Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER:

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

 POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 5/10/2014

U.S. Registration Number  3398673

The nonuse portion of the Section 71 Affidavit, filed on MARCH 17, 2014, is not accepted for the reason set forth below.  The portion of the Section 71 Affidavit pertaining to continued use is accepted.

The holder/owner must submit additional information showing that the special circumstances justifying nonuse were not within the control of the holder/owner.  The explanation of special circumstances of record appears to indicate that the nonuse was within the control of the holder/owner in this case.  Specifically, the holder/owner has indicated that it is not currently using the mark because its licensee Gerber was not using the mark according to the agreement between both parties by removing the mark from there label.  The office agrees that there was no intention to abandon the mark however, these facts of record do not support special circumstances, the owner/holder is obligated to ensure that the mark is properly used by its licensee and that quality control mechanisms are in place.

For a proper claim of excusable nonuse, the holder/owner must show that (1) the nonuse is due to special circumstances beyond the holder’s/owner’s control, and (2) the nonuse does not reflect an intention to abandon the mark.  In re Moorman Manufacturing Co., 203 USPQ 712 (Comm’r Pats. 1979); 37 C.F.R. §7.37(f)(2).

However, if the owner/holder would like to resubmit a new declaration regarding class 29 when use is resumed and there is time in the grace period that ends on September 18, 2014 the owner/holder can file a new Affidavit of use for class 29 with a deficiency surcharge fee

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  The holder/owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration in class 29.  37 C.F.R. §7.39(a)-(b).

/Everett J. Henson/

Everett J. Henson

Trademark Specialist

Post Registration Branch

Phone: (571)-272-9529

Fax: (571)-273-9529

e-mail: everett.henson@uspto.gov

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.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) the individual owner; (2) someone with legal authority to bind the owner (e.g., a corporate officer or general partner); or (3) an authorized attorney, if one is appointed to represent the owner.  If the 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 complete 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.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED SPECIALIST.