Letter on Petition

United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 88409703   Mark:  FOFTY
Correspondence Address:         Christopher K. Larus        ROBINS KAPLAN LLP        800 LASALLE AVENUE, STE 2800        MINNEAPOLIS MN 55402
Owner:  Jackson III, Curtis J.
Reference/Docket No. 110273.0006   Correspondence Email Address:         clarus@robinskaplan.com

 

 

PETITION TO DIRECTOR INQUIRY LETTER

 

 

The USPTO must receive petitioner’s response to this letter within 60 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:  May 18, 2020

 

The petition to the Director of the United States Patent and Trademark Office (USPTO) filed on behalf of Curtis J. Jackson III (petitioner) regarding the above-identified application in which petitioner requests to waive the requirement for providing his domicile address was received on February 10, 2020. See 37 C.F.R. §2.146(a).

 

Rule Governing Owner’s Domicile Address

 

Pursuant to Trademark Rule 2.189, an applicant or registrant must provide and keep current the address of its domicile, defined in Rule 2.2(o) as the permanent legal place of residence of a natural person or the principal place of business of a juristic entity. 37 C.F.R. §§2.2(o), 2.189. The Director may waive Rule 2.189 only “in an extraordinary situation, when justice requires and no other party is injured.” 37 C.F.R. §§2.146(a)(5), 2.148; see TMEP §1708. To waive this rule, the Director must determine that all three conditions are satisfied.  See TMEP §1708.

 

Petitioner has requested to continue using a c/o address for petitioner’s attorney rather than providing his personal street address due to “significant personal safety concerns” of petitioner   (Petition). While the Director has the authority to waive a Trademark Rule in an extraordinary situation, the Director may not waive a statutory requirement. To comply with Trademark Act Section 1(a)(2), which requires that every trademark application “include specification of the applicant’s domicile and citizenship,” petitioner must provide additional information in order for the pending petition to be considered.

 

The petition is therefore incomplete and petitioner must provide the following information for the USPTO to consider the petition.

 

Verified Statement Regarding State and Country of Domicile

 

Petitioner must specify the state and country where he is domiciled, verified by an affidavit or declaration under Trademark Rule 2.20. 37 C.F.R. §2.20; see 37 C.F.R. §§2.2(o), 2.146(c), 2.189; TMEP §1705.03.

 

There are two options for petitioner to provide this information:

 

a.      Submit Verified Statement of State and Country of Domicile in Petition Response Form

 

Petitioner’s attorney may respond to this requirement by providing the following verified statement directly on the Response to Petition to Director Inquiry Letter form (#12): 

 

“The permanent legal place of residence of the owner of the application is in <^specify state> in the United States of America.”

 

The required declaration language under Rule 2.20 will prepopulate in the declaration section of the “Response to Petition to Director Inquiry Letter” form.

 

or

 

b.      Submit State and Country of Domicile via CAR form and Verified Attorney Statement via Petition Response Form

 

If petitioner wishes instead to hide the state and country of his domicile address from public view, petitioner’s attorney must follow the steps below to submit the information via the TEAS Change Address or Representation (CAR) and keep it hidden:

 

1)      Open the form, enter the serial number and click “Continue;”

2)      Use the radio buttons to select “Attorney” for the role of the person submitting the form;

3)      Answer “Yes” to the wizard question asking “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”

4)      On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the state and country of petitioner’s domicile address in the text box.  

5)      Submit the CAR form.

6)      Submit the separate TEAS Response to Petition to Director Inquiry Letter form (#12) including a verified statement that, “The domicile state and country provided using the CAR form is accurate to the best of my knowledge.” The required declaration language under Rule 2.20 will prepopulate in the declaration section of the “Response to Petition to Director Inquiry Letter” form.

 

Petitioner is granted sixty days from the issue date of this letter to respond with the required information. If the USPTO does not receive this information within the sixty-day period, the petition will be denied without consideration on the merits. See 37 C.F.R. §2.146(c); TMEP §1705.03. 

 

 

 

/Judy Grundy/

Attorney Advisor

Office of the Deputy Commissioner for Trademarks

Judy.grundy@uspto.gov

571-272-8501