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 1966 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
Voluntary Amendment
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88045349 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88045349/mark.png |
LITERAL ELEMENT |
EARTH CUP |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
Color is not claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the word EARTH followed by the word CUP. The U in cup is stylized as an open cup with a stem sitting within the cup. The
stem has a single leaf on it. |
GOODS AND/OR SERVICES SECTION (021)(current) |
INTERNATIONAL CLASS |
021 |
DESCRIPTION |
Cardboard cups made without Polyethylene for single use; Cardboard cups; Cups of paper |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
184432088 |
FOREIGN REGISTRATION
COUNTRY |
France |
FOREIGN REGISTRATION
DATE |
02/26/2018 |
GOODS AND/OR SERVICES SECTION (021)(proposed) |
INTERNATIONAL CLASS |
021 |
DESCRIPTION |
Cardboard cups made without Polyethylene for single use; Cardboard cups; Cups of paper |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
184432088 |
FOREIGN APPLICATION COUNTRY |
France |
FOREIGN FILING DATE |
02/26/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
184432088 |
FOREIGN REGISTRATION
COUNTRY |
France |
FOREIGN REGISTRATION
DATE |
06/22/2018 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU0-9692201213-125201492_._R31067FRCE.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\453\88045349\xml4\PRA0002.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\880\453\88045349\xml4\PRA0003.JPG |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Retail services in relation with cardboards cups, cups of paper; Wholesale services in relation with cardboards cups, cups of paper;
Online retail services in relation with cardboards cups, cups of paper |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
184432088 |
FOREIGN REGISTRATION
COUNTRY |
France |
FOREIGN REGISTRATION
DATE |
02/26/2018 |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Retail services in relation with cardboards cups, cups of paper; Wholesale services in relation with cardboards cups, cups of paper;
Online retail services in relation with cardboards cups, cups of paper |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
184432088 |
FOREIGN APPLICATION COUNTRY |
France |
FOREIGN FILING DATE |
02/26/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
184432088 |
FOREIGN REGISTRATION
COUNTRY |
France |
FOREIGN REGISTRATION
DATE |
06/22/2018 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU1-9692201213-125201492_._R31067FRCE.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\453\88045349\xml4\PRA0004.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\880\453\88045349\xml4\PRA0005.JPG |
GOODS AND/OR SERVICES SECTION (040)(current) |
INTERNATIONAL CLASS |
040 |
DESCRIPTION |
Customized printing services of cardboards cups or cups of paper |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
184432088 |
FOREIGN REGISTRATION
COUNTRY |
France |
FOREIGN REGISTRATION
DATE |
02/26/2018 |
GOODS AND/OR SERVICES SECTION (040)(proposed) |
INTERNATIONAL CLASS |
040 |
DESCRIPTION |
Customized printing services of cardboards cups or cups of paper |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
184432088 |
FOREIGN APPLICATION COUNTRY |
France |
FOREIGN FILING DATE |
02/26/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
184432088 |
FOREIGN REGISTRATION
COUNTRY |
France |
FOREIGN REGISTRATION
DATE |
06/22/2018 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU2-9692201213-125201492_._R31067FRCE.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\453\88045349\xml4\PRA0006.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\880\453\88045349\xml4\PRA0007.JPG |
ADDITIONAL STATEMENTS SECTION |
MISCELLANEOUS STATEMENT |
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 Voluntary Amendment requesting the Application be amended to include a claim of priority to the currently referenced French Application and correct the registration date
(which is shown on the certified copy of the French Registration submitted with the original Application and resubmitted with this amendment). In support of this Amendment, 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. 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
Petition to the Director 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. |
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 |
RESPONSE 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 13:01:16 EDT 2018 |
TEAS STAMP |
USPTO/PRA-XX.XX.XXX.XXX-2
0181025130116067066-88045
349-6103b1eb0c4262963a8a6
3f2a9b765721af47f48516f1e
fcb435345b4973d3bd7b-N/A-
N/A-20181025125201492250 |
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 1966 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
Voluntary Amendment
To the Commissioner for Trademarks:
Application serial no.
