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:  July 23, 2021

The Section 8 Affidavit, filed on May 11, 2021, is not accepted for the reason(s) set forth below.

OWNERSHIP

The party who filed the Section 8 Affidavit must establish its ownership of the registration.  Trademark Act Section 8 requires the current owner of the registration to file the Section 8 Affidavit.  15 U.S.C. §1058; 37 C.F.R. §§2.161(a)(1), 3.73(b); TMEP §1604.07(a).  Office records do not show clear chain of title in the party who filed the Section 8 Affidavit.

Office records show clear chain of title to the registration in HNIC, LLC DBA Front Back Side 2 Side, a limited liability company of California.  However, the party who filed the Section 8 Affidavit is identified as Curtis Parker Jr., a sole proprietorship of California, consisting of Curtis Parker Jr., an individual United States citizen. 

The party who filed the Section 8 Affidavit or Declaration must establish its current ownership of the registration.  15 U.S.C. §1058; 37 C.F.R. §2.161(a)(1); TMEP §1604.07(a).  Ownership can be established by satisfying one of the following:  (1) recording the appropriate documents with the Assignment Recordation Branch of the Office; or (2) submitting actual evidence showing the transfer of title to the party who filed the Section 8 Affidavit or Declaration.  37 C.F.R. §3.73(b); TMEP §§502.01, 1604.07(b).  More information about these two methods for establishing ownership of the registration appears directly below. 

(1)  If the present owner chooses to record the appropriate documents with the Assignment Recordation Branch, the documents must be recorded before expiration of the time for filing a response.  In addition, you must notify the undersigned when the documents have been recorded.  For information regarding recording assignments, name changes and mergers, please visit the webpage http://www.gov.uspto.report/trademark/trademark-assignments-change-search-ownership and see TMEP §§503 et seq.  For specific questions, please contact the Assignment Recordation Branch at 571-272-3350.  To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov.  To record an assignment, the owner must submit the assignment documents along with a cover sheet and the required fee.  37 C.F.R. §§3.28, 3.31.  The fees for recording an assignment are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document.  37 C.F.R. §2.6(b)(6).  The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.  37 C.F.R. §3.25.

(2)  If the present owner prefers to submit actual evidence of ownership directly to the undersigned trademark specialist, copies of the actual documents transferring title or a statement explaining the valid transfer of legal title must be submitted.  If submitting a statement of facts explaining the transfer of title, this statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §3.73; TMEP §§502 et seq.

Acceptance Notice Issued in Name of Owner of Record

Please note that if the party who filed the Section 8 Affidavit or Declaration submits sufficient evidence to establish ownership but the ownership documents are not recorded with the Assignment Recordation Branch before expiration of the time to file a response, then the acceptance notice will issue in the name of the owner of record.  37 C.F.R. §3.85; TMEP §502.02.  An updated acceptance notice will not issue if ownership documents are recorded following the expiration of the time to file a response; however, the new owner may file a request for a new certificate in the new owner’s name, along with the required fee.  See 37 C.F.R. §2.6(a)(8); TMEP §502.03.     

There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.  TMEP §1604.07(a).

Information for Section 8 Affidavits or Declarations Not Filed in the Name of the Owner 

If the Section 8 Affidavit or Declaration was not filed in the name of the owner of the registration and there is time remaining in the statutory filing period, including grace period, when responding to this Office action, the true owner may (1) submit a correction of the name in the filing of record or (2) file a complete new Section 8 Affidavit or Declaration with a new specimen and filing fee.  Please note that a deficiency surcharge is required if the Section 8 Affidavit or Declaration was submitted before the grace period began and a correction of the name in the filing of record is received during the grace period.  37 C.F.R. §2.164(a)(1); TMEP §1604.17(a).  The deficiency surcharge is $100.  37 C.F.R. §2.6.  The fee for filing a Section 8 Affidavit or Declaration is $225 per class.  37 C.F.R. §2.6.  If the new Section 8 Affidavit or Declaration is filed during the six-month grace period, the owner must pay the filing fee for the Section 8 Affidavit or Declaration and the grace period fee.  15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161; TMEP §1604.07(a).  The grace period fee is $100 per class.  37 C.F.R. §2.6. 

