To: | Novartis AG (tm.services@alcon.com) |
Subject: | U.S. Trademark Registration No. 88169471 - PRECISION 7 - N/A |
Sent: | 07/25/19 07:13:55 AM |
Sent As: | ecomitu@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
U.S. Application Serial No. 88169471
Mark: PRECISION 7
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Correspondence Address: |
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Applicant: Novartis AG
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 25, 2019
The request for extension of time to file a statement of use (extension request) filed on July 15, 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 “Novartis AG;” however, the party who filed the request for extension of time to file a statement of use (extension request) is identified as “Alcon Inc.” 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 expires on August 12, 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/.
The following is a properly worded certificate of facsimile transmission. Applicant should add this certificate, properly completed, to its response before transmission.
CERTIFICATE OF FAX TRANSMISSION:
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office on the date below.
________________________________
Signature
________________________________
Print/Type Name of Signer
________________________________
Date
If applicant intends to submit its response via regular mail, then applicant is encouraged to use a certificate of mailing on the submitted documents. 37 C.F.R. §2.197. The following is a properly worded certificate of mailing for responses submitted on paper by regular mail.
CERTIFICATE OF MAILING:
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA, 22313-1451, on the date below.
________________________________
Signature
________________________________
Print/Type Name of Signer
________________________________
Date
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 number 571-272-9504
Fax number 571-273-9504
diane.jones@uspto.gov
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.
RESPONSE GUIDANCE