Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

NOTICE THAT REQUEST FOR EXTENSION OF TIME

TO FILE A STATEMENT OF USE (EXTENSION REQUEST)

IS INCOMPLETE

Response Required

The USPTO must receive applicant’s response to this notice within 30 days of the issue date below or the Extension Request will be denied, and the application may be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears below.

Issue date:  November 22, 2019

The request for extension of time to file a statement of use (extension request) filed on November 20, 2019 meets the minimum filing requirements and is provisionally accepted.  However, to avoid abandonment of the application, a response satisfying the deficiencies below must be received in the United States Patent and Trademark Office (USPTO) within thirty (30) days from the issuance date of this letter, or before expiration of the current extension period, whichever is longer.

EXTENSION REQUEST IS DEFICIENT AS FOLLOWS:

FILER’S NAME DIFFERS FROM CURRENT OWNER NAME – CLARIFICATION REQUIRED:  The owner of the mark shown in Office records is “VAREL INTERNATIONAL IND., LLC;” however, the party who filed the request for extension of time to file a statement of use (extension request) is identified as “Varel Mining and Industrial LLC.”  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 November 22, 2019; 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/.

ENSURE TIMELY SUBMISSION OF RESPONSES AND PETITIONS:  Please note that the filing date of a document in the United States Patent and Trademark Office is the date of receipt in the Office, not the date of deposit in the mail.  37 C.F.R. §2.195.  To avoid lateness due to mail delay, applicant is encouraged to use a certificate of mailing under 37 C.F.R. §2.197 on the submitted documents.

The following is a properly worded certificate of mailing.  Applicant should add this certificate, properly completed, to its submission.

CERTIFICATE OF MAILING:

I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail postage prepaid in an envelope addressed to:  Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA, 22313-1451, on _____________________________ (specify calendar date).

________________________________

Signature

________________________________

Print/Type Name of Signer

________________________________

Date Signed

Applicant must respond to the outstanding issues raised in this Office action within the specified time period to avoid abandonment of the application. 

How to respond to this Office action:

Online:  Applicant is encouraged to use the Trademark Electronic Application System (TEAS) to respond, located at http://teasg.gov.uspto.report/gf/spring/nonteas?type=preSelected&id=ISC0ROAI.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  Do not respond by e-mail; USPTO does not accept e-mail responses.  For technical assistance with the online form, e-mail TEAS@uspto.gov.

TEAS Plus/TEAS RF Application:  To maintain the reduced fee status, TEAS Plus/TEAS RF applicant must respond online via TEAS.  Otherwise, applicant is subject to an additional $125 fee for each class.  37 C.F.R. §§2.6(a)(1)(v) 2.22(c), 2.23(c); TMEP §§819.04, 820.04.

Check the Status of the Application:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application any time using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.

FOR INQUIRIES OR QUESTIONS, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER.

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 Intent-to-Use (ITU)/Divisional Unit Office action. 

Direct questions about this notice to the Intent-to-use staff member below.

Please call the undersigned with any questions.

/Diane T. Jones/

Diane T. Jones

Paralegal Specialist

ITU/Divisional Unit

Phone:  571-272-9504

Fax:  571-273-9504

diane.jones@uspto.gov

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the Extension Request to be denied, and the application may be abandoned.  The 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 applicant’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted or processed and can cause the Extension Request to be denied, and the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant 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.