UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION

 

 

 

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER:

 

http://www.uspto.gov/trademarks/teas/reg_maintain.jsp

 

 

 POST REGISTRATION OFFICE ACTION

 

 

ISSUE/MAILING DATE: 7/1/2015

U.S. Registration Number  1870247

 

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on June 29, 2015.  The Section 9 portion of the combined filing can be granted.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

 

SPECIMEN ISSUE PERTAINING TO CLASS 16 ONLY

The specimen submitted with the Section 8 Affidavit is unacceptable because it consists of advertising material for goods and does not show use of the registered mark on the goods or on packaging for the goods.  See TMEP §904.04(b)-(c). 

 

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is unacceptable to show trademark use.  TMEP §904.04(b).  Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b)-(c). 

 

Therefore, the owner must submit the following:

 

(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods specified in the registration; and

 

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce during the relevant period for filing the 10-year Section 8.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.

 

DECLARATION

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit, if properly signed and dated:

 

The owner was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, during the relevant period for filing the 10-year Section 8.

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.

 

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

 

The following persons are properly authorized to sign a Section 8 Affidavit on behalf of the owner:

(1)             A person with legal authority to bind the owner (e.g., a corporate officer or general partner);

(2)             A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or

(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.

37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).

 

OWNERSHIP ISSUE

The party who filed the Section 8 Affidavit must establish its ownership of the registration.  Trademark Act Section 8 requires the current owner of the registration to file the Section 8 Affidavit.  15 U.S.C. §1058; 37 C.F.R. §§2.161(a), 3.73(b); TMEP §1604.07(a).  Office records do not show clear chain of title in the party who filed the Section 8 Affidavit.

 

There is an unexplained break in the chain of title that must be clarified.  The registration issued to MONOGRAM CREDIT CARD BANK OF GEORGIA (Georgia corporation).  However, Office records do not show the registration being transferred from MONOGRAM CREDIT CARD BANK OF GEORGIA (Georgia corporation to MONOGRAM CREDIT CARD BANK OF GEORGIA (United States Bank). 

 

The party who filed the Section 8 Affidavit must establish its current ownership of the registration.  15 U.S.C. §1058; 37 C.F.R. §2.161(a); TMEP §1604.07(a).  Ownership can be established by satisfying one of the following:  (1) recording the appropriate documents with the Assignment Services Branch of the Office; or (2) submitting actual evidence showing the transfer of title to the party who filed the Section 8 Affidavit.  37 C.F.R. §3.73(b); TMEP §§502.01, 1604.07(b).  More information about these two methods for establishing ownership of the registration appears directly below. 

 

(1) If the present owner chooses to record the appropriate documents with the Assignment Services Branch, the documents must be recorded before expiration of the time for filing a response.  In addition, you must notify the undersigned when the documents have been recorded.  For information regarding recording assignments, name changes and mergers, please visit the webpage http://www.uspto.gov/web/trademarks/workflow/assign.htm and see TMEP §§503 et seq.  For specific questions, please contact the Assignment Services Branch at 571-272-3350.  To expedite recordation, the owner is encouraged to file requests for recordation through the Electronic Trademark Assignment System (ETAS) at http://etas.uspto.gov.  To record an assignment, the owner must submit the assignment documents along with a cover sheet and the required fee.  37 C.F.R. §§3.28, 3.31.  The fees for recording an assignment are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document.  37 C.F.R. §2.6(b)(6).  The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.  37 C.F.R. §3.25.

 

(2) If the present owner prefers to submit actual evidence of ownership directly to the undersigned trademark specialist, copies of the actual documents transferring title or a statement explaining the valid transfer of legal title must be submitted.  If submitting a statement of facts explaining the transfer of title, this statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §3.73; TMEP §§502 et seq.

 

Please note that if the party who filed the Section 8 Affidavit submits sufficient evidence to establish ownership but the ownership documents are not recorded with the Assignment Services Branch before expiration of the time to file a response, then the acceptance notice will issue in the name of the owner of record.  37 C.F.R. §3.85; TMEP §502.02.  There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.  TMEP §1604.07(a).

 

Information for Section 8 Affidavits Not Filed in the Name of the Owner

 

If the Section 8 Affidavit was not filed in the name of the owner of the registration and there is time remaining in the statutory filing period, including grace period, when responding to this Office action, the true owner may (1) submit a correction of the name in the filing of record or (2) file a complete new Section 8 Affidavit with a new specimen and filing fee.  Please note that a deficiency surcharge is required if the Section 8 Affidavit was submitted before the grace period began and a correction of the name in the filing of record is received during the grace period.  37 C.F.R. §2.164(a)(1); TMEP §1604.17(a).  The deficiency surcharge is $100.  37 C.F.R. §2.6.  If the owner opts to file a complete new affidavit and fee, this must be explicitly stated in the filing; otherwise, it will be treated as a correction of the owner name.  The fee for filing a Section 8 Affidavit is $100 per class.  37 C.F.R. §2.6.  If the new Section 8 Affidavit is filed during the six-month grace period, the owner must pay the filing fee for the Section 8 Affidavit and the grace period fee.  15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161; TMEP §1604.07(a).  The grace period fee is $100 per class.  37 C.F.R. §2.6. 

 

If the Section 8 Affidavit was not filed in the name of the owner of the registration and there is no time remaining in the grace period when responding to this Office action, the true owner may submit a correction of the name in the filing of record with payment of the deficiency surcharge, but may not file a new Section 8 Affidavit.  15 U.S.C. §1058. 

 

Confirmation Required: Affidavit Signed by Authorized Signatory

 

If a correction of the name in the filing of record is submitted at any time, the true owner must confirm that the original affidavit was signed by a person properly authorized to sign on behalf of the owner.  37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).  If the original affidavit was not signed by an authorized signatory, the owner must also submit a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, attesting to the use or excusable nonuse of the mark during the relevant period for filing the 10-year Section 8.

 

 

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(b).

 

DEFICIENCY SURCHARGE REQUIRED:  The owner must submit a $100 deficiency surcharge with its response to this Office action.  37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).

 

 

 

 

 

/Deborah Y. Ahmed/

Deborah Y. Ahmed

Trademark Specialist

Post Registration Division

571 272-9122

Deborah.Ahmed@USPTO.gov

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.uspto.gov/trademarks/teas/reg_maintain.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) the individual owner; (2) someone with legal authority to bind the owner (e.g., a corporate officer or general partner); or (3) an authorized attorney, if one is appointed to represent the owner.  If the owner is represented by an attorney, the attorney must sign the response.

 

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  Please keep a copy of the complete status screen.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED SPECIALIST.