To: | Tek Fusion Global, Inc. (mary.mcdougall@tekfusioninc.com) |
Subject: | U.S. Trademark Registration No. 4693468 - PATHFINDER - N/A |
Sent: | 02/19/21 05:58:29 AM |
Sent As: | prg@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Owner’s Trademark Registration
U.S. Registration No. 4693468
Mark: PATHFINDER
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Correspondence Address: |
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Owner: Tek Fusion Global, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: February 19, 2021
The Sections 8 & 15 Combined Affidavit was received on November 9, 2020. The Section 15 portion of the Combined Affidavit can be acknowledged. However, the Section 8 portion is not accepted for the reason(s) set forth below.
I. SPECIMEN DEFICIENCY – SPECIMEN IS A PRINTER’S PROOF
The specimen submitted with the Section 8 Affidavit is unacceptable because it consists of The specimen submitted with the Section 8 Affidavit is unacceptable because it is a printer’s proof and thus does not show the applied-for mark in use in commerce.
Printer’s proofs are printed materials in draft form used for making corrections before a final print run. As such, they are not disseminated to the public and do not show use of the mark in the ordinary course of trade on the actual goods that are sold or transported in commerce and/or in connection with the actual services being rendered in commerce. See In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986); TMEP §§904.04(a), 904.07(a), 1301.04.
The owner may respond by submitting:
(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods and/or services specified in the registration; and
(2) 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(a)(7); TMEP §1604.12(c).
Examples of specimens. Electronic specimens may be an image, such as a photograph or scanned copy, of the physical specimen. Specimens for goods include an image of (1) the actual goods bearing the mark; (2) labels or tags shown attached to the goods or including informational matter that typically appears on a tag or label in use in commerce for these types of goods; (3) an actual container or packaging for the goods bearing the mark; or (4) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen 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 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(i).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
II. SAMPLE DECLARATION
The owner 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 specimen, during the relevant period for filing the 6-year Section 8, that is, between the 5th and 6th year anniversary after the date of registration or the date of publication under 15 U.S.C. §1062, or during the ensuing grace period.
The mark has been in continuous use in commerce for five (5) consecutive years after the date of registration or the date of publication under 15 U.S.C. §1062(c), and is still in use in commerce on or in connection with all goods and/or services listed in the existing registration. There has been no final decision adverse to the owner’s claim of ownership of such mark for such goods and/or services, or to the owner’s rights to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the United States Patent and Trademark Office or in the courts.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and 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
The following persons are properly authorized to sign a Combined Affidavit on behalf of the owner:
(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
37 C.F.R. §§2.161(a)(2), 2.193(e)(1); TMEP §1604.08(a).
III. SIGNATURE ON RESPONSE - ADVISORY
Responses to Office actions must be properly signed. 37 C.F.R. §§2.163(b), 2.193(e)(2); TMEP §611.03(b). When an owner is represented by an attorney, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §611.03(b). 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). Attorneys who fail to meet these requirements, as well as non-attorneys, are generally not permitted to represent owners in trademark matters before the USPTO; and thus, they may not sign responses. See 5 U.S.C. §500(b), (d); 37 C.F.R. §11.14(a)-(c), (e); TMEP §§602, 602.02, 608.01.
Where an 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.
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).
IV. RESPONSE GUIDELINES
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 6th year anniversary date on February 24, 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, 1604.17(a).
DEFICIENCY SURCHARGE INFORMATION: If the response to this Office action is received by the Office after February 24, 2021 date of 6th year anniversary, a $100 deficiency surcharge must be submitted. 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 6th 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(a)(4)(i)-(ii). 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.
/Shawnee Letsa/
Trademark Specialist
Post Registration Division
571-272-9626 Direct
Shawnee.letsa@uspto.gov
RESPONSE GUIDANCE