Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 2301 (Rev 02/2020) |
OMB No. 0651-0054 (Exp 12/31/2020) |
Input Field |
Entered |
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SERIAL NUMBER | 86970282 |
LAW OFFICE ASSIGNED | LAW OFFICE 112 |
PETITION | |
PETITION STATEMENT | Request acceptance of SOU where the use in commerce date was after the expiration of the 36-month statutory deadline as a result of COVID-19 outbreak. |
MARK SECTION | |
MARK | mark |
LITERAL ELEMENT | BIRDIE |
STANDARD CHARACTERS | YES |
USPTO-GENERATED IMAGE | YES |
MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
OWNER SECTION (current) | |
NAME | ROSIEQ LLC |
MAILING ADDRESS | 90 STATE STREET STE 700 |
CITY | ALBANY |
STATE | New York |
ZIP/POSTAL CODE | 12207 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
XXXX | |
OWNER SECTION (proposed) | |
NAME | ROSIEQ LLC |
MAILING ADDRESS | 90 STATE STREET STE 700 |
CITY | ALBANY |
STATE | New York |
ZIP/POSTAL CODE | 12207 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
XXXX | |
EXPLANATION OF FILING | |
Pursuant to 37 CFR § 2.146., Petitioner Birdie Inc. submits this petition on behalf of the application submitted under Serial #86970282 (“Application”) to respectfully request that the USPTO
Director accept the included Statement of Use (“SOU”) (attached as Exhibit A) and register the Petitioner's Application for the reasons set forth herein.
Statement of Facts
The Notice of Allowance for the Application issued on May 16, 2017, resulting in a 36-month statutory due date of May 18, 2020 (as May 16, 2020 fell on a Saturday, the due date moved to Monday
May 18 pursuant to 37 C.F.R. §2.196),
Petitioner operates a mobile application and website that allows users to share reviews and information about various types of products and services. Petitioner is owned and operated by a single
member, Lauren Rosenthal Turon, who has spent years developing the mobile application and website. After investing significant time and resources, Petitioner’s mobile application and website both
neared completion and were on track for commercial release in the spring of 2020. However, the unexpected and extraordinary occurrence of COVID-19 outbreak delayed Petitioner and its software
developers' completion of the mobile application. Ultimately, Petitioner's mobile application was released to the Android app store on May 22, 2020. Petitioner filed the corresponding SOU on May 31,
2020 (a true and correct copy is attached as Exhibit A).
On July 1, 2020, Examining Attorney Hay Li Lam issued Office Action because the May 22, 2020 use in commerce date was after the 36-month statutory deadline. Petitioner's counsel communicated
with the Examining Attorney by telephone regarding the Office Action, who confirmed that Petitioner's only recourse was to submit a petition to the Director.
Legal Argument:
As a response to the devastating effects of the COVID-19 outbreak, the CARES Act granted the USPTO the ability to “toll, waive, adjust, or modify any timing deadline established by the Trademark Act,
or regulations promulgated thereunder, in effect during the emergency period described in subsection 12004(e) of the CARES Act, if the Director of the USPTO determines that the emergency related to
such period: (1) materially affects the functioning of the Office; (2) prejudices the rights of applicants, registrants, patent and trademark owners, or others appearing before the Office; or (3)
prevents applicants, registrants, patent and trademark owners, or others appearing before the Office from filing a document or fee with the Office.” See USPTO’s Notice of Extended Waiver of
Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Trademark Applicants and Trademark Owners (“Notice”) dated March 31, 2020
available at http://www.gov.uspto.report/sites/default/files/documents/TM-Notice-CARES-Act.pdf, and updated Notice dated April 28, 2020 available at
http://www.gov.uspto.report/sites/default/files/documents/TM-Notice-CARES-Act-2020-04.pdf. Pursuant to the CARES Act, the USPTO issued notices and FAQs that set forth relief for applicants “unable to meet
trademark-related timing deadlines due to the COVID-19 outbreak.” Id.
Under the USPTO’s April 28, 2020 Notice and accompanying FAQ updated on May 4, 2020 (available at http://www.gov.uspto.report/trademark/laws-regulations/cares-act-faqs-may), filings due between March
27, 2020 and May 31, 2020, including any “statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a)” would be
considered timely if filed on or before June 1, 2020, provided that it was accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. In the USTPO’s March 31,
2020 and April 28 Notices and accompanying FAQs, no distinction was made between the filing deadlines on delayed SOUs that were receiving extensions and the 36-month statutory deadline for an SOU.
Additionally, there was no language in any of this guidance indicating that the use date and filing date would be treated differently and that a late filing that would be excused under the CARES Act
still needed to comply with the original use in commerce deadline.
