From: Leaser, Andrew C.
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`Sent: 6/3/2016 5:07:15 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86491495 - TAMALPAIS SURF CLUB THE TIME TUNNEL -
`N/A - Request for Reconsideration Denied - Return to TTAB
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 86491495.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`U.S. APPLICATION SERIAL NO. 86491495
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`MARK: TAMALPAIS SURF CLUB THE TIME TUNNEL
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`CORRESPONDENT ADDRESS:
` MATTHEW H SWYERS
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` THE TRADEMARK COMPANY
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` 344 MAPLE AVE W # 151
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` VIENNA, VA 22180-5612
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`APPLICANT: McCarthy, Nathan
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` N/A
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`CORRESPONDENT E-MAIL ADDRESS:
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` mswyers@thetrademarkcompany.com
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`*86491495*
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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`VIEW YOUR APPLICATION FILE
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`REQUEST FOR RECONSIDERATION DENIED
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`ISSUE/MAILING DATE: 6/3/2016
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`This Office action concerns applicant’s request for reconsideration filed on May 31, 2016.
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`The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is
`denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B),
`715.04(a).
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`REQUEST TO CHANGE OWNER DENIED – NO ASSIGNMENT FILED
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`Applicant has requested that the owner be amended; however, applicant has not provided a reason for
`this request, or provided or recorded ownership transfer documentation. The original applicant is listed
`as a partnership made up of Nathan McCarthy and William Hutchinson doing business as ProofLab;
`applicant seeks to amend this to a corporation (applicant has not provided the name of the corporation,
`though it is presumed to be ProofLab, as applicant indicated in its January 2, 2015 response, since the
`name of two individuals with entity types listed as “corporation” would create an ambiguity). While an
`application can be amended to correct an inadvertent error in the manner in which an applicant’s name
`is set forth (see TMEP §1201.02(c)), an application cannot be amended to substitute another entity as
`the applicant. See TMEP §803.06. Amending the owner from a partnership to a corporation would
`constitute substituting another entity as the applicant without filing an assignment.
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`An application is void if it was filed in the name of a party who did not own, or was not entitled to use,
`the applied-for mark on the application filing date. 37 C.F.R. §2.71(d); Huang v. Tzu Wei Chen Food Co.,
`849 F.2d 1458, 1459-60, 7 USPQ2d 1335, 1335-36 (Fed. Cir. 1988); TMEP §§803.06, 1201.02(b); see 15
`U.S.C. §1051(a)(1). A void application cannot be cured by amendment or assignment. TMEP §§803.06,
`1201.02(b); see 37 C.F.R. §2.71(d). In these cases, the true owner must file a new application. TMEP
`§803.06.
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`Accordingly, because applicant has not clarified whether the proper party filed the original application,
`the request for reconsideration is DENIED. The refusal of the application made final in the Office action
`dated November 28, 2015, is maintained and continues to be final. See TMEP §§715.03(a)(ii)(B),
`715.04(a).
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`CASE RETURNED TO TTAB FOR RESUMPTION OF APPEAL
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`Applicant has filed a timely notice of appeal with the Trademark Trial and Appeal Board, and therefore
`the Board will be notified to resume the appeal. See TMEP §715.04(a).
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`/Andrew Leaser/
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`Trademark Examining Attorney
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`Law Office 117
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`(571) 272-1911
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`andrew.leaser@uspto.gov