Letter on Petition

United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 88170500   Mark:  ORCHESTRATED
Correspondence Address:         Henrik Friis Juhl        Flat 4, Delamere Apartments        5/6 Castle Drive        Douglas, Isle of Man  IM24LX
Owner:  VERTIV CORPORATION
Correspondence Email Address:         hfjuhl@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 TEAS response form appears at the end of this letter.  

 

 

Issue date:  September 12, 2019

 

This acknowledges receipt on May 23, 2019 of your objection to the denial of your January 8, 2019 letter of protest.  Your most recent letter is being considered as an informal petition to the Director of the United States Patent and Trademark Office (Director) to reverse a decision of the Deputy Commissioner for Trademark Examination Policy (Deputy Commissioner) denying a letter of protest filed in connection with the above referenced application.  See 37 C.F.R. §2.146(a).[1]

 

Petition is Incomplete

 

A petition to the Director must include (1) a petition fee; and (2) a statement of the facts relevant to the petition, verified by an affidavit or declaration under Trademark Rule 2.20.  See 37 C.F.R. §§2.20, 2.146(c); TMEP §§1705.02, 1705.03.  The petition fee is $100 if submitted electronically through the Trademark Electronic Application System (TEAS) or $200 if submitted on paper.  37 C.F.R. §2.6(a)(15).  Since your letter did not include either of these requirements, the petition is incomplete.

 

Therefore, you must submit the following to the United States Patent and Trademark Office (USPTO) within thirty (30) days from the mailing date of this letter:

 

(1)        A petition fee 

(2)               A statement of the relevant facts in support of the petition verified with an affidavit or signed declaration under Rule 2.20.  The following is a properly worded declaration under Rule 2.20 and should be inserted at the end or your statement of facts supporting the petition.  This declaration must be personally signed by a person with firsthand knowledge of the facts being set forth and dated, with the printed or typed name of the signatory appearing immediately below.  See 37 C.F.R. §§2.146(c), 2.193(d); TMEP §1705.03. 

 

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that the facts set forth above are true, all statements made of his or her own knowledge are true, and all statements made on information and belief are believed to be true.

 

_______________________________

(Signature)

_______________________________

(Print or Type Name and Position)

_______________________________

(Date)

 

While you are granted 30 days to perfect your petition to the Director, it is very likely that your petition will be denied.

 

Petition will Likely be Denied

 

A letter of protest is an informal procedure created by and existing at the discretion of the USPTO.  TMEP §1715.  As such, the USPTO has broad discretion in determining whether to grant a letter of protest.  The letter of protest procedure is intended to aid in examination without compromising the integrity and objectivity of the ex parte examination process.  See BPJ Enterprises, Ltd., 7 USPQ2d at 1375.  It is not intended to serve as a substitute for an opposition proceeding, and it may not be used as a means to delay registration or to present purely adversarial arguments.  See TMEP §1715 et seq.

 

Under Trademark Rule 2.146(a)(3), the Director is permitted to invoke supervisory authority to review the denial or dismissal of a letter of protest.  37 C.F.R. §2.146(a)(3).  However, the Director will only reverse a decision denying or dismissing a letter of protest where there has been an abuse of discretion or a clear error in denying the letter of protest.  See generally In re Pohn, 3 USPQ2d 1700, 1702 (Comm’r Pats. 1987).  On petition, the Director will consider only the evidence that was properly before the Deputy Commissioner in acting on the letter of protest.  In re BPJ Enterprises, Ltd., 7 USPQ2d at 1378; TMEP §1715.06. 

 

Based on the facts presented in the January 8, 2019 letter of protest, it does not appear that there was an abuse of discretion or clear error in denying the letter of protest.  As noted in the decision, when a letter of protest is filed based on a likelihood of confusion, if the goods and/or services are not identical, evidence of the relatedness of the goods and/or services must be included.  The mere fact that both the goods and services are for computer software does not alone make the goods and services related. See M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 1383, 78 USPQ2d 1944, 1947–48 (Fed. Cir. 2006).

 

Responding to this Letter

 

If you wish to pursue this petition, even though your request will likely be denied, you are hereby given thirty (30) days to respond to this letter providing: the $100 petition fee and any verified statements you wish the Director to consider.  If no response to this letter is received in the USPTO within the 30 days, the petition will be denied without consideration on the merits.    The petitioner will not have met the requirements for filing a petition.  See TMEP §§1705.02, 1705.03. 

 

You can respond to this letter using the “Letter of Protest” form online through the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks-application-process/filing-online/petition-forms .   To pay the petition fee of $100, you can attach a credit card authorization form. The credit card authorization form and instructions for use are on the USPTO website at http://www.gov.uspto.report/sites/default/files/documents/PTO-2038.pdf .

 

Please contact me if you have any questions.

 

Sincerely,

 

Kolacz, Kathleen/Kathleen L. Kolacz/

/Kathleen L. Kolacz/

Attorney Advisor

Office of the Deputy Commissioner

  for Trademark Examination Policy

kathleen.kolaczAttorney Advisor

Office of the Deputy Commissioner

  for Trademark Examination Policy

kathleen.kolacz@uspto.gov

571-272-3650