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:  January 28, 2020

The Sections 71 & 15 Combined Affidavit was received on December 4, 2019.  The Section 15 portion of the Combined Affidavit can be acknowledged.  However, the Section 71 portion is not accepted for the reason set forth below.

SUBSTITUTE SPECIMEN ALONG WITH SIGNED DECLARATION

The specimen submitted with the Section 71 Affidavit does not show any form of the registered mark.  A Section 71 Affidavit must include a specimen showing current use of the mark for each class of goods and/or services.  15 U.S.C. §1141k(b); 37 C.F.R. §7.37(g). 

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/or 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.  Click links below for further explanation and/or visual details of acceptable specimens.

FAQ of Specimens

TMIN News: Specimen Video

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 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)(1).

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.

/Dana L. Newton/

Trademark Specialist

Post Registration Division

571-272-9544

571-273-9544 – fax

Dana.Newton@uspto.gov

USPTO

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.