Letter on Petition

United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 88053435   Mark:  FANATICAL
Correspondence Address:         Jennifer C. Debrow        GRAY, PLANT, MOOTY, MOOTY & BENNETT, P.A        500 IDS CENTER        80 SOUTH 8TH STREET        MINNEAPOLIS MN 55402
Owner:  Focus Multimedia Limited
Reference/Docket No. 425070   Correspondence Email Address:         trademark@gpmlaw.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 TEAS response form appears at the end of this letter.  

 

 

Issue date:  December 11, 2019

 

Dear Ms. Debrow:

 

Your petition to the Director to allow consideration of an amendment to the basis after publication was received on November 11, 2019.  The United States Patent and Trademark Office is unable to process the petition because it does not include a clear statement concerning the Section 1(b) basis.  See TMEP §806.03(j)(ii).

 

The Director will not grant a petition to add Section 44(e) and retain the Section 1(b) basis after issuance of the notice of allowance unless a statement of use is filed with the petition.  TMEP §806.03(j)(ii).  However, an applicant can request that the Section 1(b) basis be deleted if the examining attorney accepts the Section 44(e) basis without filing a statement of use.  This is required so that if the amendment is accepted the application can be republished and forwarded to registration based solely on §44(e). See 37 C.F.R. §2.87.

 

In this case, it is unclear from the petition whether you seek registration based on both §§1(b) and 44(e) and intend to file a statement of use, or that the §1(b) basis may be deleted if the 44(e) basis is accepted.

 

Please submit one of the following:

• a statement of use;
• a statement that if the Section 44(e) basis is accepted, the Section 1(b) basis may be deleted in order to republish the application; or
• a request to withdraw the petition with the option of refiling the petition with a statement of use at a later date.

 

You must submit the necessary statement no later than thirty (30) days from the mailing date of this letter.  If a timely response is not received, the petition will be denied without consideration on the merits. 

 

Filing a petition does not stay the time for filing a statement of use after issuance of the Notice of Allowance.  Petitioner must file a statement of use an extension requests when due or the application will be abandoned. 15 U.S.C. §1051(d)(4); 37 C.F.R. §§2.65(c), 2.88(h), and 2.89(g).

 

 

Sincerely,

 

/Lisa Wallace/

Paralegal Specialist

Office of the Deputy Commissioner

for Trademark Examination Policy

lisa.wallace@uspto.gov

(571) 272-9582

 

 

How to respond.  Use the Response to Petition to Director Inquiry Letter at http://www.gov.uspto.report/trademarks-application-process/filing-online/petition-forms to file a response to this letter.