Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

NOTICE THAT REQUEST TO DIVIDE APPLICATION AND STATEMENT OF USE

IS INCOMPLETE

Response Required

The USPTO must receive applicant’s response to this notice within the time period specified 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 notice.

Issue date:  March 19, 2020

DIVISIONAL REQUEST AND STATEMENT OF USE NOT ACCEPTED

The request to divide and statement of use filed on February 19, 2020, cannot be processed because the name of the filer of the request to divide and statement of use is different from the name of the owner of the mark.  The owner of the mark shown in Office records is “Klozik, David; Moore, Ronnie; Cortez, Rigoberto; Marquez, Jose; Castillo, Freddy; Rodriguez, Frank; Rodriguez, Maximino; Guerra, Alfred; Yanez, Grabriel; Lopez, Anthony and Salazar, Chris;” however, the party who filed the request to divide and statement of use is identified as “Klozik, David; Moore, Ronnie; Cortez, Rigoberto; Rodriguez, Frank.”  The party who files a request to divide and statement of use must be the owner of the mark at the time the request to divide and statement of use is filed.  See TMEP §1110; 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88; In re Colombo Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994); TMEP §1108.02(a).  Therefore, the request to divide and statement of use cannot be accepted because it was filed by someone other than the owner of record.  The filer must clarify whether it was the owner of the mark at the time the request to divide and statement of use was filed.  See 37 C.F.R. §§3.71, 3.73; TMEP §1108.02(a); §1109.10.

FILER WAS OWNER:  If the filer of the request to divide and statement of use was the owner at the time of filing, this party must submit evidence to establish that it has clear chain of title, as follows:

(1)  Record an assignment or other document of title with the Assignment Services Branch showing clear chain of title to the party filing the request to divide and statement of use, and promptly notifying the undersigned that such documentation has been recorded (requests for recordation can be filed online at http://etas.uspto.gov.); or

(2)  Submit evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, supported by an affidavit or signed declaration under 37 C.F.R. §2.20, that a valid transfer of legal title occurred prior to filing the request to divide and statement of use.

37 C.F.R. §3.73(b)(1); TMEP §§502, 502.01; see 15 U.S.C. §1060; 37 C.F.R. §2.193(e)(1).  Please note that a new owner must record the assignment, change of name, or other document affecting title with the Assignment Services Branch of the USPTO to obtain a certificate of registration in the name of the new owner (or in applicant’s new name).  37 C.F.R. §3.85.

A response to this Office action must still be submitted, even if an assignment or other document of title is recorded.

FILER WAS NOT OWNER:  If the filer of the request to divide and 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 and specimen within the statutory period to avoid abandonment of the application.  See 15 U.S.C. §1051(d); 37 C.F.R. §2.88.  The time for filing a statement of use expires on July 14, 2020; or

(2) there is no time remaining in the statutory period, the application will be abandoned for failure to file a statement of use and the true owner may file a petition to revive the application under 37 C.F.R. §2.66.

Applicant is strongly encouraged to review Section 1201.02(c) of the Trademark Manual of Examining Procedure (TMEP) for correctable and non-correctable errors in how the applicant is identified.  The TMEP is available online at the USPTO website at http://tess2.gov.uspto.report/tmdb/tmep/.

The statement of use filed on February 19, 2020, identify all the services stated in the notice of allowance.  As a result, no services remain that are not yet in use in commerce and for which a statement of use is required.  The applicant must clarify the reason for filing the request to divide or intends for the Office to process the request to divide

IDENTIFICATION OF GOODS AND SERVICES NOT ACCEPTED

The proposed amendment in the request to divide cannot be accepted because it identifies goods and services “Mens and women's clothing (class 25), Photographs, stickers, posters (class 16), leather jackets, belts, seat covers (class 18), rings, pendants, necklaces, bracelets (class 14), advertising for motorcycle organization (class 35)”, that are outside of the scope of the services identified in the notice of allowance.  While the identification of services may be amended to clarify or limit the services, additions to the identification or a broadening of the scope of the identification are not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq. and 1402.07

Applicant must respond to the outstanding issues raised in this Office action within the specified time period to avoid abandonment of the application. 

How to respond.  Click to file a Response to Intent-to-Use (ITU)/Divisional Unit Office action.

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

/Lynette Patterson/

Lynette Patterson

Paralegal Specialist

ITU/Divisional Unit

(571) 272-9507

lynette.patterson@uspto.gov

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the request to divide the application to be denied.  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 request to divide the application to be denied.  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.