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: 4/27/2019

U.S. Registration Number 4307225

The Section 71 Affidavit, filed on March 27, 2019, is not accepted for the reason(s) set forth below.

1.      OWNERSHIP ISSUES

The party who filed the Section 71 Affidavit must establish its ownership of the registration.  Trademark Act Section 71 requires the current holder/owner of the international registration to file the Section 71 Affidavit.  15 U.S.C. §1141k; 37 C.F.R. §7.37(a).  Office records do not show clear chain of title in the party who filed the Section 71 Affidavit.

Office records show clear chain of title to the registration in OUT FIT 7 LIMITED (Cyprus Private Limited Company).  However, the party who filed the Section 71 Affidavit is identified as Outfit7 Limited (United Kingdom Limited Liability Company). 

The party who filed the Section 71 Affidavit must establish its current ownership of the registration.  15 U.S.C. §1141k; 37 C.F.R. §7.37(a).  Ownership can be established by recording the appropriate documents with the International Bureau of the World Intellectual Property Organization (“IB”).  37 C.F.R. §7.22; TMEP §1904.06. 

Because an extension of protection remains part of the international registration, assignments of extensions of protection to the United States must first be recorded at the IB.  A holder/owner or assignee cannot file an assignment (or other document transferring title) of an extension of protection to the United States directly with the Assignment Services Branch of the USPTO.  The USPTO will record only those notifications received from the IB.  The IB will notify the USPTO of any changes of the name of the holder/owner or in ownership of the international registration recorded in the International Register, and the USPTO will automatically update its database to reflect the change(s).  TMEP §§501.07, 1904.06.      

The holder/owner should notify the undersigned when Office records indicate that the change in name or ownership has been received from the IB.  The USPTO cannot recognize the party who filed the Section 71 Affidavit as the current holder/owner until notification is received from the IB that a change in name or ownership has been recorded.  Therefore, the holder/owner may wish to contact the IB at http://www.wipo.int/madrid/en/contact.html regarding the recordation of the appropriate documents.  Additionally, a new holder/owner can check the TSDR database at http://tsdr.gov.uspto.report/ to determine whether the trademark database has been updated to reflect all changes received from the IB.

Further action on a Section 71 Affidavit will be deferred pending notification from the IB of a change in name or ownership recorded in the International Register if there are no other issues with the filing to be resolved and the filer provides: (1) a copy of the completed MM5 form that was submitted to the IB, and (2) proof that the MM5 filing was received by the IB (such as a screenshot of the Madrid Real Time Status database showing that the MM5 is “in progress”).

Information for Section 71 Affidavits Not Filed in the Name of the Holder/Owner

If the Section 71 Affidavit was not filed in the name of the holder/owner of the registration and there is time remaining in the statutory filing period, including grace period, when responding to this Office action, the true holder/owner may (1) submit a correction of the name in the filing of record or (2) file a complete new Section 71 Affidavit with a new specimen and filing fee.  Please note that a deficiency surcharge is required if the Section 71 Affidavit was submitted before the grace period began and a correction of the name in the filing of record is received during the grade period.  37 C.F.R. §7.39(c)(1).  The deficiency surcharge is $100 if submitted online using the Trademark Electronic Application System (“TEAS”) and $200 if submitted on paper.  37 C.F.R. §7.6.  The fee for filing a Section 71 Affidavit is $125 per class for filings submitted through TEAS and $225 per class for filings submitted on paper.  37 C.F.R. §7.6.  If the new Section 71 Affidavit is filed during the six-month grace period, the holder/owner must pay the filing fee for the Section 71 Affidavit and the grace period fee.  15 U.S.C. §1141k; 37 C.F.R. §§7.36, 7.37.  The grace period fee is $100 per class for filings submitted through TEAS and $200 per class for filings submitted on paper.  37 C.F.R. §7.6. 

If the Section 71 Affidavit was not filed in the name of the holder/owner of the registration and there is no time remaining in the grace period when responding to this Office action, the true holder/owner may submit a correction of the name in the filing of record with payment of the deficiency surcharge, but may not file a new Section 71 Affidavit.  15 U.S.C. §1141k. 

Confirmation Required: Affidavit Signed by Authorized Signatory

If a correction of the name in the filing of record is submitted at any time, the true holder/owner must confirm that the original affidavit was signed by a person properly authorized to sign on behalf of the holder/owner.  37 C.F.R. §§2.193(e)(1), 7.37(b).  If the original affidavit was not signed by an authorized signatory, the holder/owner must also submit a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the holder/owner, attesting to the use or excusable nonuse of the mark during the relevant period for filing the 6-year Section 71.

2.      SPECIMEN ISSUES

The specimen submitted with the Section 71 Affidavit is unacceptable because the digitized image is illegible due to technical difficulties and does not clearly show the registered mark in use in commerce for the identified goods and/or services.  A Section 71 Affidavit must include a specimen showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed.  15 U.S.C. §1141k(b); 37 C.F.R. §7.37(g).

Therefore, the holder/owner must satisfy one of the following:

(1)  Submit a true and unaltered copy of the originally submitted specimen filed with the Section 71 Affidavit, and a statement by the person who transmitted the affidavit to the Office that the resubmitted specimen is a true copy of the specimen that was originally submitted with the Section 71 Affidavit.  No verification or fee is necessary.  See TMEP §1604.12(b).      

(2)  Submit a substitute specimen showing current use of the registered mark in commerce for each class of goods and/or services specified in the registration, and 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.”  A fee may be required, depending on when a response is received.  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.

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 71 Affidavit, if properly signed and dated:

The 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 specimen, during the relevant period for filing the 6-year Section 71.

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the holder/owner, and 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

The following persons are properly authorized to sign a Section 71 Affidavit on behalf of the holder/owner:

(1)  A person with legal authority to bind the holder/owner (e.g., a corporate officer or general partner);

(2)  A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the holder/owner; or

(3)  An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the holder/owner.

37 C.F.R. §§7.37(b), 2.193(e)(1).

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:  The holder/owner must submit a $100 deficiency surcharge if its response to this Office action is received after the expiration of the grace period, i.e., after September 26, 2019, and the response is submitted online using the Trademark Electronic Application System (“TEAS”).  A $200 deficiency surcharge must be submitted if the response is received after the expiration of the grace period and the response is submitted on paper.  37 C.F.R. §§7.6, 7.39(c)(2).

/Whitsey, Tamika/

Trademark Specialist

Tamika.whitsey@uspto.gov

571-272-4321

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.