United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

 

U.S. Registration No. 4731806   Mark:  BROOKS
Correspondence Address:         Christopher K. Albert        HAMILTON, BROOK, SMITH & REYNOLDS, P.C.        530 Virginia Road, P.O. Box 9133        CONCORD, MA,    01742-9133
Owner:  Brooks Automation US, LLC
Reference/Docket No. 0100.0482-00          Correspondence Email Address:         trademarks@hbsr.com

 

 

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:  February 9, 2022

 

The Sections 8 & 15 Combined Affidavit submitted on October 21, 2021, cannot be accepted or acknowledged for the reasons set forth below.

 

SECTIONS 8 AND 15 COMBINED AFFIDAVIT ISSUES

 

I.                   OWNERSHIP CLARIFICATION

 

The party who filed the Combined Affidavit must establish its ownership of the registration.  The Trademark Act requires the current owner of the registration to file the Combined Affidavit.  15 U.S.C. §§1058, 1065; 37 C.F.R. §§2.161(a)(1), 2.167(a), 3.73(b); TMEP §§1604.07(a), 1605.04.  Office records do not show clear chain of title in the party who filed the Combined Affidavit.

 

Office records show clear chain of title to the registration in BROOKS AUTOMATION US, LLC (DELAWARE, LIMITED LIABILITY COMPANY).  However, the party who filed the Combined Affidavit is identified as BROOKS AUTOMATION, INC. (DELAWARE, CORPORATION).

 

The party who filed the Combined Affidavit or Declaration must establish its current ownership of the registration.  15 U.S.C. §§1058, 1065; 37 C.F.R. §§2.161(a)(1), 2.167(a), 3.73(b); see TMEP §§1604.07(a), 1605.04.  Ownership can be established by satisfying one of the following:  (1) recording the appropriate documents with the Assignment Recordation Branch of the Office; or (2) submitting actual evidence showing the transfer of title to the party who filed the Combined Affidavit or Declaration.  37 C.F.R. §3.73(b); TMEP §502.01.  More information about these two methods for establishing ownership of the registration appears directly below. 

 

(1) If the present owner chooses to record the appropriate documents with the Assignment Recordation Branch, the documents must be recorded before expiration of the time for filing a response.  In addition, you must notify the undersigned when the documents have been recorded.  For information regarding recording assignments, name changes and mergers, please visit the webpage https://www.uspto.gov/trademark/trademark-assignments-change-search-ownership and see TMEP §§503 et seq.  For specific questions, please contact the Assignment Recordation Branch at 571-272-3350.  To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov.  To record an assignment, the owner must submit the assignment documents along with a cover sheet and the required fee.  37 C.F.R. §§3.28, 3.31.  The fees for recording an assignment are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document.  37 C.F.R. §2.6(b)(6).  The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.  37 C.F.R. §3.25.

 

(2) If the present owner prefers to submit actual evidence of ownership directly to the undersigned trademark specialist, copies of the actual documents transferring title or a statement explaining the valid transfer of legal title must be submitted.  If submitting a statement of facts explaining the transfer of title, this statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §3.73; TMEP §§502 et seq.

 

Acceptance Notice Issued in Name of Owner of Record

 

Please note that if the party who filed the Combined Affidavit or Declaration submits sufficient evidence to establish ownership but the ownership documents are not recorded with the Assignment Recordation Branch before expiration of the time to file a response, then the notice of acceptance and acknowledgement will issue in the name of the owner of record.  37 C.F.R. §3.85; TMEP §502.02.  An updated notice of acceptance and acknowledgement will not issue if ownership documents are recorded following the expiration of the time to file a response; however, the new owner may file a request for a new certificate in the new owner’s name, along with the required fee.  See 37 C.F.R. §2.6(a)(8); TMEP §502.03.       

 

There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.  TMEP §1604.07(a). 

 

Information for Combined Affidavits or Declarations Not Filed in the Name of the Owner

 

If the Combined Affidavit or Declaration was not filed in the name of the owner of the registration and there is time remaining in the statutory filing period, including grace period, when responding to this Office action, the true owner may (1) submit a correction of the name in the filing of record or (2) file a complete new Combined Affidavit or Declaration with a new specimen and filing fee.  Please note that a deficiency surcharge is required if the Combined Affidavit or Declaration was submitted before the grace period began and a correction of the name in the filing of record is received during the grace period.  37 C.F.R. §2.164(a)(1); TMEP §1604.17(a).  The deficiency surcharge is $100.  37 C.F.R. §2.6.  The fee for filing a Combined Affidavit or Declaration is $425 per class.  37 C.F.R. §2.6.  If the new Combined Affidavit or Declaration is filed during the six-month grace period, the owner must pay the filing fee for the Combined Affidavit or Declaration and the grace period fee.  15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161; TMEP §1604.07(a).  The grace period fee is $100 per class.  37 C.F.R. §2.6.

 

If the Combined Affidavit or Declaration was not filed in the name of the owner of the registration and there is no time remaining in the grace period when responding to this Office action, the true owner may submit a correction of the name in the filing of record with payment of the deficiency surcharge, but may not file a new Combined Affidavit or Declaration.  15 U.S.C. §1058.

 

Confirmation Required: Affidavit or Declaration Signed by Authorized Signatory

 

If a correction of the name in the filing of record is submitted at any time, the true owner must confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the owner.  37 C.F.R. §§2.161(a)(2), 2.167, 2.193(e)(1); TMEP §1604.08(a).  If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit or declaration.

 

II.                SAMPLE DECLARATION

 

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Combined 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, that is, between the 5^th and 6^th year anniversary after the date of registration or the date of publication under 15 U.S.C. §1062, or during the ensuing grace period.

 

The mark has been in continuous use in commerce for five (5) consecutive years after the date of registration or the date of publication under 15 U.S.C. §1062(c), and is still in use in commerce on or in connection with all goods and/or services listed in the existing registration.  There has been no final decision adverse to the owner’s claim of ownership of such mark for such goods and/or services, or to the owner’s rights to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the United States Patent and Trademark Office or in the courts.

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 Combined 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).

 

III.             RESPONSE GUIDELINES

 

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.

 

 

 

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.

 

 

/Ashley Tait/

Trademark Specialist

Post Registration Division

(571) 270-1842

Ashley.Tait@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.