The final Notice from the USPTO regarding COVID-19 extensions, issued on May 27, 2020 (available at http://www.gov.uspto.report/sites/default/files/documents/TM-Notice-CARES-Act-2020-05.pdf) suggested
that there may be a distinction, and applications reaching their 36-month statutory deadline may not be eligible for an automatic extension through May 31, 2020, which stated that “Applicants who
missed the 36-month statutory deadline for filing a Statement of Use, and therefore their application has been abandoned, should use the TEAS ‘Petition to the Director’ form. See 37 CFR § 2.146.”
This Notice was issued after the Petitioner's 36-month statutory deadline and only four (4) days before the extensions were scheduled to end. Petitioner had no way of knowing between April 28 and May
27 that it would need to ensure a use in commerce occurred before May 18 instead of May 31.
It is worth noting that as the USPTO has issued this guidance in the May 27 Notice (and the related Question 13 in the FAQ, updated on June 9, 2020 and available at
http://www.gov.uspto.report/trademark/laws-regulations/cares-act-faqs), the agency recognizes that an applicant who misses the 36-month deadline for filing the SOU because of COVID-19 should still be
entitled to registration. To not allow for such registrations while allowing for late COVID-19 related registrations and/or additional extensions for other 1(b) applications would be cruel and unfair
for applicants that reached their 36-month deadline during the COVID-19 outbreak.
Conclusion:
Over the last four years, Petitioner has spent significant time and capital developing its products and protecting the trademarks that it intended to use in connection with its offerings.
Petitioner was working hard in early 2020 to meet the Application’s 36-month statutory deadline. Petitioner’s 4-day gap between the 36-month statutory deadline for using the trademark “Birdie” on the
Petitioner’s mobile application and the actual first use in commerce date is completely attributable to the virus. When the COVID-19 outbreak began and materially impacted Petitioner’s ability to
reach its intended release date, it had a good faith belief that, based on the USPTO’s March 31, 2020 and April 28, 2020 Notices and FAQs, an SOU which had a deadline between March 27, 2020 and May
31, 2020 that was submitted and alleged a use in commerce date after the original deadline but before June 1, 2020, would be accepted as timely. It was only after the use in commerce date of May 22
that Petitioner received notice that it may still be subject to the May 18 deadline, rendering it impossible to avoid being late. However, as suggested by the May 27, 2020 Notice and Question 13 in
the accompanying FAQ and by referencing the petition to the Director protocol, the USPTO seems to realize the inequity and prejudice that would result from not providing a mechanism for registration
for parties in a situation similar to Petitioner’s.
As the July 1, 2020 Office Action effectively renders the Application abandoned, Petitioner respectfully requests that the Director of the USPTO reinstate the Application, accept the attached
SOU and register the Petitioner’s trademark.
|
|
EVIDENCE SECTION | |
EVIDENCE FILE NAME(S) | |
ORIGINAL PDF FILE | evi_17356221116-101501449 _._EXHIBIT_A_-_86970282_S OU_from_5.31.20.pdf |
CONVERTED PDF FILE(S) (11 pages) |
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CORRESPONDENCE INFORMATION (current) | |
NAME | Philip Z Kimball |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | Trademarks@pzklaw.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | pzkimball@pzklaw.com |
CORRESPONDENCE INFORMATION (proposed) | |
NAME | Philip Z Kimball |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | Trademarks@pzklaw.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | pzkimball@pzklaw.com |
PAYMENT SECTION | |
PETITION FEE PER PETITION | 100 |
NUMBER OF CLASSES | 1 |
TOTAL FEES DUE | 100 |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /Philip Z Kimball/ |
SIGNATORY'S NAME | Philip Z Kimball |
SIGNATORY'S POSITION | Atorney of record, New York bar member |
SIGNATORY'S PHONE NUMBER | 646-801-8363 |
DATE SIGNED | 08/31/2020 |
PETITION SIGNATURE | /Philip Z Kimball/ |
SIGNATORY'S NAME | Philip Z Kimball |
SIGNATORY'S POSITION | Attorney of record, New York bar member |
SIGNATORY'S PHONE NUMBER | 646-801-8363 |
DATE SIGNED | 08/31/2020 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Mon Aug 31 10:31:40 ET 2020 |
TEAS STAMP | USPTO/PGP-XXX.XX.XXX.XXX- 20200831103140423313-8697 0282-750133e76a3641c31bbc 61df5949c16c7fd0b62a6c56a 96de09ba3511e5df4a5ff-CC- 31396642-2020083110150144 9076 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 2301 (Rev 02/2020) |
OMB No. 0651-0054 (Exp 12/31/2020) |
DECLARATION: The signatory 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 the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.