To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`McCarthy, Nathan (mswyers@thetrademarkcompany.com)
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`U.S. TRADEMARK APPLICATION NO. 86491495 - TAMALPAIS SURF CLUB THE TIME TUNNEL -
`N/A
`
`11/28/2015 11:25:49 AM
`
`ECOM117@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION SERIAL NO.   86491495
`
`           
`
`MARK: TAMALPAIS SURF CLUB THE TIME
`TUNNEL
`
`CORRESPONDENT ADDRESS:
`  
`       MATTHEW H SWYERS
`  
`       The Trademark Company
`         344 Maple Ave W # 151
`           Vienna, VA 22180-5612
`    
`   
`
`APPLICANT: McCarthy, Nathan
`
`    
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`*86491495*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`CORRESPONDENT’S REFERENCE/DOCKET
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`   
`
`  N/A
`
`NO:       
`CORRESPONDENT E-MAIL ADDRESS:   
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`     mswyers@thetrademarkcompany.com
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
`
`OFFICE ACTION
`
`ISSUE/MAILING DATE: 11/28/2015
`
`THIS IS A FINAL ACTION.
`
`On May 27, 2015, action on this application was suspended pending the disposition of U.S. Application Serial No. 86458133.  The referenced
`pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.
`
`Applicant filed a request to change the owner name on January 2, 2015.  This request was denied, and applicant was required to clarify whether
`the proper party filed the original application.  Applicant did not address this issue in its May 20, 2015, response. As such, the requirement that
`applicant clarify whether the proper party filed the original application is now made FINAL for the reasons set forth below.  See 37 C.F.R.
`§§2.63(b), 2.71(d).
`
`REQUEST TO CHANGE OWNER NAME DENIED – NO ASSIGNMENT FILED
`
`Applicant has requested that the owner name be amended; however, applicant has not provided a reason for this request, or provided or recorded
`ownership transfer documentation.  The name of one of the original applicants is Nathan McCarthy DBA Proof Lab, a California partnership;
`applicant seeks to amend this to Proof Lab, a California corporation (with deletion of the other partner, William Hutchinson).  The request to
`change the owner name raises a question regarding whether the proper party filed the original application.  Indeed, if the name change is allowed
`as applicant has requested, then the partnership with William Hutchinson ceases to exist, and any subsequent arrangement constitutes a new
`entity.  See TMEP §803.03(b).
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`Therefore, applicant must clarify whether the proper party filed the original application. In addition, the request to amend the owner name is
`denied until clear chain of title to the new party has been established.
`
`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.
`
`If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another
`entity, the new owner must file documentation to establish its ownership of the application as follows:
`
`(1)  The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment
`Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining
`attorney that the documentation has been recorded.
`
`(2)  The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20,
`explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner.  However, the
`registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the
`trademark examining attorney, as specified in (1) above.
`
`TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).
`
`Assignments and other documents affecting title may be filed electronically at http://etas.uspto.gov/.  There is a fee for recording ownership
`changes.  37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d).  Recording an assignment or other ownership transfer document does not constitute
`
`a response to an Office action.  TMEP §503.01(d).  
`
`If the party applying to register the mark is in fact the owner of the mark, but there is a typographical error or other minor mistake in the manner
`the owner name is set forth in the application, the mistake may be corrected by amendment.  U.S. Pioneer Elecs. Corp. v. Evans Mktg., Inc., 183
`USPQ 613, 614 (Comm’r Pats. 1974); TMEP §1201.02(c) (providing examples of correctable and non-correctable errors).
`
`This requirement is now made FINAL.
`
`RESPONSE OPTIONS
`
`Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C.
`§1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:
`
`(1)       
`
`(2)       
`
`A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
`
`An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
`
`37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
`
`In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review
`procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee
`is $100.  37 C.F.R. §2.6(a)(15).
`
`/Andrew Leaser/
`Trademark Examining Attorney
`Law Office 117
`(571) 272-1911
`andrew.leaser@uspto.gov
`
`TO RESPOND TO THIS LETTER: E-mail communications will not be accepted as responses to Office actions; therefore, do not respond
`to this Office action by e-mail. Instead, go to http://www.uspto.gov/trademarks/teas/response_forms.jsp to file a formal response.   Please wait
`48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system
`
`updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  
`For questions about the Office action itself, please contact the assigned trademark examining attorney. All informal communications relevant
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`to this application will be placed in the official application record.
`
`TEAS PLUS APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING
`SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus application
`form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §819.02(b) for a complete list of
`these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail
`throughout the prosecution of the application.  See 37 C.F.R. §2.22(b); TMEP §819.  TEAS Plus applicants who do not meet these requirements
`must submit an additional processing fee of $50 per international class of goods.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c); TMEP §819.04.  However, in
`certain situations, TEAS Plus applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without
`
`incurring this additional fee.  
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   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.
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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`McCarthy, Nathan (mswyers@thetrademarkcompany.com)
`
`U.S. TRADEMARK APPLICATION NO. 86491495 - TAMALPAIS SURF CLUB THE TIME TUNNEL -
`N/A
`
`11/28/2015 11:25:50 AM
`
`ECOM117@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 11/28/2015 FOR U.S. APPLICATION SERIAL NO. 86491495
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period.  Your response deadline will be calculated from 11/28/2015 (or sooner if specified in the Office action).  For information
`regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions. 
`Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System
`(TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.
`
`(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
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