UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 9/7/2010

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

NAME CHANGE

 

 In its preliminary amendment, applicant requested that the owner name be amended; however, applicant has not explained the reason for such request and has not provided or recorded ownership transfer documentation.  The name of the original applicant is BCI Communications, Inc.; the request is to amend this to UniTek Global Services, Inc.  The request to change the applicant’s name raises a question regarding whether the proper party filed the initial application.  Therefore, applicant must clarify whether the proper party filed the original application.  In addition, the request to amend the owner name is denied until clear chain of title to the new party is established.

 

An application is void if it was filed in the name of a party who did not own the applied for mark as of the application filing date.  15 U.S.C. §1051; 37 C.F.R. §2.71(d); Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 1460, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988); TMEP §§803.06, 1201.02(b).  A void application cannot be cured by amendment or assignment.  37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  In such cases, the true owner must file a new application.  TMEP §803.06.

 

If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another entity, then the new owner must submit documentation to establish a clear chain of title as follows:

 

(1)  The new owner must record an assignment, name change or other documentation affecting title with the Office’s Assignment Services Branch showing a clear chain of title to the mark in the new owner, and promptly notify the examining attorney that such documentation has been recorded; or

 

(2)  The new owner must submit either a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the current owner, or submit documentation showing transfer of title to the new owner.  However, the registration will not issue in the new owner name without recording chain of title documentation with the Office and notifying the examining attorney, as specified in (1) above.

 

37 C.F.R. §3.73(b)(1); TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §2.193(e)(1).

 

Assignments and other documents affecting title can be filed electronically at http://etas.gov.uspto.report/.  There is a fee for recording such ownership changes.  37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d).  Merely recording an assignment or other ownership transfer document does not constitute a response to an Office action.  See TMEP §503.01(d). 

 

If the party applying to register the mark is in fact the owner of the mark, but there is a typographical error or other minor mistake in the manner in which the name of the applicant is set forth in the application, the mistake may be corrected by amendment.  U.S. Pioneer Elecs. Corp. v. Evans Mktg., Inc., 183 USPQ 613 (Comm’r Pats. 1974); see TMEP §1201.02(c) (providing examples of correctable and non-correctable errors).

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

 

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

 

 

 

/Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 105

(571) 272-9292

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 9/7/2010 FOR

SERIAL NO. 85044124

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 9/7/2010 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.