To: | Chiorino S.p.A. (nixonptomail@nixonvan.com) |
Subject: | U.S. Trademark Registration No. 4390310 - PT - 4196-0212 |
Sent: | 01/30/20 05:43:37 PM |
Sent As: | prg@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Owner’s Trademark Registration
U.S. Registration No. 4390310
Mark: PT
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Correspondence Address: |
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Owner: Chiorino S.p.A.
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Reference/Docket No. 4196-0212
Correspondence Email Address: |
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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 30, 2020
The Sections 8 & 15 Combined Affidavit was received on April 20, 2019. The Section 15 portion of the Combined Affidavit can be acknowledged. However, the Section 8 portion is not accepted for the reason set forth below.
SUBSTITUTE SPECIMEN ALONG WITH SIGNED DECLARATION
Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is unacceptable to show trademark use. TMEP §904.04(b). Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b)-(c).
Therefore, the owner must submit the following:
(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods 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 8.” 37 C.F.R. §2.161(g); TMEP §1604.12(c).
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.
The 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 8.
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 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 8 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).
Attorney bar information required. The owner’s/holder’s primary attorney of record must provide the following bar information: (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar. 37 C.F.R. §2.17(b)(3). This information is required for all U.S.-licensed attorneys who are the primary attorney of record for trademark owners/holders at the USPTO. Id. If the attorney’s bar does not issue bar membership numbers, the owner/holder must state this for the record. See id.
To provide bar information. The owner’s/holder’s primary attorney of record should provide his or her bar information by using the Revocation of Attorney and/or Appointment of Attorney/Domestic Representative form. The newly appointed attorney must submit a TEAS Response to Office Action for Post-Registration Matters form indicating that the attorney appointment form has been submitted and address all other refusals or requirements in this action, if any. Bar information provided in any other area of the form will be viewable by the public in USPTO records.
Attorney statement required. The owner’s/holder’s primary attorney of record must provide the following statement: “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).” See 37 C.F.R. §2.17(b)(3). This is required for all U.S.-licensed attorneys who are the primary attorney of record for trademark owners/holders at the USPTO. Id.
DEFICIENCY SURCHARGE REQUIRED: The 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. §§2.6, 2.164(a)(1); TMEP §1604.17(a).
/Dana L. Newton/
Trademark Specialist
Post Registration Division
571-272-9544
571-273-9544 – fax
Dana.Newton@uspto.gov
USPTO
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.
RESPONSE GUIDANCE