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: 2/1/2018

U.S. Registration Number  4000433

The Sections 71 & 15 Combined Affidavit submitted on January 26, 2018, cannot be accepted or acknowledged for the reasons set forth below.

UNCLEAR GOODS IN CLASS 12 AND UNACCEPTABLE SPECIMENS

The holder/owner must submit a statement that clarifies the goods identified in Class 12 in the registration on or in connection with which the mark is in use in commerce and has been in continuous use in commerce for five consecutive years.  15 U.S.C. §§1065, 1141k(b); 37 C.F.R. §§2.167(c), 7.37(e)(1); TMEP §§1605.04, 1613.09(a), (c).  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.

The Combined Affidavit of record lists Class 12 goods that are different from the goods identified in the registration.  Specifically, the Combined Affidavit identifies the goods “ELECTRONIC AND NON-ELECTRONIC STABILITY CONTROL SYSTEMS CONTAINING A ROLL CONTROL COMPONENT FOR TO ALLOW FOR BETTER VEHICLE RIDE AND COMFORT CONTROL, SOLD AS AN INTEGRAL COMPONENT SYSTEM OF AUTOMOBILES”; however, the registration limits the use of these goods as “ROLL CONTROL AND STABILITY CONTROL SYSTEMS FOR VEHICLE RIDE AND COMFORT CONTROL SOLD AS A DISCRETE SYSTEM, NAMELY, ELECTRONIC AND NON-ELECTRONIC STABILITY CONTROL SYSTEMS CONTAINING A ROLL CONTROL COMPONENT FOR TO ALLOW FOR BETTER VEHICLE RIDE AND COMFORT CONTROL, SOLD AS AN INTEGRAL COMPONENT SYSTEM OF AUTOMOBILES.” 

The Combined Affidavit also identifies the goods “DAMPER SYSTEMS”; however, “damper systems” are only identified in the registration as a use of identified the control systems.  In particular, the relevant wording in the registration reads, “CONTROL SYSTEMS FOR VEHICLE CHASSIS SYSTEMS COMPRISED OF HYDRAULIC, MECHANICAL, ELECTRICAL AND ELECTRONIC CONTROL SYSTEMS FOR VEHICLE SUSPENSIONS SYSTEMS, DAMPER SYSTEMS, MODAL SUSPENSION SYSTEMS AND MODAL DAMPER SYSTEMS, ROLL CONTROL SYSTEMS, AND SUBSYSTEMS THERETO, NAMELY, ELECTRONIC AND NON-ELECTRONIC STABILITY SYSTEM TO ALLOW BETTER CONTROL AND MANEUVERABILITY OF TRUCKS AND TRAILERS ALL SOLD AS A UNIT AND AS AN INTEGRAL COMPONENT OF TRUCKS”.  The identification of goods set forth in the Combined Affidavit cannot be different from or broader in scope than those listed in the registration.

If the Sections 71 & 15 Combined Affidavit is intended to cover fewer than all the goods in the registration, then the holder/owner must specify the goods being deleted.  37 C.F.R. §7.37(e)(2); TMEP §1613.09(b).  Goods omitted from the Section 71 portion of the Combined Affidavit will be deleted from the registration and therefore not acknowledged by the Section 15 portion of the Combined Affidavit.

The holder/owner may clarify that the goods described by the questioned wordings are those identified in the registration and that the subject wordings in the registration should be retained, if accurate.

The specimens submitted with the Section 71 Affidavit are unacceptable because it shows the mark used on or in connection with goods and 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 Class 12 specimen shows use for a single item, the nature of which was not made clear in the combined affidavit.  The Class 12 goods in the registration are all systems; therefore, any of which would be comprised of a number of component items.  The specimen must be used on or in connection with the goods listed in the registration. 

The Class 42 specimen submitted with the Section 71 Affidavit is unacceptable because it does not reference the services specified in the registration.  The proposed specimen is an advertising for goods.

