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 30 days of the issue date below or the SOU will be denied, and the application may be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears below.

Issue date:  June 8, 2021

The statement of use filed on May 4, 2021 meets the minimum filing requirements and is provisionally accepted.  However, to avoid abandonment of the application, a response satisfying the deficiencies stated below must be received in the United States Patent and Trademark Office (USPTO) within thirty (30) days of the issuance date of this letter.

STATEMENT OF USE IS DEFICIENT AS FOLLOWS:

FILER’S NAME DIFFERS FROM CURRENT OWNER NAME – CLARIFICATION REQUIRED:  The owner of the mark shown in Office records is “LANASA, JUSTIN;” however, the party who filed the statement of use is identified as “TSR, LLC.”  The party who files a statement of use must be the owner of the mark at the time the statement of use is filed.  See 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88; In re Colombo Inc.,33 USPQ2d 1530 (Comm’r Pats. 1994).  Therefore, the 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 statement of use was filed.  Evidence to establish ownership can be provided after the expiration of the deadline for filing the statement of use, if the statement of use was filed by the true owner.  See 37 C.F.R. §§3.71, 3.73; TMEP §1109.10. 

FILER WAS OWNER:  If the filer of the 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 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 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 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 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 September 16, 2021; 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/.

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. 

Please call the undersigned with any questions. 

.

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.

/Sykes, Jeffery/

Paralegal Specialist

ITU/ Divisional Unit

(571) 272-4313 Office

jeffery.sykes@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.