| To: | HISAMITSU PHARMACEUTICAL CO., INC. (docket@hollandhart.com) |
| Subject: | TRADEMARK APPLICATION NO. 90536612 - HELLO! ECO! - 41961.0236 |
| Sent: | 11/19/2021 12:16:30 PM |
| Sent As: | ECOMPET |
| Attachments: |
United States Patent and Trademark Office (USPTO)
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U.S. Application Serial No. 90536612
U.S. Registration No.
Mark: HELLO! ECO!
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Correspondence Address: Scott S. Havlick HOLLAND & HART LLP ATTN: TRADEMARK DOCKETING P.O. BOX 8749 DENVER CO 80201 |
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Owner: HISAMITSU PHARMACEUTICAL CO., INC.
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Reference/Docket No. 41961.0236
Correspondence Email Address: docket@hollandhart.com |
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PETITION TO DIRECTOR GRANTED
Issue date: November 19, 2021
Hisamitsu Pharmaceutical Co., Inc. has petitioned the Director of the United States Patent and Trademark Office to allow consideration of an amendment to the basis for registration of the above identified trademark after publication and before issuance of the Notice of Allowance (NOA). The petition is granted. 37 C.F.R. §2.146(a)(3).
FACTS
The application was filed on February 19, 2021, based upon applicant’s bona fide intention to use the mark in commerce. 15 U.S.C. §1051(b). The mark was published for opposition on October 26, 2021. This petition was filed on November 9, 2021. Petitioner requests that the application be amended to substitute Trademark Act Section 44(e) as the basis for registration. 15 U.S.C. §1126(e).
DECISION
An applicant may request post-publication amendments adding or substituting a new statutory basis for registration by filing a petition pursuant to 37 C.F.R. §2.146(a)(3). See 37 C.F.R. §2.35(b)(2). If the petition is granted, the application is returned to the examining attorney for examination of the new basis for registration. TMEP §1107. If the new basis is accepted, republication for opposition is always required. 37 C.F.R. §2.35(b)(2). See In re Monte Dei Maschi Di Siena, 34 USPQ2d 1415 (Comm’r Pats. 1995).
Petitioner has requested to substitute Section 44(e) as the basis for registration. Therefore, if the amendment is accepted, the §1(b) basis will be deleted and the mark will be republished for opposition based solely on Section 44(e). Since the application has already been published for opposition, the examining attorney does not have jurisdiction of the application. TMEP §1504.01. Jurisdiction is restored to the examining attorney to examine the amendment substituting Section 44(e) as a basis for registration in accordance with the procedures set forth in TMEP §1107.01.
Sincerely,
/Jolie Washington/
Paralegal Specialist
Office of the Deputy Commissioner
for Trademark Examination Policy
jolie.washington@uspto.gov
571-272-9583