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:  April 22, 2022

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on December 22, 2021.  The Section 9 portion of the combined filing can be granted.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

ISSUES PERTAINING TO SECTION 8 PORTION ONLY

I.                   OMITTED GOODS AND SERVICES – CLARIFICATION REQUIRED

The owner must submit a statement that clarifies the goods and/or services in the registration for which the mark is still in use in commerce.  15 U.S.C. §1058(b); 37 C.F.R. §2.161(a)(5)(i); TMEP §§1604.09(a), (c).  This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.

The Section 8 Affidavit of record omits some of the goods and/or services listed in the registration.  If the Section 8 Affidavit is intended to cover fewer than all the goods and/or services, then the owner must specify the goods and/or services being deleted.  37 C.F.R. §2.161(a)(5)(ii); TMEP §1604.09(b).  Goods and/or services omitted from a Section 8 Affidavit will be deleted from the registration.

II.                SAMPLE DECLARATION

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 10-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

III.             AUTHORIZED SIGNATORIES

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(a)(2), 2.193(e)(1); TMEP §1604.08(a).

IV.             SIGNATURE ON RESPONSES – ADVISORY

Responses to Office actions must be properly signed.  37 C.F.R. §§2.163(b), 2.193(e)(2); TMEP §611.03(b).  When an owner is represented by an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §611.03(b).  The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney.  See 37 C.F.R. 2.17(a), 11.14(a), (c), (e).  Attorneys who fail to meet these requirements, as well as non-attorneys, are generally not permitted to represent owners in trademark matters before the USPTO; and thus, they may not sign responses.  See 5 U.S.C. §500(b), (d); 37 C.F.R. §11.14(a)-(c), (e); TMEP §§602, 602.02, 608.01. 

Where an owner is represented by an attorney, and then later retains a different attorney from a different firm, the newly retained attorney may not sign responses until the owner files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

Where an owner is not represented by an attorney, the response must be signed by the individual owner or someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq.  In the case of joint owners, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

V.                RESPONSE GUIDELINES

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 10^th year anniversary date on June 12, 2022, 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, 1604.17(a).

DEFICIENCY SURCHARGE INFORMATION:  If the response to this Office action is received by the Office after June 12, 2022 date of 10^th year anniversary, a $100 deficiency surcharge must be submitted.  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).  (Note:  This only applies when the response time deadline above falls after the 10^th year anniversary date.)

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(a)(4)(i)-(ii).  For more information about this, please contact the undersigned.

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.

/Vanessa Barber/

Trademark Specialist

Post Registration Division

571 272-0989  Direct

Vanessa.Barber@uspto.gov

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.