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: 8/8/2018

U.S. Registration Number 4258616

Status

Your response to the outstanding Office action regarding the Sections 8 & 15 Combined Affidavit was timely received on July 10, 2018.

Requirements for Audit Not Satisfied for Classes 3 and 10

Audit requirements are satisfied for Class 5.

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 identified in the registration, the owner of the registration was required to submit proof of use for two additional goods per class.  37 C.F.R. §§2.161(h), 7.37(h).  Although the owner submitted a response to the Office action, the owner did not sufficiently respond to the requirements of the audit. 

Specifically, you have established acceptable proof of use for” Non-medicated cleansers, namely, hygienic cleanser for massage apparatus” in Class 3 and “Disinfectants for hygienic purposes” in Class 5; and deleted from the goods selected for audit “Shaving creams” in Class 3, “Tampons” in Class 5 and “Condoms” and “Vaginal dilators” in Class 10. 

Because the registration owner deleted goods from those selected for audit, the 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 in the registration without acceptable proof of use.  Id.

Therefore, the owner submit the following:

(1) Proof of current use of the registered mark in commerce for the following goods:

Class 3:

·       Bath oil;

·       bath salts;

·       bath crystals, namely, bath sugar;

Class 10: and

·       Massage apparatus;

·       electric massage appliances, namely, electric vibrating massager

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The owner was using the mark in commerce on or in connection with the goods 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). 

To demonstrate acceptable proof of use for goods, the owner must submit photographs that show the mark on the actual goods or packaging, or photographs of displays associated with the actual goods at their point of sale.  A tag or label that is not shown affixed to the goods is not acceptable proof of use.  Similarly, a package that does not show or identify the goods therein is not acceptable proof of use. 

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 was using the mark in commerce on or in connection with the goods 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.

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 responds with unacceptable proof of use for any goods 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.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 6^th year anniversary date on December 11, 2018, whichever is later.  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, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the owner may avoid cancellation of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §2.163(c).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §2.161(d)(1)-(2).  For more information about this, please contact the undersigned.

/Betty Chang/

Examining Attorney

Law Office 115

571-272-6517

betty.chang@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.