UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

The assigned trademark examining attorney has reviewed the statement of use and has determined the following:

 

Ownership Inquiry – Change in General Partners

 

The owner identified in the application at the time of filing and in the notice of allowance is “New York Yankees Partnership, composed of George M. Steinbrenner III, Harold Z. Steinbrenner and Stephen A. Swindal, all U.S. citizens, its General Partners.”  However, the party who filed the statement of use is identified as “New York Yankees Partnership, composed of George M. Steinbrenner III, Martinique Holdings, Inc. and Marsh Harbor Holdings, Inc., U.S. citizens and general partners.”  Upon death or dissolution of a partner or other change in the members that compose a partnership, that legal entity ceases to exist and any subsequent arrangement constitutes a new entity, unless the partnership agreement provides for continuation of the partnership in the event of changes in partners. TMEP § 803.03(b).  No ownership transfer documents have been filed or recorded with the Assignment Services Division of the USPTO.  The party who files a statement of use must be the owner of the mark at the time the statement of use is filed.  TMEP §1109.10.  Therefore, the statement of use cannot be accepted because it appears to have been submitted by an improper party.  15 U.S.C. §1051(d); 37 C.F.R. 2.88.

 

If the party filing the statement of use is the owner, this party must submit evidence to establish that it has clear chain of title.  Evidence to establish ownership can be provided after the expiration of the deadline for filing the statement of use.  See 37 C.F.R. §§3.71 and 3.73; TMEP §1109.10.  To establish ownership, the new owner must:

 

(1)      Record an assignment or other document of title with the Assignment Services Division showing clear chain of title to the party filing the statement of use, and promptly notify the examining attorney that such documentation has been recorded; or

(2)      Submit evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, in the form of an affidavit or signed declaration under 37 C.F.R. §2.20, that a valid transfer of legal title occurred prior to filing the statement of use.  37 C.F.R. §3.73(b)(1); TMEP §502.

 

If the party who filed the statement of use was not the owner of the mark at the time of that filing, the true owner may not file a substitute statement of use unless there is time remaining in the statutory period for filing a statement of use.  In re Colombo Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).  The time for filing a substitute statement of use expired on July 19, 2007.  If no time remains in the statutory period for filing the statement of use, registration is refused because no acceptable statement of use was filed by the applicant within the time permitted.  15 U.S.C. §1051(d); 37 C.F.R. 2.88.

 

Citizenship of General Partners

 

If the party filing the statement of use is the owner, applicant must specify the national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation of the new general partners.  37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b) and 803.04.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

 

 

 

/Barbara Rutland/

Trademark Examining Attorney

US Patent & Trademark Office

Law Office 101

571-272-9311

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.