Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77658163 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The examiner cites a prior registration for MISS PEEP for dolls.  Applicant is the owner of the mark PEEPS reg. no. 2229060, used in connection with the famous marshmallow chick-shaped candies since 1954.  The toys covered in the present application under the same mark PEEPS are tie-in products, relating to the chick shaped candies.  Applicant has amended the identification of goods to clarify that many of the items, such as plush toys, are actually in the shape of the famous chick.

Consumers seeing PEEPS toys, in particular the chick shaped items, would readily form an association with the famous chick shaped candy.  These consumers are likely to already have a familiarity with the candy product. In fact, the items are likely to be sold in proximity to the candies in order to increase the connection in the mind of the consumers.

In contrast, MISS PEEP is for dolls per se, and based on the name, is likely a female human doll.  This is quite different from novelty toy items, such as flying discs, and chick shaped plush and bath toys.  Even though both contain the word peep, the two marks convey a different commercial impression.  MISS PEEP conveys a human, perhaps with sophistication, while PEEPS would convey an association with the famous candy

Accordingly, there is no likelihood of confusion with MISS PEEP.

The examiner also cites LOTTERY PEEPS.  This is clearly a tie in with some sort of lottery promotion, and the channels of trade and consumer target, i.e. adults purchasing lottery tickets, is quite different from that of applicant.  Applicant's goods are children's novelty toys sold as a tie in to a famous chick shaped candy.  There would be no likelihood of confusion.

PRINCESS PEEPS relates to sunglasses.  Besides the obvious calling to mind of the word 'peeps' as slang for eyes, it is noted that applicant has deleted this item from the application.  There is no likelihood of confusion.



CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Toys, plush toys, bath toys, wind up toys, toy stamps, novelties for parties, toy sunglasses, dress up jewelry
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/01/2004 and first used in commerce at least as early as 02/01/2004, and is now in use in such commerce.

Proposed:
Tracked Text Description: Toys, plush toys, bath toys, wind up toys, toy stamps, novelties for parties, toy sunglasses, dress up jewelry; Toys, namely, plush toys in the shape of a bunny, plush toys in the shape of a chick, bath toys in the shape of a chick, wind up toys in the shape of a chick, toy stamps in the shape of a chick, play figures in the form of sponges in the shape of a chick, flying discs, jump ropes, gift baskets containing toys, egg decorating kits, hobby craft kits, toy cookwareClass 028 for Toys, namely, plush toys in the shape of a bunny, plush toys in the shape of a chick, bath toys in the shape of a chick, wind up toys in the shape of a chick, toy stamps in the shape of a chick, play figures in the form of sponges in the shape of a chick, flying discs, jump ropes, gift baskets containing toys, egg decorating kits, hobby craft kits, toy cookware
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 02/01/2004 and first used in commerce at least as early as 02/01/2004, and is now in use in such commerce.
SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /bsl/     Date: 06/30/2009
Signatory's Name: Bruce S. Londa
Signatory's Position: Attorney of Record, NY bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77658163
Internet Transmission Date: Tue Jun 30 14:20:33 EDT 2009
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20090630142033
257608-77658163-4308a573ab1c8a60e48f81c7
7bb722f92-N/A-N/A-20090630135821010992