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 the time period specified below or the SOU will be denied, and the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears below.

Issue date:  June 21, 2021

Your response to the notice of incomplete statement of use was received on June 7, 2021.  The refusal to accept the statement of use is maintained for the reason(s) set forth below. To avoid abandonment of the application, applicant’s response to this Office action must be received in the United States Patent and Trademark Office (USPTO) within (1) thirty (30) days of the issuance date of this letter, or (2) before the deadline for filing a statement of use or the previously granted extension period, whichever is longer.  37 C.F.R. §2.88.

• OWNERSHIP ISSUE

STATEMENT OF USE IS DEFICIENT AS FOLLOWS:

TYPOGRAPHICAL ERROR IN NAME OF APPLICANT MUST BE CORRECTED:  The owner of the mark shown in Office records is “TSR, LLC;” however, the party who filed the statement of use is identified as “TSR LLC.”  The difference in the names appears to be a typographical error which can be corrected by amendment.  See TMEP §1201.02(c).  Accordingly, applicant must correct the typographical error in the applicant’s name as set out in the statement of use.  Id. 

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.  Applicant must submit a response to this Office action that explains the typographical error.

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/.

A statement of use cannot be amended to designate a party who was not the owner of the applied-for mark as of the filing date of the statement of use.  See 15 U.S.C. §1051(d)(1); 37 C.F.R. §§2.71(d), 2.88; In re Colombo Inc.,33 USPQ2d 1530 (Comm’r Pats. 1994); TMEP §803.06.  A statement of use filed in the name of a party who is not the owner of the mark 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).  Although the party filing the statement of use must be the owner of the mark at the time of filing, 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.

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. 

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.

/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 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.