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 20, 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). 

The Sections 8 & 15 Combined Affidavit or Declaration, received on July 15, 2021, cannot be accepted until the owner/holder complies with the audit requirements explained below. 

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 9:

·         Headphones

·         MP3 players

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(es). 

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(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).  If all goods and/or services for which the owner/holder cannot provide acceptable proof of use in the audited class(es) 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(es), the audit will conclude.

WARNING:  A second Office action requiring proof of use for all remaining goods and/or services in the audited class(es) 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(es) 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 or prior to expiration of the 6^th year anniversary date on July 21, 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(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.

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

571-272-8844

jordan.baker@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.