Petition to Director Granted

United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 85880632   U.S. Registration No. 4490528   Mark:  UNICITY
Correspondence Address:         Preston C. Regehr        TechLaw Ventures, PLLC        3290 W. Mayflower Way        Lehi UT 84043
Owner:  Unicity Properties, Inc.
Reference/Docket No. 7194 TM   Correspondence Email Address:         pto@techlawventures.com

 

 

PETITION TO DIRECTOR GRANTED

 

 

Issue date:  June 23, 2021

 

Unicity Properties, Inc. (petitioner) has petitioned the Director of the United States Patent and Trademark Office (USPTO) to reinstate the above-identified registration and to accept a late response to an outstanding Post Registration Office action.  The Director has the authority to review this request under 37 C.F.R. §§2.146(a)(5), 2.148, and has delegated this matter to the Commissioner for Trademarks and the staff of the Office of the Deputy Commissioner for Trademark Examination Policy. 35 U.S.C. §3(a)-(b); 37 C.F.R. §2.146(h).  The petition is granted.

 

FACTS

 

On April 26, 2019, petitioner filed a combined Trademark Act Section 8 declaration of use or excusable nonuse and Trademark Act Section 15 affidavit of incontestability (combined declaration).  15 U.S.C. §§1058 and 1065. 

 

In an Office action dated May 18, 2019, the Post Registration examiner notified petitioner that its combined declaration was not acceptable, because the specimen submitted with the combined declaration for the International Class 003 goods showed the mark in use with different goods from those identified in the registration.   Petitioner was further notified that the registration was randomly selected for the Post Registration Proof of Use Audit Program (Audit Program) to determine whether the mark is in use with all of the goods and/or services identified in the registration.  Petitioner was advised that as part of the Audit Program, proof of use for two additional goods and/or services from International Class(es) 003, 005 and 035 was required.  Specifically, petitioner was advised that it must submit proof of use for:

 

• Body lotion;
• Hair spray, both in International Class 3;

 

• Herbal teas for medicinal purposes;
• Pollen for use as a dietary supplement, both in International Class 5;

 

• Online retail store services featuring cosmetic products and dietary supplements and vitamins and minerals, in International Class 35

 

Petitioner was also notified that if the response did not meet the requirements of the Audit Program, or if there was a request to delete any of the goods and/or services identified for audit while other goods and/or services remained in the registration without acceptable proof of use of record, then a second Office action would issue requiring proof of use for all of the remaining goods and/or services in the registration for which proof of use was not of record. 

 

The Post Registration specialist notified petitioner that he/she must file a response within six months of the issuance date of the Office action or before the end of the relevant filing period in Section 8(a), whichever was later, to avoid cancellation of the registration.  The USPTO did not receive a response on or before November 18, 2019, and the grace period under Section 8(a)(3) had expired on September 4, 2020.  The registration was cancelled on October 21, 2020.

 

Petitioner filed this petition on December 22, 2020.  The petition included a declaration in which petitioner’s counsel attested to the fact that petitioner never received the Office action dated May 18, 2019.  (Petition.)

 

DISCUSSION

 

When a combined declaration is filed but deemed unacceptable, the USPTO will issue a notice stating the reasons for refusal.  See 15 U.S.C. §1058(e); 37 C.F.R. §2.163; Trademark Manual of Examining Procedure (TMEP) §1604.15.  The registrant must file a response to the refusal within six months of the issue date of the Office action, or before the end of the filing period set forth in Section 8(a), whichever is later.  37 C.F.R. §2.163(b); TMEP §1604.16.  If no response is filed within this time period, the registration will be cancelled, unless time remains in the grace period under Section 8(a)(3).  37 C.F.R. §2.163(c); TMEP §1604.16. 

 

Petitioner did not file a response to the May 18, 2019 Office action within the six-month response period and the grace period under Section 8(a)(3) had expired.  Accordingly, the USPTO properly cancelled the registration under Section 8.  Petitioner, however, has provided evidence in the form of a declaration that he/she did not receive the May 18, 2019 Office action.

 

The Director may waive Trademark Rule 2.163(b) “in an extraordinary situation, when justice requires and no other party is injured.”  37 C.F.R. §§2.146(a)(5), 2.148, 2.163(b); see TMEP §1708.  To waive this rule, the Director must determine that all three conditions are satisfied.  See TMEP §1708.  In this case, the Director finds that a waiver of Rule 2.163(b) is appropriate.  Petitioner’s evidence showing that he/she did not receive the May 18, 2019 Office action establishes an extraordinary circumstance, in which the Director can conclude that no other party will be injured and justice requires a waiver of this rule.  See TMEP §§1604.16, 1708.  Based on this evidence, petitioner could not have responded to the May 18, 2019 Office action within six months of the issue date.

 

Accordingly, the Director waives Rule 2.163(b) and permits petitioner to submit a late response to the May 18, 2019 Office action.  See 37 C.F.R. §§2.146(a)(5), 2.148.

 

DECISION

 

The petition is granted.  The USPTO will reinstate on petition the above-identified registration.  The registration will then be forwarded to the Post Registration Division to review the response submitted with the petition.  

 

 

/W. Wendy Jun/

Attorney Advisor

Office of the Deputy Commissioner

  for Trademark Examination Policy

571-272-8810

wendy.jun@uspto.gov