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:  December 16, 2019

The Section 8 Affidavit, filed on November 19, 2019, is not accepted for the reason(s) set forth below.

I.                   SPECIMEN

The specimen submitted with the Section 8 Affidavit is unacceptable because it shows the mark used on or in connection with goods and/or services that are different from those identified in the registration.  See In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm’r Pats. 1993).  Specifically, the specimen shows use for other goods. The goods and services in the registration comprise the following: Cases for eyeglasses and sunglasses; Cases for spectacles and sunglasses; Chains for spectacles and for sunglasses; Dust protective goggles and masks; Eyewear, namely, sunglasses, eyeglasses and ophthalmic frames and cases therefor; Eyewear, namely, sunglasses; Frames for spectacles and sunglasses; Goggles for sports; Lenses for sunglasses; Motorcycle goggles; Nose guards which can be worn by attachment to eyewear such as sunglasses and ski goggles; Ski goggles; Snow goggles; Spectacles and sunglasses; Sport goggles for use in action sports; Sunglass chains and cords; Sunglass lenses; Sunglasses; Sunglasses and spectacles. The specimen must be used on or in connection with the goods and/or services listed in the registration.  TMEP §1604.12(a).

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 and/or services 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.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

II.                DECLARATION

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 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.

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.             ATTORNEY’S BAR INFORMATION NEEDED

Attorney bar information required.  The owner’s/holder’s primary attorney of record must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are the primary attorney of record for trademark owners/holders at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, the owner/holder must state this for the record.  See id.

To provide bar information.  The owner’s/holder’s primary attorney of record should provide his or her bar information by using the Revocation of Attorney and/or Appointment of Attorney/Domestic Representative form.  The newly appointed attorney must submit a TEAS Response to Office Action for Post-Registration Matters form indicating that the attorney appointment form has been submitted and address all other refusals or requirements in this action, if any.  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

Attorney statement required.  The owner’s/holder’s primary attorney of record must provide the following statement:  “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are the primary attorney of record for trademark owners/holders at the USPTO.  Id. 

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 6^th year anniversary date on August 26, 2020, 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).

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(d)(1)-(2).  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.

/Kimberly Turner/

Kimberly Turner

Post Registration Trademark Specialist

Phone (571) 272-9396

Fax (571) 273-9396

kim.turner2@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.