date of registration or the date of publication under 15 U.S.C. §1062(c), and is still in use in commerce on or in connection with all goods and/or services listed in the existing registration.  There has been no final decision adverse to the owner’s claim of ownership of such mark for such goods and/or services, or to the owner’s rights to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the United States Patent and Trademark Office or in the courts.

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 Combined 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 Application Statement for Section 8 Affidavit

The Registrant/Legal Representative must submit a substitute specimen along with a SPECIMEN DESCRIPTION: A specimen description should describe the item being submitted as the specimen; for the goods and/or services in the registration for which the mark is still in use in commerce.

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 October 10, 2012.  37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).

How to respond to this Office Action:

(ADVISORY NOTE:MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial/registration number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.)

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.

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

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. 

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.

____________________________

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.

How to find Post Registration Response Application

Go to

1) www.USPTO.GOV

2) under title Trademarks

3) click TEAS (file forms on line)

4) #2 RESPONSE Forms (double click)

5) scroll down to #9 Response Application to Post Registration Office Action (double click) follow prompts to complete application

CHECK THE STATUS OF THE REGISTRATION OR REVIEW INCOMING & OUTGOING CORRESPONDENCE

Go to

1) POPULAR LINKS

2) TRADEMARK APPLICATION STATUS (TARR)

3) Choose which either TARR (status of registration) OR TSDR1.0 (review/print documents)

TO UPDATE CORRESPONDENCE AND ATTORNEY/DOMESTIC REPRESENTATIVE FORMS

Go to

1) www.USPTO.GOV

2) under title Trademarks

3)  click on Trademark Electronic Application System (TEAS)

4) #5 CORRESPONDENCE AND ATTORNEY/DOMESTIC REPRESENTATIVE FORMS (double click)

/Dawn Hembry/

Dawn Hembry

Dawn.Hembry@USPTO.GOV

Post Registration Division

571/272-9506 (office)

571/273-9506 (fax)