| To: | Outfit7 Limited (trademarks@lowndes-law.com) |
| Subject: | U.S. Trademark Registration No. 4307221 - TALKING REX - 186171 |
| Sent: | 01/08/20 03:49:39 PM |
| Sent As: | prg@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Owner’s Trademark Registration
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U.S. Registration No. 4307221
Mark: TALKING REX
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Correspondence Address: |
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Owner: Outfit7 Limited
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Reference/Docket No. 186171
Correspondence Email Address: |
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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: January 8, 2020
The Sections 71 & 15 Combined Affidavit submitted on September 24, 2019, cannot be accepted or acknowledged for the reasons set forth below.
Clarification of goods to be deleted and goods in use is required
The Section 71 Affidavit of record lists goods in the “goods in use” portion, which are not part of the registration. Specifically, “pads, namely, desk pads, art pads, drawing pads and ink pads” are indicated to be in use, but none of these goods are included in Class 16. In addition, the portion which indicates the goods to be deleted does not match with the goods in the registration. This portion also requests to delete goods that are not included in the Class 16 identification of goods.
Please clarify the goods in use, and those which should be deleted. The identification of goods for Class 16 in the registration is as follows:
Ball pens; bibs of paper; bookmarks; books in the field of cartoon characters; boxes of cardboard or paper; calendars; chalks; children's books; color pencil sets; color pencils, crayons; coloring books; comic books; drawing instruments; drawing paper; drawing rulers; erasing products, namely, correcting tapes, rubber erasers, erasers, erasing fluids, namely, ink erasers; fountain pens; gift boxes; glue for stationery or household purposes; greeting cards; loose-leaf binders; lunch bags; musical greeting cards; note books; packing paper, wrapping paper and packaging materials made of paper; writing pads; paintings; paper napkins; paper staplers; party ornaments of paper; paste for stationery or household purposes; pen and pencil cases and boxes; pencil sharpeners; pencils; pens; photograph albums; place mats and coasters of paper or cardboard; posters; printed publications, namely, newspapers and magazines in the fields of video games, animated characters, and online entertainment; rubber stamps; stationery; stickers; table cloths of paper; table linen of paper; writing instruments; writing pads, memo pads, writing paper; wallpaper stencils
The above list should be used as a reference to indicate whether each of the items should be deleted or is in use.
If the Section 71 Affidavit is intended to cover fewer than all the goods and/or services in the registration, then the holder/owner must specify the goods and/or services being deleted. 37 C.F.R. §7.37(e)(2). Goods and/or services omitted from a Section 71 Affidavit will be deleted from the registration.
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/or services identified in the registration.
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.
To comply with the audit, you must submit proof of use of the registered mark for two additional goods and/or services per class. Id. If proof of use for the goods and/or services identified is not available, the identified goods and/or 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/or services:
· Writing pads
· Writing paper, , in International Class 16, and,
(2) 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 and/or 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).
Additionally, you must identify the corresponding goods and/or services that each individual piece of evidence of current proof of use supports. See id.
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 owner or holder/owner was using the mark in commerce on or in connection with the goods and/or 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.
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Signature of Authorized Person
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Type or Print Name
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Date
WARNING: If your response to this Office action does not meet the requirements of the audit, or includes a request to delete the 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 owner or holder/owner should delete all goods and/or services for which proof of use cannot be provided.
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.
/ Sharon Granata/
Program Analyst
Office of Trademark Quality Review and Training
Phone: 571-272-9167
sharon.granata@uspto.gov
RESPONSE GUIDANCE