88045349 EARTH CUP (Stylized and/or with Design, see http://uspto.report/TM/88045349/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Cardboard cups made without Polyethylene for single use; Cardboard cups; Cups of paper
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 184432088 registered 02/26/2018
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
For a trademark or service mark application: As of the application
filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services.
For a collective trademark,
collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization.
For a certification mark application:
As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in
connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote
recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Proposed: Class 021 for Cardboard cups made without Polyethylene for single use; Cardboard cups; Cups of paper
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise
legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the
goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ France application number 184432088 filed 02/26/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184432088 registered 06/22/2018
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
For a trademark or service mark application: As of the application
filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services.
For a collective trademark,
collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization.
For a certification mark application:
As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in
connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote
recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-9692201213-125201492_._R31067FRCE.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail services in relation with cardboards cups, cups of paper; Wholesale services in relation with cardboards cups, cups of paper; Online retail services in relation
with cardboards cups, cups of paper
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 184432088 registered 02/26/2018
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
For a trademark or service mark application: As of the application
filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services.
For a collective trademark,
collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization.
For a certification mark application:
As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in
connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote
recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Proposed: Class 035 for Retail services in relation with cardboards cups, cups of paper; Wholesale services in relation with cardboards cups, cups of paper; Online retail services in relation
with cardboards cups, cups of paper
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise
legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the
goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ France application number 184432088 filed 02/26/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184432088 registered 06/22/2018
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
For a trademark or service mark application: As of the application
filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services.
For a collective trademark,
collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization.
For a certification mark application:
As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in
connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote
recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-9692201213-125201492_._R31067FRCE.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Customized printing services of cardboards cups or cups of paper
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 184432088 registered 02/26/2018
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
For a trademark or service mark application: As of the application
filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services.
For a collective trademark,
collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization.
For a certification mark application:
As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in
connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote
recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Proposed: Class 040 for Customized printing services of cardboards cups or cups of paper
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise
legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the
goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ France application number 184432088 filed 02/26/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184432088 registered 06/22/2018
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
For a trademark or service mark application: As of the application
filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services.
For a collective trademark,
collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization.
For a certification mark application:
As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in
connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote
recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-9692201213-125201492_._R31067FRCE.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
ADDITIONAL STATEMENTS
Miscellaneous Statement
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 Voluntary Amendment requesting
the Application be amended to include a claim of priority to the currently referenced French Application and correct the registration date (which is shown on the certified copy of the French
Registration submitted with the original Application and resubmitted with this amendment). In support of this Amendment, 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. 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 Petition to the Director 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.
SIGNATURE(S)
Declaration Signature
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful
false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or
allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this
submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally
believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in
connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of
the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective
membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over
the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the
goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.
To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either
in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion
or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C.
§§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark
application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the
mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or
certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention,
and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of
the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise
or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other
persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be
likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
Signature: /Sherry L. Rollo/ Date: 10/25/2018
Signatory's Name: Sherry L. Rollo
Signatory's Position: Attorney of Record, Illinois Bar Member
Signatory's Phone Number: 3126373000
Voluntary Amendment Signature
Signature: /Sherry L. Rollo/ Date: 10/25/2018
Signatory's Name: Sherry L. Rollo
Signatory's Position: Attorney of Record, Illinois Bar Member
Signatory's Phone Number: 3126373000
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.
Serial Number: 88045349
Internet Transmission Date: Thu Oct 25 13:01:16 EDT 2018
TEAS Stamp: USPTO/PRA-XX.XX.XXX.XXX-2018102513011606
7066-88045349-6103b1eb0c4262963a8a63f2a9
b765721af47f48516f1efcb435345b4973d3bd7b
-N/A-N/A-20181025125201492250