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:  December 21, 2022

The Sections 8 & 15 Combined Affidavit submitted on June 8, 2022, cannot be accepted or acknowledged for the reasons set forth below.

SECTIONS 8 AND 15 COMBINED AFFIDAVIT ISSUES

Summary of Issues

• Ownership Issue
• Specimen Issue

OWNERSHIP ISSUE

1. The party who filed the Combined Affidavit must establish its ownership of the registration.  The Trademark Act requires the current owner of the registration to file the Combined Affidavit.  15 U.S.C. §§1058, 1065; 37 C.F.R. §§2.161(a)(1), 2.167(a), 3.73(b); TMEP §§1604.07(a), 1605.04.  Office records do not show clear chain of title in the party who filed the Combined Affidavit.

There is an unexplained break in the chain of title that must be clarified.  The registration issued to Baker Hughes Incorporated, Delaware Corporation who then transferred ownership to Baker Hughes Holdings LLC, Delaware Limited Liability Company.  Office records do not show the registration being transferred from Baker Hughes Incorporated, Delaware Corporation to Baker Hughes Holdings LLC, Delaware Limited Liability Company. 

The party who filed the Combined Affidavit or Declaration must establish its current ownership of the registration.  15 U.S.C. §§1058, 1065; 37 C.F.R. §§2.161(a)(1), 2.167(a), 3.73(b); see TMEP §§1604.07(a), 1605.04.  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 Combined Affidavit or Declaration.  37 C.F.R. §3.73(b); TMEP §502.01.  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 Combined 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 notice of acceptance and acknowledgement will issue in the name of the owner of record.  37 C.F.R. §3.85; TMEP §502.02.  An updated notice of acceptance and acknowledgement 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 Combined Affidavits or Declarations Not Filed in the Name of the Owner

If the Combined 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 Combined Affidavit or Declaration with a new specimen and filing fee.  Please note that a deficiency surcharge is required if the Combined 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 Combined Affidavit or Declaration is $425 per class.  37 C.F.R. §2.6.  If the new Combined Affidavit or Declaration is filed during the six-month grace period, the owner must pay the filing fee for the Combined 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 Combined 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 Combined 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), 2.167, 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, that affirms the representations in the original affidavit or declaration.

SPECIMEN ISSUE

2. The specimen submitted with the Section 8 Affidavit is unacceptable because it consists of advertising material for goods and does not show use of the registered mark on the goods or on packaging for the goods.  See TMEP §904.04(b)-(c). 

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is unacceptable to show trademark use.  TMEP §904.04(b).  Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b)-(c). 

The owner may respond by submitting:

(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods 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).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

SAMPLE DECLARATION

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).

RESPONSE GUIDELINES

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, 1604.17(b).

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)(2); TMEP §1604.17(b).

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.

McKnight, YaQueva

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.