Loading...
2017-52 • DSK 11111 Law de Beaubien • Simmons• Knight•Mantzaris•Neal EST.1976 PLEASE REPLY TO ORLANDO OFFICE Thursday, May 11, 2017 VIA U.S. MAIL AND ELECTRONIC MAIL drybarczyk@clermontfl.org Debbie Rybarczyk, Executive Assistant to City Manager 685 W. Montrose St. Clermont, FL 34711 Re: Registration of Federal Trademark— Meet us in the Middle Dear Debbie: We are pleased to inform you that the City of Clermont's application for registration of the "Meet us in the Middle" trademark has been approved by the United States Patent and Trademark Office ("USPTO") and a Certificate of Registration has been issued. Enclosed with the paper copy of this letter sent via U.S. mail please find the original Certificate of Registration for your records. We have retained a copy of the Certificate of Registration for our records. On the back side of the Certificate of Registration, please find a document from the USPTO entitled "Requirements to Maintain Your Federal Trademark Registration." The "Meet us in the Middle" trademark was registered by the USPTO on April 11, 2017, and will expire on April 11, 2027, unless it is challenged by a third party and either terminated by an order of the Commissioner of Trademarks or by order of a federal court. Once a mark has been registered with the USPTO, there are certain steps that will need to be taken in order to keep the registration effective, as set forth herein. IT IS CRITICAL THAT YOU READ THIS LETTER CAREFULLY AND CALENDAR ALL APPLICABLE DATES DISCUSSED HEREIN. I. Declaration of Continuing Use and/or Declaration of Incontestability. The first step must be taken between the fifth and sixth years of registration, at which time it will be necessary for the City of Clermont to file a "Declaration of Continuing Use" (with the appropriate fee) with the USPTO in which the City of Clermont will certify that the "Meet us in the Middle" trademark is still being used in commerce. It will be necessary for the City of Clermont to file its Declaration of Continuing Use between April 11, 2022, and April 11, 2023. DSKLawGroup.com 332 North Magnolia Avenue, Orlando, Florida 32801 1 P: 407-422-2454 I F: 407-849-1845 609 West Horatio Street, Tampa, Florida 33606 I P: 813-251-5825 I F: 813-254-1063 725 East Park Avenue, Tallahasse, Florida 32301 I P: 850-201-3655 I F: 850-205-3717 Debbie Rybarczyk May 11, 2017 Page 2 of 3 If appropriate, during this same time frame between April 11, 2022, and April 11, 2023, the City of Clermont may also file a "Declaration of Incontestability" (with the appropriate fee), which is a "one time" filing. If the USPTO accepts the Declaration of Incontestability, the registration would be conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the mark with the goods and/or services associated with the mark. In essence, an incontestable registration effectively terminates any common law rights that another third party might have in a confusingly similar mark. As such, we strongly recommend that the City of Clermont consider filing a Declaration of Incontestability for the "Meet us in the Middle" trademark at the appropriate time. The USPTO permits the registrant to file a Combined Declaration of Use and Incontestability. II. Application for Renewal and Declaration of Continuing Use. The second step must be taken in the one (1) year period prior to expiration of the registration. As mentioned above, the City of Clermont's registration for the "Meet us in the Middle" trademark will expire on April 11, 2027. In order to keep effective the registration of this mark, it will be necessary for the City of Clermont to file an "Application for Renewal" (with the appropriate fee) and a second "Declaration of Continuing Use" (with the appropriate fee) with the USPTO within the one (1) year period prior to the expiration of registration. Accordingly, it will be necessary for the City of Clermont to file both these documents with the USPTO between April 11, 2026, and April 11, 2027. The USPTO permits the registrant to file a Combined Declaration of Use and Application for Renewal. After this filing is completed, subsequent Declarations of Continuing Use and Applications for Renewal must be filed between every 9th and 10th year after the registration date in order to keep registration effective (i.e., between April 11, 2036, and April 11, 2037; between April 11, 2046, and April 11, 2047, and so on). We have calendared the deadlines for filing the Declaration of Continuing Use and Declaration of Incontestability for the time period between April 11, 2022, and April 11, 2023, and the deadlines for filing the Declaration of Continuing Use and Application for Renewal for the time period between April 11, 2026, and April 11, 2027.1 OUR SCOPE OF REPRESENTATION