If the Section 8 Affidavit or Declaration was not filed in the name of the owner of the registration and there is no time remaining in the grace period when responding to this Office action, the true owner may submit a correction of the name in the filing of record with payment of the deficiency surcharge, but may not file a new Section 8 Affidavit or Declaration.  15 U.S.C. §1058. 

Confirmation Required: Affidavit or Declaration Signed by Authorized Signatory

If a correction of the name in the filing of record is submitted at any time, the true owner must confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the owner.  37 C.F.R. §§2.161(a)(2), 2.193(e)(1); TMEP §1604.08(a).  If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, attesting to the use or excusable nonuse of the mark during the relevant period for filing the 6-year Section 8.

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit, if properly signed and dated:

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.

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 Section 8 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).

Registration Selected for Audit

The USPTO has randomly selected this registration for audit to determine whether the mark is in use with all of the goods and/or services identified in the affidavit or declaration of use submitted to maintain the registration.  The USPTO performs random audits of U.S. trademark registrations to assess and promote the accuracy and integrity of the trademark register.  See 37 C.F.R. §§2.161(b), 7.37(b).

Detailed information regarding the audit program is provided on the Post Registration Audit Program webpage.  Please note that registration owners/holders are expected to have conducted a reasonable inquiry to confirm use of their marks in commerce (or excusable nonuse) with all goods and services 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).  If the owner/holder does not submit acceptable proof of use of the mark for the goods and/or services selected for audit, the affidavit or declaration of use cannot be accepted.  The owner/holder may delete goods or services from the registration for which proof of use cannot be provided in response to the audit, but must pay a $250 per class fee each time goods or services, or entire classes, are deleted.  See 37 C.F.R. §§2.6(a)(12)(ii), 2.161(c), 7.6(a)(6)(iv), 7.37(c).

The owner/holder must take one of the following actions to satisfy the requirements of the audit:

(1)    Submit proof of use of the registered mark for the two additional goods and/or services per class specified below and submit a statement verifying the proof of use.

The following goods and/or services have been selected for audit. 

Class 025:

·         Jackets

·         Rain wear

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) selected for audit 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.

                OR

(2)    Delete audited (and all other) goods and/or services for which proof of use of the registered mark cannot be provided and/or for which use cannot be confirmed and pay the required deletion fee and submit proof of use with a verified statement for any remaining goods and/or services in the audited class. 

If the owner/holder cannot provide proof of current use of the mark in commerce for the audited goods or services and any remaining goods and/or services listed in the audited class 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).  If all goods and/or services for which the owner/holder cannot provide acceptable proof of use in the audited class are deleted, the required deletion fee is paid, and only goods and/or services for which acceptable proof of use is provided remain in the audited class, the audit will conclude.

WARNING:  A second Office action requiring proof of use for all remaining goods and/or services in the audited class for which acceptable proof of use is not of record will issue if the owner/holder responds to this action by deleting any audited goods and/or services and not also providing proof of use showing current use of the mark in commerce with all remaining goods and/or services listed in the audited class in the affidavit or declaration of use submitted to maintain the registration.  See the instructions in option (1) above for submitting proof of use and the statement verifying proof of use.

Please note, if an additional Office action(s) is required because acceptable proof of use is not provided, and a subsequent response(s) includes a request to delete goods and/or services, the $250 fee for each class is incurred with each such request, even if the fee was paid for a previous deletion in the same class.  See 37 C.F.R. §§2.161(c), 7.37(c). 

DEFICIENCY SURCHARGE: Along with any required deletion fee(s), a one-time deficiency surcharge also may be required when correcting any deficiency in the affidavit or declaration, including 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).

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.

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.

Wilson, James (TM)

/James Wilson/

Trademark Program Analyst

Post Registration Div. (on work project)

Office 571.272.9702

James.Wilson-TM@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.