UNITED STATES PATENT AND TRADEMARK OFFICE
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U. S. APPLICATION SERIAL NUMBER: 86/856276
U. S. REGISTRATION NUMBER:
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*86856276* |
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CORRESPONDENCE ADDRESS:
NEW LEAF SPEAKERS LLC 3 BESSOM STREET #123 MARBLEHEAD, MA 01945
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RETURN ADDRESS:
Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: TANDEM
APPLICANT/REGISTRANT: New Leaf Speakers LLC
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ISSUE/MAILING DATE: June 20, 2018 |
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Scre CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT’S EMAIL ADDRESS: amy@newleafspeakers.com
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PETITION TO DIRECTOR INQUIRY LETTER
Dear Ms. Gray:
This letter acknowledges receipt on March 9, 2018 of your petition on behalf of New Leaf Speaker Management LLC (petitioner) to the Director of the United States Patent and Trademark Office (Director) to request reconsideration of the denial of your petition to revive the abandoned application. 37 C.F.R. §2.66(e); TMEP §1714.01(g).
The petition is incomplete and you must provide the following information in order for the United States Patent and Trademark Office (USPTO) to consider your petition.
FACTS[1]
On July 12, 2016 the United States Patent and Trademark Office (USPTO) issued a notice of allowance (NOA) directing you to show proof of use of the mark in commerce of the applied-for mark. On December 19, 2016 and July 1, 2017 you timely filed extensions of time to file a statement of use (extension requests). The Intent to Use Division issued a notice of incomplete extension request on August 28, 2017, querying the discrepancy in the ownership information as it was set forth in the second extension request and required clarification of ownership records. When you did not respond to the notice, your application was abandoned.
On November 14, 2017, you filed a petition to revive the instant application. The petition was granted and revived that same day. However, on January 19, 2018 the granting of your petition to revive was rescinded in a petition to revive notice of deficiency. In that deficiency notice, you were required to address the discrepancy in the way the ownership information had been set forth in the record and advise the USPTO of the correct owner name, and file a third extension request. When no response was received on or before the thirty day deadline, the petition was denied on March 8, 2018. Your request for reconsideration followed.
For the USPTO to be able to grant your petition you must establish that the correct owner filed the extension requests and you must provide an additional (third) extension request(s).
SUMMARY OF REQUIRED INFORMATION:
1. Clarification of Ownership Information Required
2. Request for Extension of Time to File Statement of Use Due
additional Information Required
CORRECTIVE ASSIGNMENT
Petitioner has clarified that New Leaf Speaker Management LLC was, in fact, the owner of the trademark application at the time of filing the second extension request. (March 9, 2018 Petition). Petitioner further advised that it mistakenly identified “Amy Allison Gray” as the receiving party of the name change. Applicant must file a corrective change of name with the Trademark Assignment and Recordation Branch to correct the receiving party data portion of the cover sheet establishing that the name changed from New Leaf Speakers LLC to New Leaf Speaker Management LLC, and that New Leaf Speaker Management LLC is the receiving party.
THIRD EXTENSION REQUEST DUE
The third extension request became due on December 21, 2017. Therefore, a third request for an extension of time to file a statement of use including the fee must be submitted. The extension request fee is $125 per class, if submitted electronically through the Trademark Electronic Application System (TEAS) or $225 per class, if submitted on paper. 37 C.F.R. §2.6.
Statement of Ongoing Efforts
A verified statement of applicant’s ongoing efforts to make use of the mark in interstate commerce is required because the third extension request filed with the petition did not include the required “good cause” statement.
EXAMPLE OF VERIFIED GOOD CAUSE STATEMENT: The following statement and declaration under Trademark Rule §2.20 can be used to satisfy the requirement for a verified statement of applicant’s ongoing efforts to use the mark if properly completed and personally signed and dated by applicant or a person authorized to sign on behalf of applicant under Trademark Rule §2.193(e)(1):
Applicant has made ongoing efforts to use the mark in commerce by engaging in the following activities (check those that apply below):
___ product and/or service research and development;
___ market research;
___ manufacturing activities;
___ promotional activities;
___ taking steps to acquire distributors; and/or
___ taking steps to obtain required government approval.
Applicant has a continued bona fide intention to use the mark in commerce on or in connection with all the goods and/or services in the notice of allowance; the undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the applicant; and all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
______________________________
Signature
______________________________
Print/Type Name and Position
______________________________
Date
ADVISORY
Please note that filing a petition does not stay the time for filing a statement of use. 37 C.F.R. §2.89(g); TMEP §§1108.05 and 1714.01(b)(i). The next extension (fourth) request or a statement of use for this application must be filed on or before July 12, 2018.
Sincerely,
/Emily K. Carlsen/
Attorney Advisor
Office of the Commissioner for Trademarks
for Trademark Examination Policy
571-272-2235
How to respond to this Office action:
You are encouraged to respond to this Office action via the “Response to Petition to Director Inquiry Letter” online response form available at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours before responding if you received notification of the Petition Inquiry by e-mail. For technical assistance with the online form, please e-mail TEAS@uspto.gov.
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.