REGARDING THE APPLICATION FOR REGISTRATION OF THE "MEET US IN THE MIDDLE" TRADEMARK, HOWEVER, DOES NOT INCLUDE THE PREPARATION OF THE APPROPRIATE CONTINUING USE, INCONTESTABILITY, OR RENEWAL PAPERWORK THAT MUST BE FILED IN THE FUTURE. ACCORDINGLY, IT IS THE CITY OF CLERMONT'S 1 We have not calendared the deadlines in 2036/2037 or 2046/2047. Debbie Rybarczyk May 11, 2017 Page 3 of 3 RESPONSIBILITY TO CONTACT OUR OFFICE WHEN THE ABOVE-REFERENCED DATES APPROACH TO RETAIN US TO PREPARE THE APPROPRIATE DOCUMENTATION ON THE CITY OF CLERMONT'S BEHALF, IN ORDER TO PROTECT ITS INTEREST IN THE REGISTERED "MEET US IN THE MIDDLE" TRADEMARK. Additional information regarding these procedures to preserve registration of the Mark is listed on the enclosed "Requirements to Maintain Your Federal Trademark Registration." Now that the City of Clermont's "Meet us in the Middle" trademark has been registered with the USPTO, the City of Clermont may utilize the "®" symbol in connection with the Mark. The "®" is typically placed to the right and slightly above the mark itself, as follows: MEET US IN THE MIDDLE Congratulations on obtaining registration for the "Meet us in the Middle" trademark. Our representation of the City of Clermont regarding the "Meet us in the Middle" trademark is now complete. It was a pleasure representing the City of Clermont in this matter. If you have any questions or concerns, please feel free to contact us at your convenience. Very truly yours, Aor Deborah I. Mitchell Enclosures cb t at It's 01 art,. ?niteb tate Vatent anb grabeinark Office r0) 14itt. et Meet us in the Middle Reg. No. 5,179,440 City of Clermont(UNITED STATES municipal corporation),AKA Clermont,Florida, 685 W.Montrose Street Registered Apr. 11, 2017 Clermont,FL 34711 Int. Cl.' 35 CLASS 35: Advertising, marketing and promotion services in the field of economic development, business,residential and commercial growth,recreation,tourism,cultural and Service Mark historic attractions,and government services in the City of Clermont,Florida;Promoting the business, community, cultural, historic, municipal and civic and recreational interests of the City of Clermont, Florida; Advertising, marketing and promotion services; Promoting Principal Register recreation and tourism in Clermont,Florida; Promoting tourism in Clermont,Florida area; Promotion of business opportunities;Providing marketing and promotion of special events FIRST USE 10-16-2015;IN COMMERCE 1-19-2016 THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE,SIZE OR COLOR SER.NO.86-964,226,FILED 04-05-2016 MIAH ROSENBERG LAMONT,EXAMINING ATTORNEY is !` [ � •� i Director of the United States Patent and Trademark Office • REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS. Requirements in the First Ten Years* What and When to File: • First Filing Deadline: You must file a Declaration of Use(or Excusable Nonuse)between the 5th and 6th years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period,calculated from the registration date,unless cancelled by an order of the Commissioner for Trademarks or a federal court. • Second Filing Deadline: You must file a Declaration of Use(or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059. Requirements in Successive Ten-Year Periods* What and When to File: • You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between every 9th and 10th-year period,calculated from the registration date.* Grace Period Filings* The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee. *ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use (or Excusable Nonuse)referenced above directly with the United States Patent and Trademark Office(USPTO). The time periods for filing are based on the U.S.registration date(not the international registration date). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying international registration at the International Bureau of the World Intellectual Property Organization, under Article 7 of the Madrid Protocol,before the expiration of each ten-year term of protection,calculated from the date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the international registration,see http://www.wipo.int/madrid/en/. NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the USPTO website for further information. With the exception of renewal applications for registered extensions of protection,you can file the registration maintenance documents referenced above online at h ttp://www.uspto.gov. NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will he sent to trademark owners/holders who authorize e-mail communication and maintain a current e-mail address with the USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms available at http://www.uspto.gov. Page:2 of 2/RN#5179440 rZt • to - -I • Nth!