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 12, 2022

The Sections 8 & 15 Combined Affidavit was received on November 22, 2021.  The Section 15 portion of the Combined Affidavit can be acknowledged.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

Specimen Unacceptable – Does Not Show Use by Member

The specimen submitted with the Section 8 Affidavit or Declaration is unacceptable because it shows the registered mark in use in commerce only by the owner and not by a member of the owner’s organization.  A collective membership mark specimen must show use of the mark in commerce by members to indicate membership in the collective membership organization.  See 37 C.F.R. §2.56(b)(4); In re Int’l Ass’n for Enterostomal Therapy, Inc., 218 USPQ 343, 345 (TTAB 1983); In re Triangle Club of Princeton Univ., 138 USPQ 332, 332-33 (TTAB 1963); TMEP §1304.02(a)(i)(C).

In the present case, the specimens consists of several flyers or posters for social events.  The specimen does not show proper collective membership mark use by members because it only shows use by the owner or a chapter of the owner, in promoting the social entertainment events.

For a collective membership mark, the most common types of specimens are membership cards and certificates. The owner may submit as a specimen a blank or voided membership card or certificate.

For trade or professional associations, decals bearing the mark for use by members on doors or windows in their establishments, wall plaques bearing the mark, or decals or plates for use, e.g., on members’ vehicles, are satisfactory specimens. If the members are in business and place the mark on their business stationery to show their membership, pieces of such stationery are acceptable. Flags, pennants, and banners of various types used in connection with political parties, club groups, or the like could be satisfactory specimens.

Many associations, particularly fraternal societies, use jewelry such as pins, rings, or charms to indicate membership. In re Triangle Club of Princeton Univ. 138 USPQ 332 (TTAB 1963). However, not every ornamental design on jewelry is necessarily an indication of membership. The record must show that the design on a piece of jewelry is actually an indication of membership before the jewelry can be accepted as a specimen of use. See In re Inst. for Certification of Computer Prof’ls, 219 USPQ 372 (TTAB 1983) (in view of contradictory evidence in record, specimen with nothing more than CCP thereon was not considered evidence of membership); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967) (design on specimen did not indicate membership in organization, but merely showed length of service).

Shoulder, sleeve, pocket, or similar patches, or lapel pins, whose design constitutes a membership mark and which are authorized by the parent organization for use by members on garments to indicate membership, are normally acceptable as specimens. Clothing authorized by the parent organization to be worn by members may also be an acceptable specimen.

A specimen that shows use of the mark by the collective organization itself, rather than by a member, is not acceptable. Collective organizations often publish various kinds of printed material, such as catalogs, directories, bulletins, newsletters, magazines, programs, and the like. Placement of the mark on these items by the collective organization represents use of the mark as a trademark or service mark to indicate that the collective organization is the source of the material. The mark is not placed on these items by the parent organization to indicate membership of a person in the organization.

Therefore, the owner must submit the following:

(1) A substitute specimen that shows use by members of the registered mark in commerce to indicate membership in the owner’s collective membership organization; 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 10-year Section 8.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

Examples of specimens include membership cards or certificates, decals, wall plaques, garment patches, flags, pennants, banners, business stationery, clothing, and any other item used by a member to indicate membership in owner’s organization.  See TMEP §1304.02(a)(i)(C).

Any webpage printout or screenshot submitted as a specimen, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

Declaration

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

Unless the owner specifically claimed excusable nonuse, the mark was in use in commerce on or in connection with the goods/services or to indicate membership in the collective membership organization identified in the registration, as evidenced by the submitted specimen(s) showing the mark as used in commerce, during the relevant period for filing the 10-year Section 8.

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 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(b), 2.193(e)(1); TMEP §1604.08(a).

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 September 18, 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 September 18, 2022, 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.

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

571-272-8844

jordan.baker@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.