Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

OFFICE ACTION

The USPTO must receive the owner’s response to this letter within the time period specified below.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears below.

Issue date:  June 8, 2020

The Section 7(h) Request for Correction submitted on May 1, 2020 is not accepted for the reasons set forth below.

I.                    Domicile Requirement

Owner/holder must provide owner’s/holder’s domicile address.  All post registration filings must include the owner’s/holder’s domicile address, and domicile dictates whether an owner/holder is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the owner/holder at the USPTO.  See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). 

An individual owner’s/holder’s domicile is the place a person resides and intends to be the person’s principal home.  See 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity owner’s/holder’s domicile is the principal place of business, i.e., headquarters, where a juristic entity’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(p); Examination Guide 4-19, at I.A.  An owner/holder whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

The post registration filing lists the owner/holder as a juristic entity and specifies the owner’s/holder’s domicile as a post office box instead of a street address.  In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of the place the owner/holder resides and intends to be the owner’s/holder’s principal home/the owner’s/holder’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3.  Thus, the owner/holder must provide its domicile street address.  See 37 C.F.R. §2.189.  Alternatively, an owner/holder may demonstrate that the listed address is, in fact, the owner’s/holder’s domicile.  Examination Guide 4-19, at I.A.3.

II.                  Signatures on Responses

Responses to Office actions must be properly signed.  TMEP §605.02.  If the owner has retained an attorney, the attorney must sign the response; the owner cannot sign the response.  Id.  However, if the owner was previously represented by an attorney, and the owner later retains a different attorney, the newly retained attorney cannot sign responses until a new power of attorney signed by the owner is filed.  TMEP §602.01.  Paralegals and secretaries cannot sign responses for attorneys.  See TMEP §602.03.

The only attorneys who can practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state (including the District of Columbia, Puerto Rico and other federal territories and possessions) or (2) Canadian agents/attorneys reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney.  See 37 C.F.R. 2.17(a), 11.14(a), (c), (e).  Foreign attorneys (other than recognized Canadian attorneys) cannot sign responses or otherwise represent registrants before the USPTO.  See 37 C.F.R. §11.14(c). 

If the owner is not represented by an attorney, the response must be signed by the owner or by someone with legal authority to bind the owner (i.e., a corporate officer of a corporate owner, the equivalent of an officer for unincorporated organizations or limited liability company owners, a general partner of a partnership owner, each owner for registrations with multiple individual owners, etc.).  TMEP §605.02. 

A non-attorney who is authorized to verify facts on behalf of an owner under 37 C.F.R. §2.33(a)(2) (such as trademark administrators, accountants, business managers, administrative assistants, and personal assistants) cannot sign responses to Office actions unless he or she also has legal authority to bind the owner.  See TMEP §§712.03 and 804.04. 

III.                Response Guidelines

The owner has six months from the issuance date of this letter to respond to all the issues raised in this letter.  In order to expedite the processing of your Section 7 Request for Correction, the early submission of a response to this letter is encouraged.  If a complete response is not received in the Office within this time period, then the Section 7 Request for Correction will be considered abandoned.  37 C.F.R. §2.176. 

How to respond.  Click to file a Response to Post-Registration Office action. 

Direct questions about this Office action to the Post Registration staff member below.

     /Burns Jr, Glenn R/

    Trademark Specialist

    Phone: 571-272-0994

    Fax: 571-273-0994

   Glenn.Burns@USPTO.gov

RESPONSE GUIDANCE

• Response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an owner’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted or processed.  If the owner does not have an attorney, the response must be signed by the individual owner, all joint owners, or someone with legal authority to bind a juristic owner.  If the owner has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.