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:  August 29, 2019

The Sections 8 & 15 Combined Affidavit was received on August 26, 2019.  The Section 15 portion of the Combined Affidavit can be acknowledged.  However, the Section 8 portion is not accepted for the reasons set forth below.

SUMMARY OF ISSUES:

·       Specimen Refused – Mere Advertising for Goods

·       Registration Selected for Audit

SPECIMEN REFUSED – MERE ADVERTISING FOR GOODS

The owner of the registration provided a specimen with its Section 8 Affidavit; however, although the specimen appears to only a point-of-sale display associated with the goods, and thus it appears to be mere advertising material because it is not accompanied by evidence of point-of-sale presentation.  See In re Ancha Elecs., Inc., 1 USPQ2d 1318, 1319-20 (TTAB 1986); TMEP §904.03(g).

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable 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, publicity and press releases, 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).   However, displays associated with the goods that comprise point-of-sale material such as banners, posters, shelf-talkers, window displays, menus, or similar devices are acceptable specimens to show trademark use.  See In re Bright of Am., Inc., 205 USPQ 63, 71 (TTAB 1979); TMEP §904.03(g).

Therefore, the owner must satisfy one of the following:

(1) Submit evidence of a point-of-sale display, such as (a) a photograph, with the mark clearly discernible, showing the specimen associated with the goods in a point-of-sale display; or (b) a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining how the specimen is used in a display associated with the goods.  See 37 C.F.R. §2.61(b); In re Drilco Indus., Inc., 15 USPQ2d 1671, 1672 (TTAB 1990); In re Ancha Elecs., 1 USPQ2d at 1319-20; TMEP §904.03(g); or

(2)  Submit a substitute specimen showing current use of the registered mark in commerce for each class of goods specified in the registration, and 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, or photographs that show the mark on the actual goods or packaging.  See TMEP §§904.03 et seq.

REGISTRATION SELECTED FOR AUDIT

The USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register.  See 37 C.F.R. §§2.161(h), 7.37(h).  This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods identified in 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.

To comply with the audit, you must submit proof of use of the registered mark for two additional goods per class.  Id.   If proof of use for the goods identified is not available, the identified goods and any other goods not currently in use should be deleted from the registration.

Therefore, the owner or holder/owner must submit the following:

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

“Sound-proof material for buildings in the nature of sound absorbing flooring underlayment” and “Card protective plastic films in the nature of a plastic sheet coating for use on credit cards” in International Class 17; and

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The owner or holder/owner was using the mark in commerce on or in connection with the goods 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).

Additionally, you must identify the corresponding goods that each individual piece of evidence of current proof of use supports.  See id.

Acceptable proof of use for goods includes photographs that show the mark on the actual goods or packaging, or photographs of displays associated with the actual goods at their point of sale.  A tag or label that is not shown affixed to the goods is not acceptable proof of use.  Similarly, a package that does not show or identify the goods therein is not acceptable proof of use.

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 item(s) submitted as proof of use, if properly signed and dated:

The owner or holder/owner was using the mark in commerce on or in connection with the goods identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use and specimen(s), 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 your response to this Office action does not meet the requirements of the audit, or includes a request to delete the goods identified for the audit, and goods remain in the registration without acceptable proof of use, a second Office action will issue requiring proof of use for all remaining goods for which proof of use is not of record.  See 37 C.F.R. §§2.161(h), 7.37(h).  Therefore, the owner or holder/owner should delete all goods for which proof of use cannot be provided.

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 July 8, 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).

DEFICIENCY SURCHARGE INFORMATION:  If the response to this Office action is received by the Office after July 8, 2020, a $100 deficiency surcharge must be submitted if the response is submitted online using the Trademark Electronic Application System (“TEAS”) and a $200 deficiency surcharge must be submitted if the response is submitted on paper.  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).  (Note:  This only applies when the response time deadline above falls after the 6^th year anniversary date.)

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.

Cameron McBride

/Cameron McBride/

Examining Attorney - Trademarks

Law Office 106

(571) 272-0542

Cameron.McBride@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.