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:  June 15, 2021

The Sections 71 & 15 Combined Affidavit submitted on March 17, 2021, cannot be accepted or acknowledged for the reasons set forth below.

OWNERSHIP ISSUE:

The party who filed the Combined Affidavit must establish its ownership of the registration.  The Trademark Act requires the current holder/owner of the international registration to file the Combined Affidavit.  15 U.S.C. §§1065, 1141k; 37 C.F.R. §§2.167(a), 7.37(a)(1); TMEP §§1605.04, 1613.07(a).  Office records do not show clear chain of title in the party who filed the Combined Affidavit.

Office records show clear chain of title to the registration in GARENA ONLINE PRIVATE LIMITED.  However, the party who filed the Combined Affidavit is identified as Sea Limited. 

The party who filed the Combined Affidavit must establish its current ownership of the registration.  15 U.S.C. §§1065, 1141k; 37 C.F.R. §§2.167(a), 7.37(a)(1); TMEP §§1605.04, 1613.07(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 Combined 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 Combined 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 Combined Affidavits Not Filed in the Name of the Holder/Owner

If the Combined 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 Combined Affidavit with a new specimen and filing fee.  Please note that a deficiency surcharge is required if the Combined Affidavit was submitted before the grace period began and a correction of the name in the filing of record is received during the grace period.  37 C.F.R. §7.39(c)(1); TMEP §1613.17(a).  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 Combined Affidavit is $425 per class for filings submitted through TEAS and $625 per class for filings submitted on paper.  37 C.F.R. §§2.6, 7.6.  If the new Combined Affidavit is filed during the six-month grace period, the holder/owner must pay the filing fee for the Combined Affidavit and the grace period fee.  15 U.S.C. §1141k; 37 C.F.R. §§7.36, 7.37; TMEP §1613.07(a).  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 Combined 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 Combined 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(a)(2); TMEP §1613.08(a).  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, that affirms the representations in the original affidavit.

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.

/stakhar/

Surinderpal Takhar

Post Registration Unit

Trademark Specialist

Surinder.Takhar@Uspto.gov

Phone - (571) 272-9512

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.