Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

NOTICE OF INCOMPLETE EXTENSION REQUEST

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID THE DENIAL OF YOUR REQUEST FOR EXTENSION OF TIME TO SUBMIT A STATEMENT OF USE, WE MUST RECEIVE A PROPER RESPONSE TO THIS NOTICE WITHIN THIRTY (30) DAYS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 10/4/2017

U.S. Serial Number   87084569

FILER’S NAME DIFFERS FROM CURRENT OWNER NAME – CLARIFICATION REQUIRED:  The owner of the mark shown in Office records is “Wm. Wrigley Jr. Company;” however, the party who filed the request for extension of time to file a statement of use (extension request) is identified as “Stacy P. Chronopolous and Jay M. Burgett.”  The party who files an extension request must be the owner of the mark at the time the extension request is filed.  See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3); TMEP §1108.02(a).  Therefore, the extension request cannot be accepted because it was filed by someone other than the owner of record.

The filer must clarify whether it was the owner of the mark at the time the extension request was filed.  Evidence to establish ownership can be provided after the expiration of the deadline for filing the extension request, if the extension request was filed by the true owner.  See 37 C.F.R. §§3.71, 3.73; TMEP §1108.02(a). 

FILER WAS OWNER:  If the filer of the extension request was the owner at the time of filing, this party must submit evidence to establish that it has clear chain of title, as follows:

(1)  Record an assignment or other document of title with the Assignment Services Branch showing clear chain of title to the party filing the extension request, and promptly notifying the undersigned that such documentation has been recorded (requests for recordation can be filed online at http://etas.uspto.gov.); or

(2)  Submit evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, supported by an affidavit or signed declaration under 37 C.F.R. §2.20 that a valid transfer of legal title occurred prior to filing the extension request.

37 C.F.R. §3.73(b)(1); TMEP §§502, 502.01.  See 37 C.F.R. §2.193(e)(1).  Please note that a new owner must record the assignment, change of name, or other document affecting title with the Assignment Services Branch of the USPTO 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.

A response to this Office action must still be submitted, even if an assignment or other document of title is recorded.

FILER WAS NOT OWNER:  If the filer of the extension request was not the owner of the mark at the time of filing and:

(1) there is time remaining in the statutory period, the true owner must file a new extension request within the statutory period to avoid abandonment of the application.  15 U.S.C. §1051(d); 37 C.F.R. §2.89.  The time for filing an extension request expired on July 10, 2017; or

(2) there is no time remaining in the statutory period, the application will be abandoned and the true owner may file a petition to revive the application under 37 C.F.R. §2.66.

Applicant is strongly encouraged to review Section 1201.02(c) of the Trademark Manual of Examining Procedure (TMEP) for correctable and non-correctable errors in how the applicant is identified.  The TMEP is available online at the USPTO website at http://tess2.gov.uspto.report/tmdb/tmep/.

/Douglas, Sly/

Paralegal Spec

ITU Div Unit

Ph 571-272-9497

Fax 571-273-9497

Sly.douglas@uspto.gov

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Intent-to-Use (ITU)/Divisional Unit Office action form number 8 at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.  All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant.  If an applicant is represented by an attorney, the attorney must sign the response. 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Status and Document Retrieval (TSDR) at http://tsdr.gov.uspto.report/.  Please keep a copy of the complete status screen.  If TSDR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER IDENTIFIED ABOVE.