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:  September 27, 2019

Status

Your response to the outstanding Office action regarding the Sections 8 & 15 Combined Affidavit was timely received on September 20, 2019.

Upon review of your response, the following issue remains:

·         Requirements for Audit Not Satisfied.

Requirements for Audit Not Satisfied

As part of the audit to assess and promote the accuracy and integrity of the trademark register as to the actual use of the mark with the services identified in the registration, the owner of the registration was required to submit proof of use for two additional services per class.  37 C.F.R. §§2.161(h), 7.37(h).  Although the owner submitted a response to the Office action, the owner did not sufficiently respond to the requirements of the audit.

Specifically, you have established acceptable proof of use for:

Services in International 38;

Distribution of television programs for others; Television programming; Programming on a global computer network of television programming; Video-on-demand television programming; Providing on-line interactive computer databases featuring television programming lists, schedules and related information; Providing on-line interactive computer databases featuring information about television shows, and other digital images, audio, video and multimedia content, all in the field of entertainment, in International 41.

However, acceptable proof has not been established for:

Providing on-line interactive computer databases featuring information about movies, all in the field of entertainment.

The registrant has not provided proof of use for the above listed services.

As the owner has not satisfied the requirements of the audit, the owner must verify the accuracy of the claim of use in the affidavit of use by providing proof of use for all the remaining services in the registration without acceptable proof of use.  Id.

Therefore, the owner must submit the following:

(1)   Proof of current use of the registered mark in commerce for the following services:

·         Providing on-line interactive computer databases featuring information about, movies, all in the field of entertainment, in International Class 41; and

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The owner was using the mark in commerce on or in connection with the services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.”  37 C.F.R. §§2.161(h), 7.37(h).

Acceptable proof of use for services includes signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.

Form Declaration

Please note that the below statement verifying proof of use is slightly different than the standard substitute specimen statement.

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the use of the mark as evidenced by the submitted item(s) showing proof of use, if properly signed and dated:

The owner was using the mark in commerce on or in connection with the services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that the facts set forth above are true; 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

WARNING:  If the owner responds with unacceptable proof of use for any services queried, the Office will delete these services from the registration.

Detailed information regarding the audit program is provided on the following webpage – http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  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, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

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.

/Celia Abednego/

Celia Abednego

United States Patent and Trademark Office

Post Registration Division (Work Project)

Wk Phone: 571-272-9492

celia.abednego@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.