To: | BONLINE LTD. (trademarks@brookskushman.com) |
Subject: | U.S. Trademark Registration No. 4378663 - BONLINE - IPAPL0115TUS |
Sent: | 08/22/19 12:26:30 PM |
Sent As: | prg@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Owner’s Trademark Registration
U.S. Registration No. 4378663
Mark: BONLINE
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Correspondence Address: |
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Owner: BONLINE LTD.
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Reference/Docket No. IPAPL0115TUS
Correspondence Email Address: |
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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: August 22, 2019
The Section 8 Affidavit, filed on August 5, 2019, is not accepted for the reason(s) set forth below.
I. SPECIMEN DEFICIENCY – ADVERTISING MATERIAL – CLASS 9
Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is unacceptable to show trademark use. TMEP §904.04(b). Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b)-(c).
Therefore, the owner must submit the following:
(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods specified in the registration; 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 6-year Section 8.” 37 C.F.R. §2.161(g); TMEP §1604.12(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
II. SAMPLE DECLARATION
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.
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 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(b), 2.193(e)(1); TMEP §1604.08(a).
III. SIGNATURE ON RESPONSE - 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).
IV. RESPONSE GUIDELINES
DEFICIENCY SURCHARGE: The owner must submit a $100 deficiency surcharge if its response to this Office action is received after the expiration of the grace period, i.e., after February 6, 2019, and the response is submitted online using the Trademark Electronic Application System (“TEAS”). A $200 deficiency surcharge must be submitted if the response is received after the expiration of the grace period and the response is submitted on paper. 37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).
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.
/Shawnee Letsa/
Trademark Specialist
Post Registration Division
571-272-9626 Direct
571-273-9626 Fax
Shawnee.letsa@uspto.gov
RESPONSE GUIDANCE