Petition to Director Granted

United States Patent and Trademark Office (USPTO)

PETITION TO DIRECTOR GRANTED

Issue date:  July 10, 2019

Caressa L. McCoy (petitioner) has petitioned the Director of the United States Patent and Trademark Office (Director) to expunge from the record the specimens of use filed with protestor’s May 9, 2019 application, and to substitute the new specimen provided on May 23, 2019.  The Director has the authority to review petitioner’s request.  See 37 C.F.R. §§2.146(a)(5), 2.148.  The petition is granted.

FACTS

On May 9, 2019, petitioner filed an application for registration of the above-identified mark on the Principal Register based on use of the mark in commerce under Section 1(a) of the Trademark Act. See 15 U.S.C. §1051(a). 

On May 23, 2019, petitioner filed the instant petition requesting that the second specimen submitted with application described as “a gold box with triangular pyramid image” be expunged from the record and the new specimen provided on May 23, 2019 be substituted in its place.  Petitioner declares that the second specimen submitted with the May 9, 2029 application displays “a conversation between my manufacturer and I in the background. I am giving the company instructions to make the coverage of my makeup heavier, and I believe that this dialogue is a private matter. Additionally, the image also displays the first and last names of the company's other customers, which may inadvertently be a violation of both the company's and customers' privacy.”  (Petition 1).

DISCUSSION

Pursuant to Trademark Rule 2.25, documents filed with the USPTO become part of the official record and will not be returned or removed.  37 C.F.R. §2.25; TMEP §404.  Because the USPTO acts based exclusively on this written record, the USPTO must preserve the integrity of its administrative record and provide the public with a complete application file.  See 35 U.S.C. §143; 37 C.F.R. §2.191.  This responsibility is unquestioned in light of the well-settled principle that review of USPTO decisions is limited to the administrative record below.  See 15 U.S.C. §1071(a)(4); see also Camp v. Pitts, 411 U.S. 138, 142 (1973); United States v. Carlo Bianchi & Co., 373 U.S. 709, 714-15 (1963).

As noted above, petitioner has provided a verified statement on petition that the second specimen submitted with the application “contains confidential and private information” (Petition 1). 

The Director may waive Rule 2.25 “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.  In this case, the Director finds that a waiver of Rule 2.25 is appropriate.  Petitioner’s reasons for requesting that the specimens be expunged establish an extraordinary circumstance, in which the Director can conclude that no other party will be injured and justice requires a waiver of this rule.  See TMEP §§404, 1708.  Petitioner is requesting that the second specimen provided with the May 9, 2019 application be expunged because it contains confidential information.  The redacted information will not be necessary for the examination of the Section 1(a) filing and will not be relied upon because applicant has provided other specimens of record in its application and has also provided substitute specimens without the confidential information in its May 23, 2019 voluntary amendment.    

Accordingly, the Director waives Rule 2.25 and will expunge the second specimen submitted with the May 9, 2019 application from the official record maintained by the USPTO, and the replacement specimens submitted with the May 23, 2019 petition will be maintained.  See 37 C.F.R. §§2.146(a)(5), 2.148.   

DECISION

The petition is granted.  The USPTO will expunge from the record the second specimen of use described as “a gold box with triangular pyramid image” filed with protestor’s May 9, 2019 Section 1(a) filing.  The specimens will be replaced with the substitute version submitted with the May 29, 2019 voluntary amendment, and will be viewable in that filing.  

/Judy Grundy/

Attorney Advisor

Office of the Deputy Commissioner

  for Trademark Examination Policy

judy.grundy@uspto.gov

571-272-8501