| To: | Hutchingame Growth Capital Corporation (mhomyk@blankrome.com) |
| Subject: | U.S. Trademark Application Serial No. 87218504 - DAYTON - 151178-00101 |
| Sent: | September 30, 2019 08:26:14 PM |
| Sent As: | ecom102@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 87218504
Mark: DAYTON
|
|
|
Correspondence Address:
|
|
|
Applicant: Hutchingame Growth Capital Corporation
|
|
|
Reference/Docket No. 151178-00101
Correspondence Email Address: |
|
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: September 30, 2019
Applicant’s response dated September 26, 2019, is acknowledged by this final Office action. The amendment to the identification of goods for Class 9 is acceptable.
In response to the requirement for showing applicant was the owner of the foreign registration at the time of filing the U.S. application, applicant submitted a printout showing the file history associated with the foreign registration it relies on for its asserted Section 44(e) basis. However, the printout raised some questions regarding whether assignments of the foreign registration were valid. There must be no question as to applicant ownership of the foreign registration on or before the filing date of the U.S. application.
Section 44(e) Basis
Registration was refused under Trademark Act Section 44(e) because applicant was not the owner of the foreign registration on the filing date of the U.S. application. See 15 U.S.C. §1126(e); TMEP §1005. Applicant submitted a printout from Canada’s intellectual property office’s website.
In an application filed under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application. TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991). However, in this case, the foreign registration specifies an owner other than the U.S. applicant. Specifically, the U.S. application sets forth the owner as Hutchingame Growth Capital Corporation, while the foreign registration sets forth the owner as Dayton Boot Co. Enterprises LTD.
The filing date of the U.S. application is October 27, 2016.
According to the printout submitted by applicant, there have been several assignments of the foreign registration. The printout indicates that the current owner is The Dayton Boots Company. Several other owners are listed as former owners including Hutchingame Growth Capital Corporation, Dayton Boot Co., and Red Cat Ltd. It is noted that applicant has not identified in its response the date when it owned the foreign registration.
The printout indicates the following:
May 30, 2016, the foreign registration was assigned from Dayton Boot Co. to Red Cat Ltd.;
August 17, 2016, the registration was assigned from Red Cat Ltd. to Hutchingame Growth Capital Corporation;
September 21, 2016, (parties to assignment not reflected by section of printout under the category “Recordals”)
April 2, 2019, the foreign registration was assigned from Hutchingame Growth Capital Corporation to Dayton Boot Co.;
July 15, 2019, (Remove Assignment – Transfer)
September 16, 2019, the foreign registration was assigned from Hutchingame Growth Capital Corporation to Dayton Boots Co.
In the printout, there is an entry in the “COMMENTS / COMMENTAIRES:” section which states the following: “[t]he ownership of this trademark and the validity of these transfers are in dispute.” Consequently, applicant must advise the U.S. Trademark Office as to the nature of the dispute and the judicial outcome.
Applicant must indicate during what time period it owned foreign Registration No. TMA792915. Further, applicant must confirm that the prior assignments were determined to be valid by the Canadian court so that the U.S. Trademark Office would have an adequate record to render a decision as to the ownership of the foreign registration on the filing date of the U.S. application. See TMEP §§1005, 1006.
If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant may delete the Section 44(e) basis and rely solely on Section 1(b) as the basis for registration. See TMEP §806.04.
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Christopher Buongiorno/
Christopher Buongiorno, Attorney
United States Patent & Trademark Office
Law Office 102
(571) 272-9251
RESPONSE GUIDANCE