UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

EXAMINER’S AMENDMENT

 

 

ISSUE/MAILING DATE: 2/22/2012

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by Mr. Josh McKay on February 22, 2012, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  Otherwise, no response is necessary.  TMEP §707.  Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

 

 

IDENTIFICATION OF GOODS

 

The identification of goods is amended to read as follows: 

 

Class 35

 

Advertising, promotion, and marketing services in the nature of a marketing program provided through the delivery of goods on a monthly basis for paid subscription customers; Development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, online community building and digital word of mouth communications; Direct marketing; On-line retail store services featuring a wide variety of consumer goods of others; Promoting the goods and services of others by providing a website featuring coupons, rebates, price-comparison information, product reviews, links to the retail websites of others, and discount information; Promoting, marketing and advertising the brands and goods of others related to all industries, through all public and private communication means, namely, promoting the brands and goods of others made in the United States

 

See TMEP §§1402.01, 1402.01(e).

 

 

General Procedural Information

 

After issuance of an examiner’s amendment, the trademark examining attorney will usually approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.  The USPTO will then send a “Notice of Publication” to the applicant specifying the date of publication. 

 

The purpose of publishing applicant’s mark in the Official Gazette is to provide an opportunity to third parties who believe they may be damaged by registration of applicant’s mark to oppose its registration within thirty (30) days from the publication date.  An “opposition” is similar to a federal court proceeding, but this proceeding is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal of administrative judges who issue decisions on such matters.  If an opposition proceeding is instituted to oppose registration of applicant’s mark, applicant will receive notice.  In such cases, due to the complexity of such matters, applicant may wish to hire an attorney.

 

If the mark is published based upon the actual use of the mark in commerce, or based on a foreign registration, and no party opposes its registration, the USPTO will normally register the mark and issue a registration certificate within approximately twelve (12) weeks after the date the mark was published.

 

If the mark is published based upon the applicant’s bona fide intention to use the mark in commerce, the USPTO will issue a “Notice of Allowance” within approximately eight (8) weeks after the date the mark was published, if no party files an opposition.  Applicant then has six (6) months from the date of the Notice of Allowance to timely file a “Statement of Use” or to file a request for a six-month “Extension of Time to file a Statement of Use.”  Extension requests are granted for six-month increments and a maximum of five extension requests can be filed after the issuance of the Notice of Allowance.  If not filed within the six months after the Notice of Allowance issued, a Statement of Use must be filed within the time period of a previously granted extension of time.

 

Forms for extension requests and Statements of Use are available online at http://www.uspto.gov/teas/index.html.  For more information about the additional requirements for intent to use applications, visit the USPTO website.  Only after a Statement of Use is approved by the examining attorney will the USPTO issue a registration certificate.

 

Trademark registrations must be renewed in order to remain active; that is, the registration owner must file the proper registration maintenance documents and fees within specific time periods.  See 15 U.S.C. §§1058, 1059; 37 C.F.R. §§2.160, 2.161, 2.183; TMEP ch. 1600.  If these maintenance documents are not timely and properly filed by the owner, the trademark registration will be cancelled and/or expired, and the owner will have to file a new trademark application and begin the process again of seeking a registration.  Notice of these registration maintenance requirements is provided on the certification of registration; which is the only notice provided by the USPTO.  TMEP §1604.02.

 

The deadline for filing proper registration maintenance documents cannot be waived on petition.  See, e.g., In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) (“Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner.”); In re Mother Tucker's Food Experience (Canada) Inc., 925 F.2d 1402, 1406, 17 USPQ2d 1795, 1798 (Fed. Cir. 1991) (“It was not within the Commissioner's discretionary authority to waive this requirement.”).

 

Between the fifth and sixth year after registration, the registration owner must file a Section 8 affidavit of use that includes fees and a specimen, among other things.  However, there is a 6-month grace period after the sixth year in which the Section 8 affidavit can be filed for an additional fee.  15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161.

 

Between the ninth and tenth year after registration, and at the end of each successive 10-year period after the date of registration (between the 19th and 20th year, the 29th and 30th year, etc.), the owner must file both a Section 8 affidavit and a renewal application under Section 9 of the Trademark Act.  There is also a 6-month grace period to file these documents, with an additional fee.  15 U.S.C. §§1058, 1059; 37 C.F.R. §§2.160, 2.161, 2.183.

 

More information about maintaining a registration, as well as forms for filing maintenance documents, is available at the USPTO website at http://www.uspto.gov/main/trademarks.htm.

 

If applicant has questions regarding this Examiner’s Amendment, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to this Examiner’s Amendment, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Alyssa Steel/

Alyssa Paladino Steel

Trademark Examining Attorney

Law Office 107

Phone: (571) 272-8808

E-mail: alyssa.steel@uspto.gov

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.