• .:?sue. Please-note that U.S. Customs-&-Border Protection (CBP), a bureau of the Department of Homeland Security, maintains a trademark-recxmlation system for marks registered at the United States Patent and Trademark Office. Parties who register their marks on the Principal Register may record these marks with CBP; to assist-CBP in- its efforts to prevent the importation of goods that -infringe registered marks. The recordation ctatahase includes 'information regarding all recorded marks,•including images of these marks.;CBP..officers monitor imports'to prevent the impartation of goods beating infringing marks,and can access the-recordation database at each of the 317 ports-of entry_ . • •CBP's Intellectual: Property Rights •e-Recordation ' (IPRR) system, lociltixl at httpsJ/apps.cbp.govle-recordatioas/, allows right holders- to electronically file .]PR recordation applications,,thus significantly reducing the amount of time normally required tn- process paper applications_Some additional benefits of the system include: -- - - • - Elimination of paper applications.and supporting documents_ - - - Copies--of the certificate issued by the registering agency(U.S.Patent and Trademark Office or the Copyright Office) are retained by the right holder, not submitted.to - CBP- - • Payment by credit card(preferred),check or money order. - Ability to upload images of the protected work or trademark, thus obviating the need - to send samples to CBP: - - - Reduced.time from filing of the application to enforcement by field personnel. Information about how-to obtain a recordation, and about CBP's Intellectual Property Rights border enforcement program,is available at CRP's web site,www_cbp_gov_ INFORMATION FROM THE USPTO CONCERNING COURTESY E-MAIL REMINDERS OF TRADEMARK REGISTRATION MAINTENANCE DEADLINES AND WARNING ABOUT UNOFFICIAL SOLICITATIONS E-mail Authorization and Current E-mail Address Required to Receive Courtesy E-mail • Reminders of Registration Maintenance Deadlines As a courtesy to registration owners who authorize e-mail communication and maintain a current e-mail address with the United States Patent and Trademark Office (USPTO),the USPTO will issue courtesy e-mail reminders when your deadline approaches to file the necessary maintenance filings to keep your registration active. No reminders will be sent by regular mail. If you have authorized receipt of correspondence by e-mail,please make sure that you have added the USPTO to your"approved senders list"and/or that your server will accept USPTO e- mail and not treat it as junk mail. • The Trademark Electronic Application System(TEAS)Change of Correspondence Address and Change of Owner Address Forms(available through USPTO.gov)should be used to update and add e-mail address information. If an attorney represented you prior to registration but the representation is not ongoing,please use the same form to remove the attorney e-mail address(es)and provide your own,so that the reminders come directly to you. Beware of Unofficial Trademark Solicitations The USPTO's e-mail reminders will direct you to make the necessary filings and pay the associated fees online through TEAS, and will not request any fees by mail. Please be aware that private companies not associated with the USPTO often use trademark application and registration information from the USPTO's databases to mail or e-mail trademark-related solicitations. These may include offers: (1)for legal services; (2)for trademark monitoring services; (3)to record trademarks with U.S. Customs and Border Protection;and(4)to"register" trademarks in a private registry. • These companies may use names that resemble the USPTO name,including,for example,one or more of the terms"United States,""U.S.,""Trademark,""Patent,""Registration,""Office,"or "Agency." -Some companies attempt to make their solicitations mimic the look of official government documents by using official government data that is publicly available from USPTO records. Many refer to other government agencies and sections of the U.S. Code. Most require "fees" to be paid. All official correspondence will be from the"United States Patent.and Trademark Office"in Alexandria,VA,and if by e-mail,specifically from the domain "@uspto.gov." If you receive a trademark-related solicitation that you believe is deceptive,you may file an on- line consumer complaint with the Federal Trade Commission("FTC"),at www.FTC.gov. In -addition, the USPTO encourages recipients of deceptive trademark-related solicitations to contact their states' consumer protection authorities. For additional information,please visit the page on the USPTO.gov website entitled "WARNING: Non-USPTO Solicitations That May Resemble Official USPTO Communications."