Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79212170 DIVA(Standard Characters, see http://uspto.report/TM/79212170/mark.png) has been amended as follows:

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

The USPTO has indicated that Applicant's mark may be rejected on the basis of a likelihood of confusion in view of the following pending applications:
1.  Appln. No. 86032788 for COACH DIVA
2.  Appln. No. 87254046 for DIVA 57
3.  Appln. No. 87254058 for DIVA YACHTS
4.  Appln. No. 87254069 for DIVA 30F
5.  Appln. No. 87254084 for DIVA - 30

Applicant wishes to point out that applications 1-4 noted above are now abandoned per the USPTO database as attached.

Concerning the mark at point 5 to potentially be cited against Applicant's mark, Applicant wishes to point out that Applicant's US rights herein are based upon an International Registration which has a priority date of December 1, 2016, based upon French rights.  The apparent priority date of Appln. No. 87254084 for DIVA - 30 is its US filing date of December 1, 2016.


EVIDENCE
Evidence in the nature of 1-4 consecutively scanned USPTO records showing abandoned applications referenced in argument A 1-11 Applicant's US and International application with priority claim to French rights has been attached.
Original PDF file:
evi_7624883159-20180129100547729336_._1-29-2018_ABANDONED_POTENTIAL_CITATIONS.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_7624883159-20180129100547729336_._1-29-2018_APPLICANT_S_INFORMATION.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Vehicles, apparatus for locomotion by land, air or water; automobile engines; transmissions and clutches for land vehicles; brakes and braking installations for vehicles, their command or control parts and devices; safety belts for vehicle passengers; accessories for vehicle equipping or decoration, namely, hoods, doors, bumpers, steering wheels, windshields, windows, hoods for vehicles, gearboxes, axles, wheels, wheel rims, tires, inner tubes, spikes for tires, hub caps, balance weights for wheels, air pumps, automobile chains, seats, seat covers, child safety seats, headrests for seats, trailer hitches, luggage racks, ski racks; electric and/or electronic power steering; electronic power-suspension devices for land vehicles; steering locks; horns for land vehicles; windshield wipers and components thereof such as windshield wiper brushes; tank caps with or without locks for land vehicles; vehicle door handles; reversing alarms for vehicles; gearboxes for land vehicles, hydraulic circuits for vehicles; upholstery for vehicles; windshields comprising a screen for viewing data and images; rearview mirrors with video camera, with display, with signal lights; turbines for land vehicles; robotic gearboxes; electric steering-wheel locks
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Vehicles, apparatus for locomotion by land, air or water; Automobiles; automobile engines; transmissions and clutches for land vehicles; brakes and braking installations for vehicles, their command or control parts and devices; brakes for vehicles; safety belts for vehicle passengers; braking systems for vehicles; accessories for vehicle equipping or decoration, namely, hoods, doors, bumpers, steering wheels, windshields, windows, hoods for vehicles, gearboxes, axles, wheels, wheel rims, tires, inner tubes, spikes for tires, hub caps, balance weights for wheels, air pumps, automobile chains, seats, seat covers, child safety seats, headrests for seats, trailer hitches, luggage racks, ski racks; safety belts for passenger vehicle seats; electric and/or electronic power steering; accessories for vehicle equipping or decoration, namely, hoods, doors, bumpers, steering wheels, windshields, windows, hoods for vehicles, gearboxes, axles, wheels, wheel rims, tires, inner tubes for vehicles tires, anti-skid spikes for vehicle tires, hub caps, balance weights for wheels, air pumps for automobiles, driving chains for land vehicles, seats for automobiles, fitted seat covers, child safety seats, headrests for seats, trailer hitches, luggage racks, ski racks; electronic power-suspension devices for land vehicles; electric and/or electronic power steering units for land vehicles; steering locks; electronic power suspension systems for land vehicles; steering wheel locks; windshield wipers and components thereof such as windshield wiper brushes; horns for land vehicles; tank caps with or without locks for land vehicles; windshield wipers being vehicle parts and components thereof, namely, windshield wiper blades; gas tank caps with or without locks for land vehicles; reversing alarms for vehicles; vehicle door handles; gearboxes for land vehicles, hydraulic circuits for vehicles; reversing warning alarms for vehicles; gearboxes for land vehicles; windshields comprising a screen for viewing data and images; hydraulic circuits for vehicles; rearview mirrors with video camera, with display, with signal lights; upholstery for vehicles; automotive windshields comprising a shade screen for viewing data and images; robotic gearboxes; rearview mirrors for automobiles with video camera, display and signal lights; electric steering-wheel locks; turbines for land vehicles; robotic gearboxes for land vehicles; electric steering wheel locksClass 012 for Automobiles; automobile engines; transmissions and clutches for land vehicles; brakes for vehicles; braking systems for vehicles; safety belts for passenger vehicle seats; accessories for vehicle equipping or decoration, namely, hoods, doors, bumpers, steering wheels, windshields, windows, hoods for vehicles, gearboxes, axles, wheels, wheel rims, tires, inner tubes for vehicles tires, anti-skid spikes for vehicle tires, hub caps, balance weights for wheels, air pumps for automobiles, driving chains for land vehicles, seats for automobiles, fitted seat covers, child safety seats, headrests for seats, trailer hitches, luggage racks, ski racks; electric and/or electronic power steering units for land vehicles; electronic power suspension systems for land vehicles; steering wheel locks; horns for land vehicles; windshield wipers being vehicle parts and components thereof, namely, windshield wiper blades; gas tank caps with or without locks for land vehicles; vehicle door handles; reversing warning alarms for vehicles; gearboxes for land vehicles; hydraulic circuits for vehicles; upholstery for vehicles; automotive windshields comprising a shade screen for viewing data and images; rearview mirrors for automobiles with video camera, display and signal lights; turbines for land vehicles; robotic gearboxes for land vehicles; electric steering wheel locks

