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:  May 21, 2020

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on March 16, 2020.  The Section 9 portion of the combined filing can be granted.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

I.                   SPECIMEN DEFICIENCY – URL AND DATE ACCESSED IS MISSING FROM SPECIMEN

The specimen submitted to support your Section 8 Affidavit is not acceptable as a webpage specimen; it does not include the required URL and date accessed or printed.  37 C.F.R. §2.56(c).  Because the webpage specimen lacks the associated URL and/or access or print date, it appears to be in the nature of a digital mockup that fails to show current use of the mark in commerce.  15 U.S.C. §§1058(b)(1)(C), 1127; 37 C.F.R. §§ 2.56(c), 2.161(g). 

The owner may respond by:

(1)   Submitting a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20, specifying the URL of the original webpage specimen and the date it was accessed or printed; no deficiency fee is necessary; or

(2)   Submitting a substitute specimen(s), that includes the URL and date accessed or printed, and that shows current use of the registered mark in commerce accompanied by 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).  A deficiency fee may be required, depending on when a response is received.  37 C.F.R. §2.164; TMEP §§1604.12(c), 1604.17. 

Examples of specimens.  Electronic specimens may be an image, such as a photograph or scanned copy, of the physical specimen. Specimens for goods include an image of (1) the actual goods bearing the mark; (2) labels or tags shown attached to the goods or including informational matter that typically appears on a tag or label in use in commerce for these types of goods; (3) an actual container or packaging for the goods bearing the mark; or (4) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen 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 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(i). 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

II.                SAMPLE DECLARATION

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Combined Section 8 Affidavit & Section 9 Renewal Application, 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 10-year Section 8, that is, within the one year before the end of a 10-year period after the date of registration, or during the ensuing grace period.

Renewal of the registration is requested.

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 Section 8 Affidavit & Section 9 Renewal Application 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 §§804.04 and 1604.08(a).

III.             SIGNATURE ON RESPONSE - ADVISORY

Responses to Office actions must be properly signed.  37 C.F.R. §§2.163(b), 2.184(b)(2); see TMEP §712.  If the owner has retained an attorney, the attorney must sign the response; the owner cannot sign the response.  TMEP §605.02.  However, if the owner was previously represented by an attorney, and the owner later retains a different attorney, the newly retained attorney cannot sign responses until a new power of attorney signed by the owner is filed.  TMEP §602.01.  Paralegals and secretaries cannot sign responses for attorneys.  See TMEP §602.03.

The only attorneys who can practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state (including the District of Columbia, Puerto Rico and other federal territories and possessions) or (2) Canadian agents/attorneys reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney, and who are representing trademark registrants located in Canada.  See 37 C.F.R. §§2.17(a), 11.1 11.14, 11.14(a), (c), (e).  Foreign attorneys (other than recognized Canadian attorneys) cannot sign responses or otherwise represent registrants before the USPTO. See  37 C.F.R. §11.14(c). 

If the owner is not represented by an attorney, the response must be signed by the owner or by someone with legal authority to bind the owner (i.e., a corporate officer of a corporate owner, the equivalent of an officer for unincorporated organizations or limited liability company owners, a general partner of a partnership owner, each owner for registrations with multiple individual owners, etc.).  37 C.F.R. §§2.163(b), 2.184(b)(2); see TMEP §§712-712.01(a)(viii). 

A non-attorney who is authorized to verify facts on behalf of an owner under 37 C.F.R. §2.33(a)(2) (such as trademark administrators, accountants, business managers, administrative assistants, and personal assistants) cannot sign responses to Office actions unless he or she also has legal authority to bind the owner.  See TMEP §§712.03 and 804.04. 

IV.             RESPONSE GUIDELINES

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 1606.13(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 September 16, 2020, and the response is submitted online using the Trademark Electronic Application System (“TEAS”).  A $200 deficiency surcharge must be submitted if the response is received after the expiration of the grace period and the response is submitted on paper.  37 C.F.R. §§2.6, 2.164(a)(2) and 2.185(a)(2).

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.

/Shawnee Letsa/

Trademark Specialist

Post Registration Division

571-272-9626 Direct

Shawnee.letsa@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.