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:  July 17, 2019

Requirements of Audit Not Satisfied

Your response to the outstanding Office action regarding the Sections 71 & 15 Combined Affidavit was timely received on July 5, 2019.  As part of the audit to assess and promote the accuracy and integrity of the trademark register as to the actual use of the mark with the goods identified in the registration, the owner or holder/owner of the registration was required to submit verified proof of current use of the registered mark in commerce for the following goods:  “Cycling shorts” and “Cycling overshoes.”  37 C.F.R. §§2.161(h), 7.37(h).

In response, the owner or holder/owner provided unverified proof of current use of the registered mark in commerce that would otherwise be acceptable.  To fully respond to the requirement of the audit, the owner or holder/owner must provide verification of that proof of current use.

Accordingly, the owner or holder/owner must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The owner or holder/owner was using the mark in commerce on or in connection with the goods 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).

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 submitted item(s) showing proof of use, if properly signed and dated:

The owner or holder/owner was using the mark in commerce on or in connection with the goods 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 a verified statement is not provided, the registration will be subject to further inquiry to verify the accuracy of the goods in the registration.  37 C.F.R. §§2.161(h), 7.37(h).

Detailed information regarding the audit program is provided on the following webpage – http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 6^th year anniversary date on August 6, 2019, whichever is later.  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, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled in its entirety.  37 C.F.R. §7.39(a)-(b).

DEFICIENCY SURCHARGE INFORMATION:  If the response to this Office action is received by the Office after August 6, 2019, a $100 deficiency surcharge must be submitted if the response is submitted online using the Trademark Electronic Application System (“TEAS”) and a $200 deficiency surcharge must be submitted if the response is submitted on paper.  37 C.F.R. §§7.6, 7.39(c)(1).  (Note:  This only applies when the response time deadline above falls after the 6^th year anniversary date.)

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the holder/owner may avoid cancellation of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §7.39(b).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §7.37(d)(1)-(2).  For more information about this, please contact the undersigned.

On August 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

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.

Cameron McBride

/Cameron McBride/

Examining Attorney - Trademarks

Law Office 106

(571) 272-0542

Cameron.McBride@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.