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:  May 17, 2021

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 Section 8 Affidavit or Declaration was timely received on April 8, 2020.

However, the response will not be considered for review and is considered incomplete, see the following information.

NOTICE OF INCOMPLETE RESPONSE:

The problem with the owner’s response:  The owner filed a response on April 8, 2020 that appears to have been improperly signed by a different attorney from a different firm than the attorney(s) of record in this registration.  See 37 C.F.R. §2.18(a)(7).  If the owner has retained a new attorney, the new attorney may not sign responses until the owner files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.  The USPTO cannot accept an improperly signed response; therefore, the contents will not be reviewed.  See 37 C.F.R. §§2.163(b), 2.193(e)(2).

What the owner must do to fix the problem:  The owner must satisfy one of the following: 

(1)        Submit a response properly signed by the owner’s current attorney of record;

(2)        File a revocation of attorney signed by the owner and then resubmit a response properly signed by the new attorney; or

(3)        File a power of attorney signed by the owner and then resubmit a response properly signed by the new attorney.

See 37 C.F.R. §§2.17(b)(1)(i), (c), 2.19(a)(2), 2.163(b), 2.193(e)(2)(i). 

The resubmitted response must explicitly address and respond to all the issues raised in the outstanding Office action dated October 10, 2020.  The USPTO should receive a properly signed response per the above within (1) thirty (30) days of the date of issuance of this letter, or (2) the time remaining in the period for responding to the previous Office action, whichever is longer.  See 37 C.F.R. §2.163(b). 

Respond online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html.  To respond online via TEAS, the owner must complete the entire response form again, responding to all issues raised in the outstanding Office action.  Revocations and powers of attorney forms can also be filed online via TEAS.

What happens if the USPTO does not receive a properly signed response within the specified time period:  If the owner does not properly respond within the specified time period, this registration will be cancelled because the owner filed an incomplete response, unless time remains in the grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3).  If time remains in the grace period, the owner may file a complete new affidavit, with a new fee. 37 C.F.R. §2.163(c); TMEP §1604.16.  The owner would have the option to file a petition to the Director to review the decision to cancel the registration.  See 37 C.F.R. §2.146(a)(3), (a)(5).  However, such petitions are generally granted only where clear procedural error or abuse of discretion is found.  See In re Legendary Inc., 26 USPQ2d 1478, 1479 (Comm’r Pats. 1992).     

GUIDELINES FOR SIGNING RESPONSES:

As stated above, where an owner is represented by an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2); TMEP §611.03(b).  However, if the owner is represented by an attorney, and then later retains a different attorney from a different firm, the newly retained attorney may not sign responses until the owner files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03. 

The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney.  See 37 C.F.R. 2.17(a), 11.14(a), (c), (e).  Foreign attorneys, other than recognized Canadian attorneys, do not have authority to sign responses or otherwise represent trademark owners before the USPTO.  See 37 C.F.R. §§2.17(e), 11.5(b)(2), 11.14(c), (e); TMEP §602.03(b)-(c).

Where an owner is not represented by an attorney, the response must be signed by the individual owner or someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq.  In the case of joint owners, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

In addition, the proper signatory must personally sign or personally enter his/her electronic signature.  See 37 C.F.R. §2.193(a), (e)(2); TMEP §§611.01(b), 611.02.

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.

/Rodney Makel/

Program Analyst

USPTO - Office of Trademark Quality Review & Training

Phone: (571) 272-2250

Email: Rodney.Makel@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.