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:  January 22, 2023

This Office action supersedes the previously issued Office action. A technical error prevented the generation of an email notice for the previously issued Office action. The audit examiner regrets any inconvenience.

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 response to the outstanding Office action regarding the Sections 8 & 15 Combined Affidavit or Declaration was timely received on December 19, 2022.  After consideration of the response, the refusal to accept the affidavit or declaration is maintained because although the response was otherwise acceptable, the deficiency fee was not submitted.

Please note, since the deficiency surcharge is outstanding, the previously issued Notice of Acceptance has been withdrawn.

Deficiency Surcharge Due

The Trademark Act requires that the owner/holder list the goods with which the mark is in use in commerce in the affidavit or declaration. 15 U.S.C. §§1058(b)(1)(B), 1141k(b)(1)(B).  The owner/holder deleted good(s) from the affidavit or declaration after it was filed to correct the inaccurate list of goods with which the mark is in use in commerce.  Although this deficiency in the affidavit or declaration is correctable, corrections submitted after the grace period for filing the original affidavit or declaration must be accompanied by a deficiency surcharge.  15 U.S.C. §§1058(c), 1141k(c); 37 C.F.R. §§2.6, 2.164, 7.6, 7.39(c).  Accordingly, because the owner/holder did not provide an accurate list of goods with which the mark is in use in commerce during the grace period, the owner/holder must submit the $100 deficiency surcharge.  37 C.F.R. §§2.6, 2.164, 7.6, 7.39(c); TMEP §§1604.17(b), 1613.17(b).

If the owner/holder disagrees with the requirement for fees, the owner/holder may submit a Petition to the Director. Otherwise, the owner/holder must submit the required fees or the registration will be cancelled in full.

Detailed information regarding the audit program is provided on the Post Registration Audit Program webpage.

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.

DEFICIENCY SURCHARGE REQUIRED:  The owner must submit a $100 deficiency surcharge with its response to this Office action.  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).

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.

Phillip D. White 

/Phillip D. White/

Post Registration Audit Program 

571-272-9665

phillip.white@uspto.gov (inquiries only)

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.