| To: | THQ NORDIC AB (drwtrademarks@wolfgreenfield.com) |
| Subject: | TRADEMARK REGISTRATION NO. 4120722 - THQ - N054720021US |
| Sent: | 10/23/18 09:40:26 AM |
| Sent As: | PRG@uspto.gov |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION
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U.S. REGISTRATION NO. 4120722
OWNER: THQ NORDIC AB
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CORRESPONDENT’S ADDRESS: |
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MARK: THQ
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CORRESPONDENT’S REFERENCE/DOCKET NO. N054720021US
CORRESPONDENT’S EMAIL ADDRESS: |
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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
ISSUE/MAILING DATE: 10/23/2018
U.S. Registration Number 4120722
Your response to the outstanding Office action regarding the Section 8 Affidavit was timely received on October 1, 2018.
Requirements for Audit Not Satisfied
As part of the audit to assess and promote the accuracy and integrity of the trademark register as to the actual use of the mark with the goods and/or services identified in the registration, the owner or holder/owner of the registration was required to submit proof of use for two additional goods and/or services per class. 37 C.F.R. §§2.161(h), 7.37(h). Although the owner or holder/owner submitted a response to the Office action, the owner or holder/owner did not sufficiently respond to the requirements of the audit.
Specifically, you have established acceptable proof of use for:
Computer game software; video game software; downloadable video games; computer game equipment, namely, peripherals and gaming hardware; Computer game equipment, namely, gaming hardware, all in Class 9.
However, acceptable proof has not been established for:
Entertainment, namely, providing online computer games and video games; providing a website featuring entertainment information, all in Class 41.
The request to delete “entertainment, namely, providing temporary use of non-downloadable computer games” from the registration has been made of record.
The proof of use provided for Class 41 is unacceptable because registered mark does not appear on the specimens for the registered service. The registered mark is THQ but the mark is shown on the specimen as THQNORDIC.
As the owner or holder/owner has not satisfied the requirements of the audit, the owner or holder/owner must verify the accuracy of the claim of use in the affidavit of use by providing proof of use for all the remaining goods and/or services in the registration without acceptable proof of use. Id.
Therefore, the owner or holder/owner must submit the following:
(1) Proof of current use of the registered mark in commerce for the following services:
· Entertainment, namely, providing online computer games;
· Entertainment, namely, providing video games;
· providing a website featuring entertainment information, both in International Class 41;
and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The owner or 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 proof of use, during the relevant period for filing the affidavit of use.” 37 C.F.R. §§2.161(h), 7.37(h).
Acceptable proof of use for services includes signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.
Form Declaration
Please note that the below statement verifying proof of use is slightly different than the standard substitute specimen statement.
The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the use of the mark as evidenced by the submitted item(s) showing proof of use, if properly signed and dated:
The owner or 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 proof of used during the relevant period for filing the affidavit of use.
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 the facts set forth above are true; 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
WARNING: If the owner or holder/owner responds with unacceptable proof of use for any goods and/or services queried, the Office will delete these goods and/or services from the registration.
Detailed information regarding the audit program is provided on the following webpage – http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program.
DEFICIENCY FEE
The owner must submit the required deficiency surcharge, as set forth on the March 30, 2018 Office action. A $100 deficiency surcharge must be submitted if the response is submitted online using the Trademark Electronic Application System (“TEAS”), and a $200 deficiency surcharge must be submitted if the response is submitted on paper. 37 C.F.R. §2.6.
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.
/Phillip D. White/
Post Registration Division (on work project)
phillip.white@uspto.gov (for inquiries only)
571-272-9665
571-273-9500 (fax)
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.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.