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:  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

The specimen submitted with the Section 8 Affidavit is unacceptable because it consists of advertising material for goods and does not show use of the registered mark on the goods or on packaging for the goods.  See TMEP §904.04(b)-(c). 

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.

FAQ of Specimens

TMIN News: Specimen Video

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

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. 

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.

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

• 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.