Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 13, 2020

 

This application was approved for publication on April 1, 2020 and a notice of allowance was issued June 30, 2020.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn and the notice of allowance has been cancelled to address the issue below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

SUMMARY OF ISSUES:

• Request To Change Owner Name

 

 

REQUEST TO CHANGE OWNER NAME

 

Applicant’s communication dated February 26, 2020 included a request that the applicant name be amended; however, applicant has not provided or recorded in the USPTO database ownership transfer documentation or any other documentation showing transfer of title nor has applicant indicated whether the assignee is a successor to applicant’s business.  An intent-to-use application is void if, prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant’s business or to a portion of the applicant’s business to which the mark pertains, if that business is ongoing and existing.  15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; TMEP §501.01(a); see Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996).  Accordingly, the request to amend the applicant name is denied until (1) clear chain of title to the new party has been established and (2) a statement that the assignee is a successor to applicant’s business is provided.  37 C.F.R. §2.61(b); TMEP §814. 

 

To establish chain of title to the application, one of the following must be satisfied:

 

(1)       The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.; OR

 

(2)       The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner.  However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.

 

TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).

 

Assignments and other documents affecting title may be filed electronically.  There is a fee for recording ownership changes.  37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d).  Recording an assignment or other ownership transfer document does not constitute a response to an Office action.  TMEP §503.01(d).  Applicant must still file a separate response to this Office action.  See id.

 

If the application was filed by the owner and the there is an inadvertent error in the applicant’s name, such as a minor typographical error or misspelling, or the name identifies a party that did not exist as of the application filing date, the application may be amended to correct the applicant’s name.  TMEP §1201.02(c).  In either case, applicant should include in the amendment request the reason for the correction (such as “ABC Corporation did not exist as of the filing date of the application,” or “Company” was inadvertently omitted from the applicant’s name in the application).  Id.

 

 

ADVISORY – RESPONSE ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause 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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 13, 2020 for

U.S. Trademark Application Serial No. 88247881

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 13, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”