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:  May 11, 2020

The Section 7 Amendment submitted on 02/20/2020 is not accepted for the reasons set forth below.

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 “c/o” or in “care of” another party’s address.  In most cases, “c/o” or in “care of” another party’s address is not acceptable as a domicile address because it does not identify the location of 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.

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 Amendment, 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 Amendment will be considered abandoned.  37 C.F.R. §2.176.  The fee for filing the Section 7 Amendment will not be refunded.

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.

/Joyce Conley/

Joyce Conley

Trademark Specialist

Post Registration

571-272-9520 Office

571-273-9520 Fax

Joyce.conley@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.