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Chromium plating of vehicles, window tinting by surface coating, leather staining, stripping, vehicle-body tin plating, cloth dyeing, vehicle recycling, vehicle-body sandblasting; assembly of vehicles
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Chromium plating of vehicles, window tinting by surface coating, leather staining, stripping, vehicle-body tin plating, cloth dyeing, vehicle recycling, vehicle-body sandblasting; Chromium plating of vehicles; assembly of vehicles; car window tinting by surface coating; leather staining; vehicle body tin plating; cloth dyeing; vehicle recycling; vehicle body sandblasting; assembly of vehicles for othersClass 040 for Chromium plating of vehicles; car window tinting by surface coating; leather staining; vehicle body tin plating; cloth dyeing; vehicle recycling; vehicle body sandblasting; assembly of vehicles for others

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Sylvia A. Petrosky of Sylvia A. Petrosky, Attorney at Law, having an address of
723 N. Ridgecliff St. Tallmadge, Ohio 44278
United States
sapetrosky@aol.com
3302171933


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
CABINET FLECHNER, M. David Bilquey
22 avenue de Friedland
F-75008 Paris
FR

Proposed:
Sylvia A. Petrosky of Sylvia A. Petrosky, Attorney at Law, having an address of
723 N. Ridgecliff St. Tallmadge, Ohio 44278
United States
sapetrosky@aol.com
3302171933



SIGNATURE(S)
Response Signature
Signature: /Sylvia A. Petrosky/     Date: 01/29/2018
Signatory's Name: Sylvia A. Petrosky
Signatory's Position: Attorney of Record, Ohio Bar Member

Signatory's Phone Number: 330 217 1933

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

Mailing Address:    Sylvia A. Petrosky
   Sylvia A. Petrosky, Attorney at Law
   723 N. Ridgecliff St.
   Tallmadge, Ohio 44278
        
Serial Number: 79212170
Internet Transmission Date: Mon Jan 29 10:45:05 EST 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2018012910450538
3547-79212170-5104e4c598490acc92cc324cc9
6db0d6162dcebe721b29fb93ab9c4e3870c3cb-N
/A-N/A-20180129100547729336