Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

NOTICE THAT STATEMENT OF USE (SOU)

IS INCOMPLETE

Response Required

The USPTO must receive applicant’s response to this notice within 30 days of the issue date below or the SOU 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:  February 11, 2020

The statement of use filed on January 24, 2020 meets the minimum filing requirements and is provisionally accepted.  However, to avoid abandonment of the application, a response satisfying the deficiencies stated below must be received in the United States Patent and Trademark Office (USPTO) within thirty (30) days of the issuance date of this letter.

STATEMENT OF USE IS DEFICIENT AS FOLLOWS:

• Owner

FILER’S NAME DIFFERS FROM CURRENT OWNER NAME – CLARIFICATION REQUIRED:  The owner of the mark shown in Office records is “ERBI BIOSYSTEMS, INC.;” however, the party who filed the statement of use is identified as “Pharyx, Inc.”  The name difference appears to be a mistake in the manner in which the applicant’s name is set forth and may be the type of mistake that may be corrected by amending the owner name in the statement of use.  See TMEP §1201.02(c).  If the current owner of record filed the statement of use but improperly identified itself, applicant may amend the owner name in the statement of use to agree with the name of the current owner identified in the Office records, if appropriate.  Id.

Applicant is strongly encouraged to review Section 1201.02(c) of the Trademark Manual of Examining Procedure (TMEP) to confirm that the error is correctable and notify the undersigned accordingly.  The TMEP is available online at the USPTO website at http://tess2.gov.uspto.report/tmdb/tmep/.

Please note that a statement of use cannot be amended to designate a different legal entity.  If the party who filed the statement of use is the current owner but not the owner of record, then evidence to establish ownership can be provided after expiration of the deadline for filing the statement of use.  See 37 C.F.R. §§2.88(b)(1), (c)(3), 3.71, 3.73; TMEP §1109.10.  However, if the party who filed the statement of use is not the owner of the applied-for-mark as of the filing date of the statement of use, then the statement of use is void and cannot be corrected by amendment.  See Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, (TTAB 2007). 

FILER WAS OWNER:  If the filer of the statement of use was the owner at the time of filing, this party must submit a response to this Office action that explains the difference in the owner name.

FILER WAS NOT OWNER:  If the filer of the statement of use 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 statement of use within the statutory period to avoid abandonment of the application.  15 U.S.C. §1051(d); 37 C.F.R. §2.88.  The time for filing a statement of use expires on June 10, 2020.

(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.

There is time remaining in the statutory time period for filing a statement of use.  Applicant must respond to the outstanding issues raised in this Office action within the specified time period to avoid abandonment of the application. 

Please call the undersigned with any questions. 

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. 

Direct questions about this notice to the Intent-to-use staff member below.

Cornish, Lori

/Lori Cornish/

ITU/Divisional Unit

Lori.Cornish@uspto.gov

571 272-9341

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the SOU to be denied, and the application may be abandoned.  The 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 applicant’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted or processed and can cause the SOU to be denied, and 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.