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:  March 20, 2022

WARNING: Failure to timely respond to this Office action will result in the cancellation of the entire registration. 37 C.F.R. §§2.163(c), 7.39(b).

Status

The response to the outstanding Office action regarding the Sections 8 & 15 Combined Affidavit or Declaration was timely received on March 16, 2022.

However, the response did not satisfy all requirements and further action is required.

Requirements for Audit Not Satisfied

The owner/holder of the registration was required to (1) submit proof of use for two additional goods and/or services per audited class with a verified statement or (2) delete any goods and/or services for which proof of use was not provided, pay the required deletion fee, and submit acceptable proof of use for all remaining goods and/or services in the audited class(es).  37 C.F.R. §§2.161(b), (c), 7.37(b), (c).  Although the owner/holder submitted a response to the Office action, the owner/holder included a request to delete audited goods and/or services, but did not submit acceptable proof of use for all remaining goods and/or services in the audited class(es) and did not provide acceptable proof of use for all of the audited goods and/or services in the audited class(es).

The requirements for the audit have not been satisfied and the affidavit or declaration of use submitted to maintain the registration cannot be accepted unless the owner/holder verifies the accuracy of the claim of use in the affidavit or declaration of use by (1) providing proof of use for the remaining goods and/or services in the audited class(es) in the registration without acceptable proof of use of record and/or (2) deleting goods and/or services in the audited class(es) for which proof of current use of the mark in commerce cannot be provided.  See 15 U.S.C. §§1058(b), 1141k(b); 37 C.F.R. §§2.161(b), 7.37(b).

The owner’s/holder’s request to delete the following goods and/or services has been entered.

Class 10:

·       lancets

Class 20:

·       non-metal pill fob key chains

Acceptable proof of use is of record for the following goods and/or services in the audited class(es).

Class 6:

·       in its entirety

Class 10:

·       drinking cups for dispensing medications;

·       pill and tablet cutters

Class 20:

·       in its entirety – concluded

Proof of use is not of record for the following goods and/or services in the audited class(es).

Class 10:

·       medicine dosage spoons, droppers and oral syringes, sold empty, infant medicine nursers, and pill and tablet crushers;

·       specimen cups for medical use;

·       syringes for medical use;

·       medical apparatus, namely, applicator bottle used to dispense alcohol to the skin;

·       medical ear syringes;

·       medical apparatus in the nature of syringe magnifiers to be used with medical syringes;

·       nasal aspirators

Although the owner/holder submitted proof of use in response to the initial Office action, it is not acceptable for the following goods and/or services in the audited class(es).

Class 10:

·       Specimen cups for medical use;

The submitted proof of use is not acceptable for these goods and/or services because 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 dosing cups for medical use.  The goods and services in the audit comprise the following: specimen cups.  The specimen must be used on or in connection with the goods and/or services listed in the registration.  TMEP §1604.12(a).

The evidence submitted do not contain lids nor the dedicated space to write patient information on the cup as are the norm for specimen cups.

http://www.google.com/search?q=specimen+cups&rlz=1C1GCEB_enUS864US864&sxsrf=APq-WBtNW7VXB_qHxM1TLIFQD0iQe921mg:1647780945378&source=lnms&tbm=isch&sa=X&ved=2ahUKEwjCyaqv3tT2AhVAq3IEHat0B_IQ_AUoAnoECAEQBA&biw=1340&bih=780&dpr=1.38

To respond to this action, the owner/holder must:

(1)   Submit proof of use of the registered mark for the goods and/or services for which acceptable proof of is not of record in the audited class(es), as identified above, and submit a statement verifying proof of use.

Examples of proof of use.  Proof of use must demonstrate current use of the mark in commerce with the good(s) and/or in the sale or advertising of the service(s) selected for audit.  In particular, proof of use is evidence that clearly shows how you are using your mark in commerce on the specific audited good(s) or service(s).  It may be an actual image, such as a photograph, scanned copy, or screen capture, of the physical item.  Acceptable proof of use for goods includes the mark shown on the actual goods or their packaging, or displays associated with the actual goods at their point of sale.  See 37 C.F.R. §2.56(b)(1), (c); see TMEP §904.03(a)-(m).  Tags or labels must be shown affixed to the goods or must consist of actual tags or labels that identify the specific goods on which they are used and include informational matter that typically appears on a tag or label in use in commerce for these types of goods.  Similarly, packaging must show or identify the goods therein.  A webpage submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  See 2.56(b)(1), (c); see TMEP §904.03(i).  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.  See 37 C.F.R. §2.56(b)(2), (c); see TMEP §1301.04(a), (h)(iv)(C).  Any webpage printout or screenshot submitted as proof of use, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  See 37 C.F.R. §2.56(c).

Instructions for submitting proof of use. Clearly label or describe which good(s) and/or service(s) is supported by each item submitted as proof of use.  See 37 C.F.R. §§2.161(b), 7.37(b).  In addition, if the submission includes multiple pages, please identify the relevant page numbers for the audited good(s) and/or service(s).

Instructions for submitting statement verifying proof of use. To provide the required verification in the electronic Response to Post-Registration Office action form, check the box located at the bottom of each class for which proof of use is provided to automatically populate the below required statement, and sign the declaration at the end of the form. 

The owner/holder 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 proof of use, during the relevant period for filing the affidavit of use.

            AND/OR

(2)   Delete any goods and/or services without proof of use of record and/or for which use cannot be confirmed and pay deletion fee.

If the owner/holder cannot provide proof of current use of the mark in commerce for any remaining goods and/or services listed in audited class(es) in the affidavit or declaration submitted to maintain the registration, the owner/holder must delete those goods and/or services and submit a fee of $250 for each class in which goods and/or services are being deleted.  37 C.F.R. §§2.6(a)(12)(ii), 2.161(c), 7.6(a)(6)(iv), 7.37(c).  No additional proof of use or verification is required if deleting all goods and/or services in the audited class(es) for which proof of use has not been provided.  Please be reminded that registration owners/holders are expected to conduct a reasonable inquiry to confirm use of their marks in commerce with all goods and services that they include in the Section 8 or 71 affidavit or declaration submitted to maintain the registration.  See 15 U.S.C. §§1058(b), 1141k(b).  Therefore, if use cannot be confirmed for any goods and/or services in the registration, the goods and/or services must be deleted.

WARNING:  If the owner/holder responds by providing unacceptable proof of use for any goods and/or services for which acceptable proof of use is not already of record, the requirements for the audit will not have been satisfied and the affidavit or declaration of use submitted to maintain the registration cannot be accepted. A final Office action will issue requiring deletion of the goods and/or services and submission of the deletion fee to avoid cancellation of the registration in its entirety.

DEFICIENCY SURCHARGE: Along with any required deletion fee(s), a one-time deficiency surcharge also may be required if the owner/holder deletes goods and/or services to correct the listing of goods and/or services on or in connection with which the mark is in use in commerce specified in the affidavit or declaration.  See 15 U.S.C. §§1058(b), (c), 1141k(b), (c); see 37 C.F.R. §§2.164(a), 7.39(c). 

Detailed information regarding the audit program is provided on the Post Registration Audit Program webpage.

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.

DEFICIENCY SURCHARGE REQUIRED:  The owner must submit a $100 deficiency surcharge with its response to this Office action.  .  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).

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.

Phillip D. White 

/Phillip D. White/

Post Registration Audit Program 

571-272-9665

phillip.white@uspto.gov (inquiries only

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.