UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 7/21/2012

 

 

Introduction

 

This Office action is in response to applicant’s communication filed on June 15, 2012.

 

The following requirement(s) have been satisfied:  identification of goods/services and significance of wording.  TMEP §§713.02, 714.04.

 

However, applicant must address the following new issue:  change of owner of the mark.

 

 

Change of Owner Name

 

Applicant has requested that the owner name be amended; however, applicant has not provided a reason for this request, or provided or recorded ownership transfer documentation.  The name of the original applicant is R & S Electronics Enterprises; applicant seeks to amend this to QFX, Inc.  The request to change the owner name raises a question regarding whether the proper party filed the original application.  Therefore, applicant must clarify whether the proper party filed the original application, and whether the assignee is a successor to applicant’s business.  Pending a proper response, the request to amend the owner name is denied until clear chain of title to the new party has been established. 

 

An intent-to-use application is void if it was filed in the name of a party who was not entitled to use the mark on the application filing date.  37 C.F.R. §2.71(d); Am. Forests v. Sanders, 54 USPQ2d 1860, 1863 (TTAB 1999); TMEP §§803.06, 1201.02(b); see 15 U.S.C. §1051(b).  In addition, an intent-to-use application is void if, prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant’s business or to a portion of the applicant’s business to which the mark pertains, if that business is ongoing and existing.  15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996); TMEP §501.01(a).  A void application cannot be cured by amendment or assignment.  TMEP §§803.06, 1201.02(b); see 37 C.F.R. §2.71(d).  In these cases, the true owner must file a new application.  TMEP §803.06.

 

To amend the owner name in an application, the new owner must file documentation to establish its ownership of the application as follows:

 

(1)  The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.

 

(2)  The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner.  However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.

 

TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).

 

Assignments and other documents affecting title may be filed electronically at http://etas.gov.uspto.report/.  There is a fee for recording ownership changes.  37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d).  Recording an assignment or other ownership transfer document does not constitute a response to an Office action.  TMEP §503.01(d). 

 

If the party applying to register the mark is in fact the owner of the mark, but there is a typographical error or other minor mistake in the manner the owner name is set forth in the application, the mistake may be corrected by amendment.  U.S. Pioneer Elecs. Corp. v. Evans Mktg., Inc., 183 USPQ 613, 614 (Comm’r Pats. 1974); TMEP §1201.02(c) (providing examples of correctable and non-correctable errors).

 

 

 

/W. Wendy Jun/

Trademark Examining Attorney

Law Office 103

Phone - 571-272-8810

Fax No. 571-273-8810

wendy.jun@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  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 application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

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.gov.uspto.report/.  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.gov.uspto.report/trademarks/process/status/.

 

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

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 7/21/2012 FOR

SERIAL NO. 85549597

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 7/21/2012 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.