Letter on Petition

United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 87759078       Mark:  SELFMADE
Correspondence Address:         NARANJO, DIONNA        2534 CEDAR AVENUE        LONG BEACH CA 90806
Owner:  NARANJO, DIONNA
Reference/Docket No. N/A   Correspondence Email Address:         cnbb.tm@gmail.com

 

 

PETITION TO DIRECTOR INQUIRY LETTER

 

 

The USPTO must receive petitioner’s response to this letter within 30 days of the issue date below.  Respond using the Trademark Electronic System (TEAS).  A link to the appropriate TAS response form appears at the end of this letter.  

 

 

Issue date:  October 5, 2021

 

Your letter to the United States Patent and Trademark Office (USPTO) requesting a corrected registration certificate for the above-referenced registration was received on February 3, 2021.  See 37 C.F.R. §§2.165 and 2.186.

 

The petition is incomplete and you must provide the following for the USPTO to consider your petition.

 

•         Clarification Regarding Ownership

•         Complete Petition fee

 

You are granted thirty days from the issue date of this letter to complete the petition.  See 37 C.F.R. §2.146(c); TMEP §1705.03. 

 

FACTS

 

On September 4, 2018, the USPTO issued this registration in the name of Selfmade Car Club, a California partnership. The registration certificate also inadvertently referenced “California New Business Bureau, Inc.” in the mailing address section of the certificate.

On April 17, 2019, the USPTO Assignment Recordation Branch (Assignment Branch) received for recordation an October 15, 2018 assignment transferring ownership of the registered mark from California New Business Bureau, Inc., a California corporation, to Dionna Naranjo, an individual U.S. citizen, and Ricardo Wise, an individual U.S. citizen.  

 

On September 3, 2020, Dionna Naranjo and Ricardo Wise (petitioners) filed a Section 7 request for a corrected registration certificate deleting “California New Business Bureau, Inc.” In an Office action dated December 22, 2020, the Post Registration specialist notified petitioners that their Section 7 request for a corrected registration certificate could not be accepted because USPTO records do not show clear chain of title in the party who filed the Section 7 request. Specifically, the registration issued to Selfmade Car Club, a California partnership, however, the October 15, 2018 assignment identified the owner of the mark as “California New Business Bureau, Inc.,” a California corporation.  Further, the Section 7 request was filed by petitioners doing business as “Selfmade Car Club.” As a result, there is an unexplained break in the chain of title that must be corrected for the Section 7 request to be processed.

 

Petitioners responded on January 8, 2021 attaching a copy of the October 15, 2018 assignment to their response.  In an Office action dated January 29, 2021, the Post Registration specialist maintained the refusal of petitioner’s Section 7 request for a corrected registration certificate because petitioners did not properly explain the break in the chain of title. The specialist also advised petitioners to file a petition if there was a disagreement with the refusal.

 

Petitioners filed this petition on February 3, 2021 requesting a corrected registration certificate on the grounds that the original September 4, 2018 certificate features incorrect owner information. Petitioners also attest that the owner of the registration is Selfmade Car Club, a general California partnership composed of Dionna Naranjo, a U.S. citizen, and Ricardo Wise, a U.S. citizen. (Petition.) 

 

ADDITIONAL INFORMATION REQUIRED

 

1.      Clarification of Ownership Required

 

The chain of title must show clear title in the party who filed the Section 7 request. All ownership changes must be properly recorded with the Assignment Branch.  15 U.S.C. §1057(d); 37 C.F.R. §§2.171(a) and 3.85; TMEP §502.03.

 

Since the USPTO issued this registration on September 4, 2018 to Selfmade Car Club, the October 15, 2018 assignment from California New Business Bureau, Inc. to Dionna Naranjo and Ricardo Wise, caused a break in the chain of title of the registration.  In order to clarify the ownership of the registration, petitioners must provide additional evidence.

 

Petitioners may respond to this requirement by satisfying one of the following:

 

(1)   If Selfmade Car Club is and was the proper owner of the registration and ownership has not been transferred to California New Business Bureau, Inc., petitioners must provide a statement to that effect also indicating that the owner remains Selfmade Car Club, a general California partnership composed of Dionna Naranjo, a U.S. citizen, and Ricardo Wise, a U.S. citizen.  See TMEP §1604.07(a).  Specifically, it is unclear, based on the current record (and the assignment, as recorded) if California New Business Bureau, Inc. was ever an owner of the registration or if the assignment was filed by mistake in an attempt to remove California New Business Bureau, Inc. from the registration certificate.  If that is the case, it must be clearly explained.

 

(2)   If ownership of the registration was transferred from Selfmade Car Club to California New Business Bureau, Inc. at some point in time, petitioners must submit either (a) documentary evidence of ownership, such as copies of the actual documents transferring title; or (b) a statement explaining the valid transfer of legal title, verified by an affidavit or declaration under Rule 2.20.  See 37 C.F.R. §2.146(c); TMEP §§502.01, 1604.07(b).  This information will explain the break in title and the record can be updated to show of Dionna Naranjo, a U.S. citizen, and Ricardo Wise, a U.S. citizen as joint owners.

 

 

2.      Complete Petition Fee Needed

 

On September 15, 2021, the petition to the Director was dismissed and the registration file was remanded to the Post Registration Division to review the information provided on petition.  However, upon further review, it appears that the information on petition was incomplete and the file should not have been remanded to Post Registration for the reasons stated above as more information is needed to consider the Section 7 request.  Because $150 of the petition fee was refunded at the time the petition was dismissed, this additional money must be resubmitted to the USPTO to consider the petition at this time.

 

30 DAYS TO RESPOND

 

If you wish to pursue this petition, you are granted thirty days from the issue date of this letter to respond.

 

If the USPTO does not receive the information requested above within the thirty-day period, the petition will be denied without consideration on the merits.  See 37 C.F.R. §2.146(c); TMEP §1705.03.  The petitioner will not have met the requirements for filing a petition.

 

 

How to respond.  Use the Response to Petition to Director Inquiry Letter Form #12 to file a response to this letter.  

 

 

 

/Linda M. Estrada/

Attorney Advisor

Office of the Deputy Commissioner

  for Trademark Examination Policy

linda.estrada@uspto.gov

571.272.9298