A specimen for a service mark must show use of the mark “in the sale or advertising of services.”  See Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(2).  Specimens for service marks must show an association between the mark and the services identified in the registration.  In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997).  If the specimen does not show the mark with reference to, or association with, the services, the specimen fails to show service mark usage.  See In re DSM Pharms., Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008).

Therefore, the holder/owner must submit the following:

(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods and 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 71.”  37 C.F.R. §7.37(g).

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.  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.

Registration Selected for Audit

The USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register.  See 37 C.F.R. §§2.161(h), 7.37(h). This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods and services identified in the registration. 

To comply with the audit, you must submit proof of use of the registered mark for two additional goods and services per class.  Id.  If proof of use for the goods and services identified is not available, the identified goods and services and any other goods and/or services not currently in use should be deleted from the registration. 

Therefore, the owner or holder/owner must submit the following:

(1) Proof of current use of the registered mark in commerce for the following goods and services:

Class 12:

- VEHICLE STABILITY CONTROL SYSTEMS FOR AUTOMOBILES;

- VEHICLE HYBRID SUSPENSION SYSTEMS INCORPORATING COMBINATIONS OF MECHANICAL AND FLUID COMPONENTS, NAMELY, CYLINDERS, LOAD DISTRIBUTION UNITS, FLUID FLOW CONDUITS, RESTRICTORS, FLUID FLOW CONTROL VALVES AND PRESSURE ACCUMULATORS FOR AUTOMOBILES;

EXCLUDING BUSES, BUS PARTS AND BUS COMPONENTS, SCOOTERS AND COMPONENT PARTS FOR SCOOTERS;

Class 42:

- ENGINEERING, NAMELY, RESEARCH, DESIGN, DEVELOPMENT AND CONSULTING IN ENGINEERING FIELDS RELATED TO VEHICLE CHASSIS SYSTEMS;

- ENGINEERING, NAMELY, RESEARCH, DESIGN, DEVELOPMENT AND CONSULTING IN ENGINEERING FIELDS RELATING TO VEHICLE SUSPENSION SYSTEMS;

EXCLUDING SUCH SERVICES RELATING TO BUSES, BUS PARTS AND BUS COMPONENTS, SCOOTERS AND COMPONENT PARTS FOR SCOOTERS.

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The holder/owner was using the mark in commerce on or in connection with the goods and services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.”  37 C.F.R. §§2.161(h), 7.37(h). 

Acceptable proof of use for goods includes photographs that show the mark on the actual goods or packaging, or photographs of displays associated with the actual goods at their point of sale.  A tag or label that is not shown affixed to the goods is not acceptable proof of use.  Similarly, a package that does not show or identify the goods therein is not acceptable proof of use.  Acceptable proof of use for services includes signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.

Form Declaration

Please note that the below statement verifying proof of use is slightly different than the standard substitute specimen statement. 

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the use of the mark as evidenced by the item(s) submitted as proof of use, if properly signed and dated:

The holder/owner was using the mark in commerce on or in connection with the goods and services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use and specimen(s), during the relevant period for filing the affidavit of use.

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that the facts set forth above are true; 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

WARNING:  If your response to this Office action does not meet the requirements of the audit, or if your response includes a request to delete goods and/or services identified for the audit, and goods and/or services remain in the registration without acceptable proof of use, a second Office action will issue requiring proof of use for all remaining goods and/or services for which proof of use is not of record.  See 37 C.F.R. §§2.161(h), 7.37(h).   Therefore, the holder/owner should delete all goods and/or services for which proof of use cannot be provided.

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.  If a response is not received, the registration will be cancelled in its entirety.  37 C.F.R. §7.39(a)-(b).

DEFICIENCY SURCHARGE REQUIRED:  The holder/owner must submit a $100 deficiency surcharge with its response to this Office action if the response is submitted online using the Trademark Electronic Application System (“TEAS”).  A $200 deficiency surcharge must be submitted if the response is submitted on paper.  37 C.F.R. §§7.6, 7.39(c)(2).

/Betty Chang/

Examining Attorney

Law Office 115

571-272-6517

betty.chang@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. 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.