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:  December 4, 2020

The Section 8 Affidavit, filed on October 7, 2020, is not accepted for the reason(s) set forth below.

Summary of Issues

• Owner’ Address Issue

I.                   OWNER’S ADDRESS ISSUE – POST OFFICE BOX/ PMB PROVIDED

Owner/holder must provide owner’s/holder’s domicile address.  All post registration filings must include the owner’s/holder’s domicile address.  Domicile dictates whether an owner/holder is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the owner/holder at the USPTO.  See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). 

An individual owner’s/holder’s domicile is the place a person resides and intends to be the person’s principal home.  See 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity owner’s/holder’s domicile is the principal place of business, i.e., headquarters, where a juristic entity’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(p); Examination Guide 4-19, at I.A.  An owner/holder whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

The post registration filing lists the owner/holder as a juristic entity and specifies the owner’s/holder’s domicile as a post office box/PMB or mail forwarding service instead of a street address, “c/o” or in “care of” another party’s address, or an address that is not a street address.  In most cases, a post office box, a mail forwarding service, an address that is listed as “c/o” or in “care of” another party’s address, or an address that is not a street address is not acceptable as a domicile address because it does not identify the location of the owner’s/holder’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3.  Thus, the owner/holder must provide its domicile street address.  See 37 C.F.R. §2.189.  Alternatively, an owner/holder may demonstrate that the listed address is, in fact, the owner’s/holder’s domicile.  Examination Guide 4-19, at I.A.3.

If the owner/holder wants to hide its domicile address from public view because of privacy or other concerns, the owner/holder must have a mailing address that can be made public and differs from its domicile address.  In this case, the owner/holder must follow the steps below in the correct order to ensure the domicile address will be hidden:

(1)          First submit a TEAS Change Address or Representation (CAR) form.  Open the form, enter the serial number, click “Continue,” and

(a)          Use the radio buttons to select “Attorney” for the role of the person submitting the form;

(b)          Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”

(c)           On the “Owner Information” page, if the previously provided mailing address has changed, the owner/holder must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;

(d)          On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox. 

(2)          Then submit a TEAS response form to indicate the domicile address has been changed. 

II.                RESPONSE GUIDELINES AND ADVISORY

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 April 7, 2021, 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.

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.

/Stephen Kasey/

Stephen, Kasey

Trademark Specialist

Post Registration Division

(Phone) 571-272-4285

Steve.kasey@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.