| 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 No Form Number (Rev 01/2012) |
| OMB No. 0651-0054 (Exp 12/31/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88045349 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88045349/mark.png |
| LITERAL ELEMENT | EARTH CUP |
| FORM TEXT | |
|
Honorable Deputy Commissioner: C.E.E. Compagnie Europeenne Des Emballages Robert Schisler (“Applicant”) is the Applicant for U.S. Serial No. 88/045,349 (“the Application”) respectfully submits this Petition to the Director pursuant to 37 CFR §2.146 requesting the Application be amended to include a claim of priority to the currently referenced French Application. In support of this Petition, Applicant states as follows. Factual Background 1. On July 19, 2018, Applicant submitted a U.S. Trademark Application for the mark EARTH CUP (stylized) in International Classes 21, 35, and 40. The Application was assigned U.S. Serial No. 88/045,349. 2. The Application listed Section 1(b) and Section 44(e) as a filing basis for the U.S. Application. The claim for a Section 44(e) basis was based on French Trademark Registration No. 184432088 which was filed on February 26, 2018 (February 26, 2018 was incorrectly entered into the application as the registration date. However, as shown on the French Registration submitted with the application February 26, 2018 is the filing date of the French Application) and registered on June 22, 2018. (See attached Exhibit A). 3. Although the Application was filed within six (6) months of the filing date of the French application, the U.S. Application inadvertently did not include a specific claim to priority to the French application. 4. A certified copy of the French Registration showing the application date was filed with the original U.S. Application. 5. The Application is currently pending and according to TSDR has not yet been assigned to an Examiner. The Statute Permits A Priority Claim 15 U.S.C. §1126 states that: An application for registration of a mark under sections 1051, 1053, 1054, or 1091 of this title or under subsection (e) of this section filed by a person described in subsection (b) of this section who has previously duly filed an application for registration of the same mark in one of the countries described in subsection (b) of this section shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, That— (1) the application in the United States is filed within 6 months from the date on which the application was first filed in the foreign country; (2) the application conforms as nearly as practicable to the requirements of this chapter, including a statement that the applicant has a bona fide intention to use the mark in commerce; (3) the rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on an application filed under this subsection; (4) nothing in this subsection shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country unless the registration is based on use in commerce. The Application, as filed, meets each requirement of the statute. The TMEP 1003.2 states that a priority claim must be filed within six (6) months of foreign filing and cites to 15 U.S.C. §1126(d)(1). However, here, the Applicant is not seeking to amend the basis for the filing or submit new evidence supporting a priority claim. In this case, the foreign registration was submitted at the time of the application, the application referring to the foreign registration was filed within the six (6) months of the filing of the foreign application, and the Application provided a statement that the Applicant had a bona fide intention to use the mark in commerce. Requirements 3 and 4 are not relevant to the facts of this case. Therefore, Applicant has met the statutory requirements for a priority claim. The Trademark Trial and Appeal Board (“TTAB”) has considered motions to amend and/or reinstate claims of priority or amend filing basis during post-registration proceedings. In these cases, the TTAB stated that “general principles of fairness and equity” are applicable. See e.g., Elexis Corp. v. Sunwatch, Inc., 27 USPQ2d 1798 (TTAB 1993); Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241 (TTAB 1989). While, the TTAB was reluctant to permit an amendment with respect to the priority claim after publication of the U.S. application; here, the Application is not published and has not even been subject to examination. In this case, there has been no official notice to the public detailing a date of first use or information with respect to a foreign application. Because all information necessary for a priority claim was provided to the Trademark Office at the time that the Application was filed and the Application was filed within the appropriate statutory time period justice requires that the Application receive the priority claim. Further, the Application is still in the earliest stages of examination. The Application has been published. In fact, the Application has not even been assigned to an examiner. Therefore, no third-party will be prejudiced by amending the Application to include the priority claim. In analogous situations, The United States Patent and Trademark Office has procedures for accepting a delayed claim for the benefit of a prior-filed nonprovisional application, or of an international design application designating the United States when the delay was unintentional between the date the benefit claim was due and the date the benefit claim was filed. Here, there was no intentional delay in filing a priority claim, and indeed Applicant provided all pertinent information to the Trademark Office. Applicant has also filed a Voluntary Amendment requesting the priority claim be added to the Application. Therefore, for the foregoing reasons, Applicant respectfully requests that the Application be amended to include a priority claim to French Trademark Registration No. 184432088 which was filed on February 26, 2018. |
|
| ATTACHMENT(S) | |
| ORIGINAL PDF FILE | R31067FRCE_2018925133781.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\453\88045349\xml3\PDR0002.jpg |
| \\TICRS\EXPORT17\IMAGEOUT17\880\453\88045349\xml3\PDR0003.jpg | |
| PAYMENT SECTION | |
| NUMBER OF CLASSES | 1 |
| PETITION FEE | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Sherry L. Rollo/ |
| SIGNATORY'S NAME | Sherry L. Rollo |
| SIGNATORY'S POSITION | Attorney of Record, Illinois Bar Member |
| SIGNATORY'S PHONE NUMBER | 3126373000 |
| DATE SIGNED | 10/25/2018 |
| SUBMISSION SIGNATURE | /Sherry L. Rollo/ |
| SIGNATORY'S NAME | Sherry L. Rollo |
| SIGNATORY'S POSITION | Attorney of Record, Illinois Bar Member |
| SIGNATORY'S PHONE NUMBER | 3126373000 |
| DATE SIGNED | 10/25/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Oct 25 13:06:49 EDT 2018 |
| TEAS STAMP | USPTO/PDR-XX.XXX.XX.XX-20 181025130649478543-880453 49-20181025130240492168-D A-15594-20181025130240492 168 |
| 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 No Form Number (Rev 01/2012) |
| OMB No. 0651-0054 (Exp 12/31/2020) |
Honorable Deputy Commissioner:
C.E.E. Compagnie Europeenne Des Emballages Robert Schisler (“Applicant”) is the Applicant for U.S. Serial No. 88/045,349 (“the Application”) respectfully submits this Petition to the Director pursuant to 37 CFR §2.146 requesting the Application be amended to include a claim of priority to the currently referenced French Application. In support of this Petition, Applicant states as follows.
