| To: | Guangzhoushi Two Five Eight Trade Co., L ETC. (dmtm2019@outlook.com) |
| Subject: | U.S. Trademark Application Serial No. 88335371 - ROOR - MANL20.TM.71 |
| Sent: | August 14, 2020 08:25:15 AM |
| Sent As: | ecom105@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88335371
Mark: ROOR
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Correspondence Address:
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Applicant: Guangzhoushi Two Five Eight Trade Co., L ETC.
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Reference/Docket No. MANL20.TM.71
Correspondence Email Address: |
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30-DAY LETTER -– NOTICE OF INCOMPLETE RESPONSE DUE TO NON-RESPONSIVE SUBMISSION
Issue date: August 14, 2020
Notice of Incomplete Response – Response Not Signed by a Proper Party
Deadline for responding to this notice. To avoid abandonment of the application, the USPTO must receive a properly signed response within either (1) thirty days from the issue date above, or (2) the time remaining in the six-month period for responding to the previous Office action, whichever is longer. TMEP §712.03; see 37 C.F.R. §2.65(a)(2). The response must be received by the USPTO no later than midnight Eastern Time of the last day of the response deadline.
This 30-day response action is issued in response to Applicant’s communication submitted on 4/17/20. In the initial office action, Applicant was required to submit a new specimen showing proper use of the mark in commerce and to provide information about the specimen and the sale of its goods in commerce in the United States. Applicant was also notified that it was required to be represented by U.S. counsel.
In its response, U.S. counsel Andrew Morabito: 1) changed the name of the mark owner from Guangzhoushi Two Five Eight Trade Co., Ltd. to Zhang Cailan and 2) amended the filing basis from Section 1(a) to Section 1(b), which would have rendered the specimen refusal moot.
This response cannot be accepted because, as further discussed below, Andrew Morabito is not a properly appointed attorney. Applicant must respond to the following issues raised below within 30 days, as well as the requirements presented in the initial office action, which are maintained and continued.
IMPROPER OWNER NAME CHANGE
The owner name change was not properly filed with the office. 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.
As a result, the name change and amended filing basis is not accepted and information will revert back to the information in the original application. As noted above, applicant must respond to the requirements presented in the initial office action within 30-days.
AUTHORITY OF RESPONSE SIGNATORY IS UNCLEAR
Response is not signed by a proper party and cannot be accepted. Applicant filed a response on 4/17/2020 that appears to have been signed by a person with no legal authority to bind or represent applicant. Specifically, the 4/17/2020 response updated the owner name to “Zhang Cailan” and was signed by U.S. licensed attorney Andrew Morabito. As such, it is unclear if Andrew Morabito represents the original applicant, Guangzhoushi Two Five Eight Trade Co., Ltd., or the owner he listed in the response, Zhang Cailan. The USPTO cannot accept a response signed by an improper party; therefore, the contents in response to the outstanding Office Action will not be reviewed. See 37 C.F.R. §2.62(b); TMEP §718.03.
Resubmit a properly signed response or provide an explanation. Applicant must either (1) resubmit the entire response signed by a proper party, or (2) provide an explanation of the signer’s legal authority to bind or represent applicant. See 37 C.F.R. §§2.17(b)(2), 2.61(b), 2.62(b). Click to respond to a previous nonfinal Office action. See below for information about who can sign a response.
Who can sign the response.
Applicant does not have an attorney. The response must be signed by (1) the individual applicant, (2) someone with legal authority to bind a juristic applicant (e.g., a corporate officer of a corporation, or a general partner of a partnership), or (3) all joint applicants. See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.06(a)-(h), 712.01. In this instance, as applicant has indicated its domicile is located outside the United States, a U.S.-licensed attorney is required.
Applicant has an attorney. The attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §712.01. The only attorneys who may sign responses are (1) attorneys in good standing with a bar of the highest court of any U.S. state or territory, and (2) Canadian trademark attorneys or agents reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED). See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e); TMEP §602.
U.S. COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
Attorney bar information required. Applicant’s attorney must provide the following bar information: (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar. 37 C.F.R. §2.17(b)(3). This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id. If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record. See id.
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
Attorney statement required. Applicant’s attorney must provide the following statement: “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).” See 37 C.F.R. §2.17(b)(3). This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id.
RESPONSE GUIDELINES
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.
The USPTO must receive a properly signed response before the deadline or the USPTO will consider the application abandoned. 37 C.F.R. §2.65(a); TMEP §718.03. In such case, applicant may file a new application with a new fee. A petition to the Director to reverse the holding of abandonment may be granted in very limited circumstances as outlined in TMEP §1713.01.
Alain Lapter, Esq.
/Alain Lapter/
Trademark Examining Attorney
Law Office 105
email: alain.lapter@uspto.gov
phone: 571-272-3162