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:  July 8, 2020

The Section 7 Amendment submitted on May 27, 2020 is not accepted for the reasons set forth below.

Two Issues

1) Owner Entity Issue

The party who filed the Section 7 Amendment must establish its ownership of the subject registration.  37 C.F.R. §3.73; TMEP §502.01.  The Trademark Act requires the current owner of the registration to file the Section 7 Amendment.  15 U.S.C. §1057.  Office records do not show clear chain of title in the party who filed the Section 7 Amendment.

Office records show clear chain of title to the subject registration in Fisher, John (United States individual).  However, the party who filed the Section 7 Amendment is identified as Fisher, John  (Washington limited liability company). 

The party who filed the Section 7 Amendment must establish its current ownership of the subject registration.  37 C.F.R. §§2.173(a) and 3.73; TMEP §§502.01 and 1609.01(b).  Ownership can be established by satisfying one of the following:  (1) recording the appropriate documents with the Assignment Recordation Branch; or (2) submitting actual documentation evidence showing the transfer of title to the party who filed the Section 7 Amendment.  More information about these two methods for establishing ownership of the subject registration appears directly below.

(1)   If the present owner chooses to record the appropriate documents with the Assignment Recordation Branch, you must notify the undersigned paralegal when the documents have been submitted.  For information regarding recording assignments, name changes and mergers, please visit the webpage http://www.gov.uspto.report/trademark/trademark-assignments-change-search-ownership and see TMEP §§503 et seq.  For specific questions, please contact the Assignment Recordation Branch at 571-272-3350.  To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov.  There is a fee for recording ownership documents.

(2)   If the present owner prefers to submit actual evidence of ownership directly to the undersigned paralegal, copies of the actual documents transferring title or a statement explaining the valid transfer of legal title must be submitted.  If submitting a statement of facts explaining the transfer of title, this statement must be verified with an affidavit or declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §3.73 and TMEP §502.01.

Please be advised that the corrected registration will issue in the name of the owner of record unless the ownership change is recorded with the Assignment Recordation Branch.  37 C.F.R. §3.85; TMEP §502.03.

If the wrong party filed the Section 7 Amendment, then the current owner must file a new Section 7 Amendment with a new filing fee.

2) Disclaimer

The owner has requested that the mark in its registration be amended.  The registration includes the following statement(s):  Currently: WWW.CARABINER-SHEARS.COM 1-855-260-SNIP is under disclaimer.  A request to amend a mark in a registration that includes such statements must also include a request to make the necessary amendments to these statements so that they agree with the amended mark.  37 C.F.R. §2.173(f); TMEP §1609.02(d).  No such amendments were submitted with the Section 7. 

Therefore, the owner is required to submit an amendment(s) of the statement(s) to delete disclaimer referenced above so that they agree with the amended mark.  The owner’s request to amend the mark cannot be accepted until the owner provides the required amendments to the mark statements.

The owner has six months from the issuance date of this letter to respond to all the issues raised in this letter.  In order to expedite the processing of your Section 7 Amendment, the early submission of a response to this letter is encouraged.  If a complete response is not received in the Office within this time period, then the Section 7 Amendment will be considered abandoned.  37 C.F.R. §2.176.  The fee for filing the Section 7 Amendment will not be refunded.

How to respond.  Click to file a Response to Post-Registration Office action. 

Select form #9

Direct questions about this Office action to the Post Registration staff member below.

Ma, Macy

/macyma/

Post Registration Trademark Specialist

macy.ma@uspto.gov

571-272-9538

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.