Factual Background
1. On July 19, 2018, Applicant submitted a U.S. Trademark Application for the mark EARTH CUP (stylized) in International Classes 21, 35, and 40. The Application was assigned U.S. Serial No. 88/045,349.
2. The Application listed Section 1(b) and Section 44(e) as a filing basis for the U.S. Application. The claim for a Section 44(e) basis was based on French Trademark Registration No. 184432088 which was filed on February 26, 2018 (February 26, 2018 was incorrectly entered into the application as the registration date. However, as shown on the French Registration submitted with the application February 26, 2018 is the filing date of the French Application) and registered on June 22, 2018. (See attached Exhibit A).
3. Although the Application was filed within six (6) months of the filing date of the French application, the U.S. Application inadvertently did not include a specific claim to priority to the French application.
4. A certified copy of the French Registration showing the application date was filed with the original U.S. Application.
5. The Application is currently pending and according to TSDR has not yet been assigned to an Examiner.
The Statute Permits A Priority Claim
15 U.S.C. §1126 states that:
An application for registration of a mark under sections 1051, 1053, 1054, or 1091 of this title or under subsection (e) of this section filed by a person described in subsection (b) of this section who has previously duly filed an application for registration of the same mark in one of the countries described in subsection (b) of this section shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, That—
(1) the application in the United States is filed within 6 months from the date on which the application was first filed in the foreign country;
(2) the application conforms as nearly as practicable to the requirements of this chapter, including a statement that the applicant has a bona fide intention to use the mark in commerce;
(3) the rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on an application filed under this subsection;
(4) nothing in this subsection shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country unless the registration is based on use in commerce.
The Application, as filed, meets each requirement of the statute. The TMEP 1003.2 states that a priority claim must be filed within six (6) months of foreign filing and cites to 15 U.S.C. §1126(d)(1). However, here, the Applicant is not seeking to amend the basis for the filing or submit new evidence supporting a priority claim. In this case, the foreign registration was submitted at the time of the application, the application referring to the foreign registration was filed within the six (6) months of the filing of the foreign application, and the Application provided a statement that the Applicant had a bona fide intention to use the mark in commerce. Requirements 3 and 4 are not relevant to the facts of this case. Therefore, Applicant has met the statutory requirements for a priority claim.
The Trademark Trial and Appeal Board (“TTAB”) has considered motions to amend and/or reinstate claims of priority or amend filing basis during post-registration proceedings. In these cases, the TTAB stated that “general principles of fairness and equity” are applicable. See e.g., Elexis Corp. v. Sunwatch, Inc., 27 USPQ2d 1798 (TTAB 1993); Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241 (TTAB 1989). While, the TTAB was reluctant to permit an amendment with respect to the priority claim after publication of the U.S. application; here, the Application is not published and has not even been subject to examination. In this case, there has been no official notice to the public detailing a date of first use or information with respect to a foreign application.
Because all information necessary for a priority claim was provided to the Trademark Office at the time that the Application was filed and the Application was filed within the appropriate statutory time period justice requires that the Application receive the priority claim. Further, the Application is still in the earliest stages of examination. The Application has been published. In fact, the Application has not even been assigned to an examiner. Therefore, no third-party will be prejudiced by amending the Application to include the priority claim.
In analogous situations, The United States Patent and Trademark Office has procedures for accepting a delayed claim for the benefit of a prior-filed nonprovisional application, or of an international design application designating the United States when the delay was unintentional between the date the benefit claim was due and the date the benefit claim was filed. Here, there was no intentional delay in filing a priority claim, and indeed Applicant provided all pertinent information to the Trademark Office.
Applicant has also filed a Voluntary Amendment requesting the priority claim be added to the Application.
Therefore, for the foregoing reasons, Applicant respectfully requests that the Application be amended to include a priority claim to French Trademark Registration No. 184432088 which was filed on February 26, 2018.
FORM FILE NAME(S)
