United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 77433051   U.S. Registration No. 3737637   Mark:  HYDROLITE
Correspondence Address:         John Cyril Malloy, III        MALLOY & MALLOY, P.L.        2800 SW 3RD AVE        MIAMI FL 33129-2317
Owner:  COSTA DEL MAR, INC.
Reference/Docket No. 5118.40128   Correspondence Email Address:         jcmalloy@malloylaw.com

 

 

PETITION TO DIRECTOR GRANTED

 

 

Issue date:  July 27, 2021

 

Costa Del Mar, Inc. (petitioner) has petitioned the Director of the United States Patent and Trademark Office (USPTO) to accept for examination the verified substitute specimens in connection with the combined Trademark Act Section 8 declaration of use or excusable nonuse and Trademark Act Section 9 renewal application filed with respect to the above-identified registration.   The Director has authority to review this request under 37 C.F.R. §§2.146(a)(3), 2.165(b) and has delegated this matter to the Commissioner for Trademarks and the staff of the Office of the Deputy Commissioner for Trademark Examination Policy. 35 U.S.C. §3(a)-(b); 37 C.F.R. §2.146(h).  The petition is granted.

 

FACTS

 

On January 12, 2010, the USPTO issued the above-identified registration.  On June 10, 2019, petitioner filed a combined Trademark Act Section 8 declaration of use or excusable nonuse and Trademark Act Section 9 renewal application (combined filing).  15 U.S.C. §§1058, 1059.  The Post Registration specialist refused the combined filing in an Office action dated September 23, 2019 because the specimen submitted did not show the goods identified within the registration.  The Office action also noted that the $100 deficiency surcharge was required. 

 

A response to the Office action was filed on March 23, 2020 with petitioner submitting substitute specimens and the deficiency fee.  On September 16, 2020, a second Post Registration Office action was issued maintaining the rejection of the combined filing because the substitute specimens were also unacceptable. 

 

Petitioner filed this petition on January 28, 2021.  The petition includes substitute specimens.    

 

DISCUSSION

 

Under 15 U.S.C. §1058, a registration owner is required to provide specimens showing current use of the mark in commerce.  Any submission filed within the statutory time periods that is deficient may be corrected, even after the statutory time period, as long as the correction occurs within the time prescribed after notification of the deficiency.  15 U.S.C. §1058.  In separate Office actions, the owner was notified by the Post Registration specialist that the original specimen and the substitute specimens were unacceptable.

 

Trademark Rule 2.165 permits the owner to file a petition to the Director to review a Post Registration specialist’s action maintaining the refusal of a Section 8 declaration.  37 C.F.R. §2.165.  Pursuant to Rule 2.146(a)(3), the Director may invoke supervisory authority in appropriate circumstances.  37 C.F.R. §2.146(a)(3).  The facts here support the invocation of supervisory authority.  Petitioner filed a timely petition and has provided a properly verified substitute specimen for review by the Post Registration Division along with the required $100 deficiency fee.   

 

DECISION

 

The petition to accept a properly verified substitute specimen for examination by the Post Registration Division is granted.  The registration file will be forwarded to the Post Registration Division for action consistent with this decision.

 

 

 

/Judy Grundy/

Attorney Advisor

Office of the Deputy Commissioner for Trademarks

Judy.grundy@uspto.gov

571-272-8501