United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

 

U.S. Registration No. 1231936   Mark:  ARQUATI
Correspondence Address:         Laura T. Geyer        Vorys, Sater, Seymour and Pease LLP        P.O. Box 2255        Columbus, OH 43216-2255
Owner:  ARQUATI SA
Reference/Docket No. 024808-194            Correspondence Email Address:         iplaw@vorys.com

 

 

OFFICE ACTION

 

 

The USPTO must receive the owner’s response to this letter within the time period specified below.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears below.

 

Issue date:  October 3, 2023

 

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on March 20, 2023.  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.

1) SPECIMEN ISSUE

2) ATTORNEY RECOGNITION REQUIREMENTS

 

1) 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). 

 

The owner may respond by submitting:

 

(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(a)(7); TMEP §1604.12(c).

 

Examples of specimens.  Electronic specimens may be an image, such as a photograph or scanned copy, of the physical specimen. Specimens for goods include an image of (1) the actual goods bearing the mark; (2) labels or tags shown attached to the goods or including informational matter that typically appears on a tag or label in use in commerce for these types of goods; (3) an actual container or packaging for the goods bearing the mark; or (4) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(i).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

2) The appointment of an attorney in the Combined Section 8 Affidavit or Declaration & Section 9 Renewal Application is ineffective because the affidavit or declaration was signed by the appointed attorney.  See 37 C.F.R. §§2.19(a)(1), 2.193(e)(3); TMEP §§604.04, 606.  Therefore, the previous power of attorney filed on January 15, 2016 remains effective and the USPTO will continue to recognize the attorney appointed on that date as the owner’s representative.  See TMEP §§604.04, 606. 

 

Because the attorney that signed the Combined Section 8 Affidavit or Declaration & Section 9 Renewal Application is not currently recognized as the owner’s representative, there is a question as to the attorney’s authority to sign the maintenance filing. 

 

Therefore, the owner must submit:

 

(1)   A new power of attorney signed by the individual owner or a person with legal authority to bind a juristic owner (e.g., corporate officer or general partner of a partnership); and

 

(2)   A properly signed response to this Office action that includes a statement that the newly appointed attorney had authority to sign the original affidavit or declaration and renewal application. 

 

See 37 C.F.R. §§2.17(c), 2.163(b), 2,184(b), 2.193(e)(2); TMEP §§605.01, 611.03(a), 1604.08(a), 1606.07.    

 

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Combined Section 8 Affidavit & Section 9 Renewal Application, 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, that is, within the one year before the end of a 10-year period after the date of registration, or during the ensuing grace period.

 

Renewal of the registration is requested.

 

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

 

Renewal Application on behalf of the owner:

(1)   A person with legal authority to bind the owner;

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

(3)   An attorney as defined in 37 C.F.R. §11.1 who has actual or implied written or verbal power of attorney from the owner.

37 C.F.R. §2.161(a)(2); TMEP §§804.04 and 1604.08(a).

 

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 and/or expiration of the registration.  If a response is not received, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled and will expire in its entirety.  37 C.F.R. §§2.163(b)-(c) and 2.184(b); TMEP §§1604.16, 1606.12 and 1606.13(a).

 

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)(1) and 2.185(a)(1).

 

How to respond.  Click to file a Response to Post-Registration Office action. 

 

Direct questions about this Office action to the Post Registration staff member below.

 

/Derrick A Praylow/

Program Analyst – Office of Trademark

Quality Review and Training

Post Registration Work Project

571-272-9440

Derrick.praylow@uspto.gov

 

RESPONSE GUIDANCE

• 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 owner’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted or processed.  If the owner does not have an attorney, the response must be signed by the individual owner, all joint owners, or someone with legal authority to bind a juristic owner.  If the owner 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.