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:  October 6, 2022

WARNING: Failure to timely respond to this Office action will result in the cancellation of the entire registration. 37 C.F.R. §§2.163(c), 7.39(b).

The response to the outstanding Office action regarding the Section 71 Affidavit or Declaration, was timely received on September 29, 2022. After consideration of the response, the refusal to accept the affidavit or declaration is maintained because although the response was otherwise acceptable, the following fees were not submitted.

Fees for Deletions Due

Each time the owner/holder amends its registration to delete goods and/or services, the owner/holder incurs a $250 fee for each class in which goods and/or services are deleted. See 37 C.F.R. §§2.6(a)(12)(ii), 2.161(c), 7.6(a)(6)(iv), 7.37(c). In response to the first Office action, the owner/holder deleted goods and/or services in one class, incurring $250 in fees. In response to the second Office action, the owner/holder deleted goods and/or services in one class, incurring $250 in fees. The owner/holder has only submitted $250 in deletion fees instead of the $500 owed. The owner/holder must submit the additional $250 in deletion fees.

Deficiency Surcharge Due

The Trademark Act requires that the owner/holder list the goods and/or services with which the mark is in use in commerce in the affidavit or declaration. 15 U.S.C. §§1058(b)(1)(B), 1141k(b)(1)(B).  The owner/holder deleted good(s) and/or service(s) from the affidavit or declaration after it was filed to correct the inaccurate list of goods and/or services with which the mark is in use in commerce.  Although this deficiency in the affidavit or declaration is correctable, corrections submitted after the statutory filing period of the original affidavit or declaration must be accompanied by a deficiency surcharge.  15 U.S.C. §§1058(c), 1141k(c); 37 C.F.R. §§2.6, 2.164, 7.6, 7.39(c).  Accordingly, because the owner/holder did not provide an accurate list of goods and/or services with which the mark is in use in commerce during the one-year period before the end of the ten-year period after the date of registration, the owner/holder must submit the $100 deficiency surcharge.  37 C.F.R. §§2.6 2.164, 7.6, 7.39(c); TMEP §§1604.17(a), 1613.17(a).

If the owner/holder disagrees with the requirement for fees, the owner/holder may submit a Petition to the Director. Otherwise, the owner/holder must submit the required fees or the registration will be cancelled in full.

Detailed information regarding the audit program is provided on the Post Registration Audit Program webpage.

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).

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.

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

571-272-8844

jordan.baker@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.