Petition to Revive Notice of Deficiency

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

PETITION TO REVIVE

NOTICE OF DEFICIENCY

 

U. S. Trademark Application Serial Number  86/856276

 

Dear Ms. Gray:

 

The petition to revive the above identified trademark application submitted on November 14, 2017 was automatically granted in error and is hereby rescinded.  The request for extension of time to file a statement of use (extension request) submitted with the petition cannot be accepted because the name identified as the owner in the document is “New Leaf Speaker Management LLC”, but the owner of record for the application is New Leaf Speakers LLC”.  This difference in the owner name must be explained.  37 C.F.R. §2.66; TMEP §1714.01.

 

You are hereby provided THIRTY (30) DAYS from the mailing date of this letter to submit a satisfactory explanation clarifying ownership of the application or a substitute extension request.  If the required item(s) are not received on or before the expiration of the thirty-day period, the petition will be denied without consideration on the merits, and the application will remain abandoned.  37 C.F.R. §2.66.  A response to this Office action must still be submitted, even if an assignment or other document of title is recorded.

 

Review the three possible scenarios below for the required response.

 

(1) CHANGE IN OWNERSHIP:

 

If there was a change of ownership from “New Leaf Speakers LLC” to “New Leaf Speaker Management LLC,” evidence to establish that the filer of the extension request is the current owner of the application must be submitted by either:

 

(a)  Recording an assignment or other document of establishing title with the Assignment Recordation Branch showing clear chain of title to the party filing the extension request, and promptly notifying the undersigned that such documentation has been recorded.  To expedite recordation, new owners are encouraged to file requests for recordation electronically through ETAS, on the USPTO website at http://etas.uspto.gov; or

 

(b)  Submitting evidence of ownership via an affidavit or a signed declaration under 37 C.F.R. §2.20 establishing the transfer of ownership from one party to another, or an explanation that a valid transfer of legal title occurred prior to filing the extension request.  Please note that a new owner must record the assignment, change of name, or other document affecting title with the Assignment Recordation Branch of the USPTO in order for the name to be updated and to obtain a certificate of registration in the name of the new owner (or in applicant’s new name).  37 C.F.R. §3.85. 

 

It is noted that in your petition, you stated that there was a change of ownership from New Leaf Speakers LLC to New Leaf Speaker Management LLC. However, the assignment filed changes ownership from New Leaf Speaker Management LLC to Ms. Amy Allison Gray. A corrective assignment must be filed.

 

(2)  FILER WAS NOT OWNER:

 

If the filer of the extension request was not the owner of the mark at the time of filing, a substitute extension request must be submitted.  For example, if the president of a corporation identifies themselves as the owner instead of the name of the corporation, a substitute extension request must be submitted.  See TMEP §1201.02(c) for additional examples of non-correctible errors.  A substitute extension request is attached for your convenience. 

 

(3)  CORRECTIBLE MISTAKE IN NAME OF OWNER:

 

In the limited situation where the filer of the extension request is, in fact, the owner of the mark, and is attempting to correct the name of the applicant, the applicant must submit an explanation of the nature of the mistake.  For example, minor clerical errors such as the mistaken addition or omission of “The” or “Inc.” in the applicant’s name may be corrected by amendment, as long as this does not result in a change of legal entity.  However, change of a significant portion of the applicant’s name is not considered a minor clerical error.  An application filed in the name of the wrong party is void and cannot be corrected by amendment.  See TMEP §1201.02(c) for additional examples of correctible errors.

 

Please contact the undersigned at the phone number provided if you have questions about how to respond to this letter.  Please note that the third extension request became due on January 12, 2018. Please submit the third extension request and fee of $500.

 

 

 

 

 

 

 

Sincerely,

 

/Lisa Wallace/

Paralegal Specialist

Office of the Deputy Commissioner

for Trademark Examination Policy

lisa.wallace@uspto.gov

(571) 272-9582

 

 

How to respond to this Office action:

 

You are encouraged to respond to this Office action via the “Response to Petition to Revive Deficiency Letter” online response form available at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp (form number 10),

but please wait 48-72 hours before responding if you received notification of the Notice of Deficiency 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 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.

 

REQUEST FOR EXTENSION OF TIME TO FILE A STATEMENT OF USE

PURSUANT TO 15 U.S.C. 1051(D)

 

MARK: ______________________________________________________________________

 

U.S. TRADEMARK APPLICATION SERIAL NUMBER: _________________________­­­__

 

OWNER: _________________________________________________________________

 

___ Applicant requests an extension of time for filing the statement of use.  Applicant has a continued bona fide intention to use, or use through a related company, the mark in commerce on or in connection with all of the goods and/or services listed in the notice of Allowance. 

 

___ Applicant requests an extension of time for filing the statement of use.  Applicant has a continued bona fide intention to use, or use through a related company, the mark in commerce on or in connection with some of the goods and/or services listed in the Notice of allowance, as indicated below, and requests that the remaining goods and/or services listed in the Notice of Allowance be deleted from the application, as indicated below: 

 

Applicant has a continued bona fide intention to use, or use through a related company, the mark in commerce on or in connection with the following goods listed in the notice of allowance: ____________________________________________________________

________________________________________________________________________________________________________________________________________________

 

Applicant requests that the following goods and/or services listed in the notice of allowance be deleted from the application: ____________________________________ ________________________________________________________________________________________________________________________________________________

 

This is the ____ extension request (indicate which request this is (e.g., first, second, third, fourth, or fifth) following the mailing of the notice of allowance).

 

If this is not the first extension request, applicant must provide a statement of the ongoing efforts to make use of the mark in commerce.  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 is submitting the required extension request fee of $125 per class, if filing electronically, or $225 per class, if filing on paper.

 

The undersigned being hereby warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that willful false statements and the like may jeopardize the validity of this document, declares that he/she is properly authorized to execute this document on behalf of the applicant; 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: ___________________           Date Signed: _________________

 

Printed Name: ________________           Title: _______________________