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: 4/2/2018

U.S. Registration Number  4051743

The Sections 8 & 15 Combined Affidavit was received on November 8, 2017.  The Section 15 portion of the Combined Affidavit can be acknowledged.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

Additional Requirements for Section 8 Affidavits or Declarations Pertaining to Certification Marks - Inquiry

The owner has not provided all of the additional requirements for a Section 8 Affidavit or Declaration pertaining to a certification mark.  In addition to the general requirements applicable to all registrations for which use is claimed, a Section 8 Affidavit or Declaration pertaining to a certification mark must include:

(1) A copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the registration (see 37 C.F.R. §2.45(a)(4)(i)(B); TMEP §1604.21(a));

(2) A statement that the owner is exercising legitimate control over the use of the mark in commerce (see TMEP §1604.21(b));

(3) A statement specifying what the owner is certifying about the goods or services in the registration (see 37 C.F.R. §2.45(a)(4)(i)(A); TMEP §1604.21(c)); and

(4) A statement that the owner is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the owner (see 37 C.F.R. §2.45(a)(4)(i)(C); TMEP §1604.21(d)).

37 C.F.R. §2.161(j)-(j)(3).

Therefore, the owner must comply with the following additional requirements: 

Certification Standards

Submitting certification standards for the first time.  If the registration issued from an application based solely on Section 44 of the Act, the owner must submit a copy of the standards used to determine who is authorized to use the certification mark in the first Section 8 Affidavit or Declaration filed with the USPTO.  See 37 C.F.R. §2.161(j)(1)(i); TMEP §1604.21(a).  The standards must cover the full scope of the goods/services identified in the registration.  For example, if the goods are “olive oil,” but the standards are only for “extra virgin olive oil,” the owner must submit standards for all types of olive oil or amend the identification to “extra virgin olive oil.”  TMEP §1604.21(a).

Further, the standards are not required to be created by the owner, but may be established by another party, such as a government agency or private research organization.  Id.

Certification standards submitted in prior filing.  If the certification standards in use at the time of filing the Section 8 Affidavit or Declaration have not changed since the date they were previously submitted to the USPTO, the Section 8 Affidavit or Declaration must include a statement to that effect.  37 C.F.R. §2.161(j)(1)(ii); TMEP §1604.21(a).  If the certification standards in use at the time of filing the Section 8 Affidavit or Declaration have changed since the date they were previously submitted to the USPTO, the Section 8 Affidavit or Declaration must include a copy of the revised certification standards.  Id.

Declaration

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit or Declaration, if properly signed and dated:

Unless the owner specifically claimed excusable nonuse, the mark was in use in commerce on or in connection with the goods/services or to indicate membership in the collective membership organization identified in the registration, as evidenced by the submitted specimen(s) showing the mark as used in commerce, during the relevant period for filing the 6-year Section 8.

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 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 Combined Affidavit on behalf of the owner:

(1)   A person with legal authority to bind the 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 owner; or

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

37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  The 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. §2.163(b)-(c); TMEP §1604.16.

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 124

571-272-8844

jordan.baker@uspto.gov

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.