Letter on Petition

UNITED STATES PATENT AND TRADEMARK OFFICE

PETITION TO DIRECTOR INQUIRY LETTER

Dear Mr. Havlick,

Your post publication request to substitute or add a filing basis for the above identified trademark application was received on October 1, 2015.  After publication, a petition to the Director is required to change the basis of an application.  Trademark Rule 2.35(b)(2).  Therefore, you must submit the $100 petition fee.

In addition, the United States Patent and Trademark Office is unable to process the petition because it does not include a clear statement concerning the Section 1(b) basis.  See TMEP §806.03(j)(ii).

The Director will not grant a petition to add Section 44(e) and retain the Section 1(b) basis after issuance of the notice of allowance unless a statement of use is filed with the petition.  TMEP §806.03(j)(ii).  However, an applicant can request that the Section 1(b) basis be deleted if the examining attorney accepts the Section 44(e) basis without filing a statement of use.  This is required so that if the amendment is accepted the application can be republished and forwarded to registration based solely on §44(e). See 37 C.F.R. §2.87.

In this case, it is unclear from the petition whether you seek registration based on both §§1(b) and 44(e) and intend to file a statement of use, or that the §1(b) basis may be deleted if the 44(e) basis is accepted.

Please submit one of the following:

• a statement of use;
• a statement that if the Section 44(e) basis is accepted, the Section 1(b) basis may be deleted in order to republish the application; or
• a request to withdraw the petition with the option of refiling the petition with a statement of use at a later date.

The filing of the petition does not stay the time period for filing a statement of use.  37 C.F.R. §2.89(g).  Since the Notice of Allowance (NOA) issued for this application on July 21, 2015, you must file a statement of use or a request for extension of time to file a statement of use as it becomes due in order to maintain the Section 1(b) basis until the examining attorney accepts the new basis. 

You must submit the $100 petition fee and the necessary statement no later than thirty (30) days from the mailing date of this letter.  If a timely response is not received, the petition will be dismissed without consideration on the merits. 

RESPONDING TO THIS INQUIRY LETTER ONLINE

You are encouraged to use the “Response to Petition to Director Inquiry Letter” online response form available at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp (form number 11), but please wait 48-72 hours before responding if you received notification of the Inquiry Letter by e-mail.  For technical assistance with the online form, please e-mail TEAS@uspto.gov.

Sincerely,

/Lisa Wallace/

Paralegal Specialist

Office of the Deputy Commissioner

  for Trademark Examination Policy

(571) 272-9582

To check the status of your application at any time, visit the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.

For general and other useful information about trademarks, you are encouraged to visit the USPTO web site at http://www.gov.uspto.report/main/trademarks.htm.