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:  July 29, 2019

The statement of use and request for extension of time to file a statement of use (extension request) filed on June 24, 2019 do not meet the minimum filing requirements and are not accepted for the reason(s) set forth below.  Applicant may respond to this Office action by correcting the deficiencies noted below.

TO AVOID ABANDONMENT OF THE APPLICATION:  Applicant’s response to this Office action must be received in the United States Patent and Trademark Office (USPTO) within (1) thirty (30) days of the issuance date of this letter, or (2) before the deadline for filing a statement of use or the previously granted extension period, whichever is longer.  37 C.F.R. §§2.88-2.89.

STATEMENT OF USE IS DEFICIENT AS FOLLOWS:

EXTENSION REQUEST IS DEFICIENT AS FOLLOWS:

If the response is received in the Office after the due date, the application will be abandoned

FILER’S NAME DIFFERS FROM CURRENT OWNER NAME – CLARIFICATION REQUIRED:  The owner of the mark shown in Office records is “YAKIMA CHIEF HOPS, LLC;” however, the party who filed the statement of use is identified as “Yakima Chief - Hopunion, LLC.”  The party who files a statement of use must be the owner of the mark at the time the statement of use is filed.  See 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88; In re Colombo Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).  Therefore, the statement of use and 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 statement of use was filed.  Evidence to establish ownership can be provided after the expiration of the deadline for filing the statement of use, if the statement of use was filed by the true owner.  See 37 C.F.R. §§3.71, 3.73; TMEP §1109.10. 

FILER WAS OWNER:  If the filer of the statement of use 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 statement of use, 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 statement of use.

37 C.F.R. §3.73(b)(1); TMEP §§502, 502.01; see 15 U.S.C. §1060; 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 statement of use 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 statement of use within the statutory period to avoid abandonment of the application.  See 15 U.S.C. §1051(d); 37 C.F.R. §2.88.  The time for filing a statement of use expires on August 5, 2019.

(2) there is no time remaining in the statutory period, the application will be abandoned for failure to file a statement of use 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/.

There is time remaining in the statutory time period for filing a statement of use.  Applicant must respond to the outstanding issues raised in this Office action within the specified time period to avoid abandonment of the application. 

Please call the undersigned with any questions. 

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.  

U.S. Counsel Rules Changes Advisory

On August 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

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.

Lori Cornish

/Lori Cornish/

Paralegal Specialist

571 272-9341

Fax 571 273-9341

Lori.Cornish@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.