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. 88099606 PEUGEOT (Stylized and/or with Design, see http://uspto.report/TM/88099606/mark.png) has been amended as follows:

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

In a July 8, 2019 Office action, the Examining Attorney refused registration of the instant application based on the existence of Reg. No. 4,333,233 - STELLAB PSA PEUGEOT CITROEN & Design in the name of Peugeot Citroen Automobiles SA.  Reg. No. 4,333,233 should lapse in the near future because no Section 71 declaration was filed, and as such, and should therefore no longer stand as an obstacle to registration of the instant application.  Applicant is also amending the description of goods and services as requested by the Examining Attorney.  Having addressed all of the issues raised by the Examining Attorney in the July 8, 2019 Office action, Applicant respectfully requests that the instant application be passed to publication.  If there are any questions, please contact the undersigned.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Engineering services, namely, evaluations, energy efficiency estimates and scientific and technological research; design and development of computer hardware and software; research and development of new products for third parties; technical project study, namely, research in the fields of vehicle engineering, tracking, efficiency, monitoring and design; architectural services; design of interior decor; developing and designing software; software installation; computer services, namely, remote and on-site management of software for others; software updating; renting software; computer programming; computer software consulting; data and computer program conversion other than physical conversion; data and document conversion from physical to electronic media; vehicle roadworthiness testing; graphic design services; industrial design services; authenticating art work; industrial research services in the field of renewable energy; design of new products, namely, vehicles, using ecology and new technologies; testing and research services in the field of vehicles pollution control; vehicles quality control services for others; technological consulting services on renewable energy resources; consulting services on renewable energy research
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.

Proposed:
Tracked Text Description: Engineering services, namely, evaluations, energy efficiency estimates and scientific and technological research; Engineering services, namely, evaluations, energy efficiency estimates and scientific and technological research all in the field of energy efficiency; design and development of computer hardware and software; research and development of new products for third parties; technical project study, namely, research in the fields of vehicle engineering, tracking, efficiency, monitoring and design; architectural services; design of interior decor; developing and designing software; software installation; computer software installation; computer services, namely, remote and on-site management of software for others; computer services, namely, remote and on-site management of information technology systems comprising software applications for others; software updating; renting software; computer programming; computer software consulting; data and computer program conversion other than physical conversion; data and document conversion from physical to electronic media; vehicle roadworthiness testing; graphic design services; industrial design services; authenticating art work; industrial research services in the field of renewable energy; design of new products, namely, vehicles, using ecology and new technologies; design of new products for others, namely, vehicles, using ecology and new technologies; testing and research services in the field of vehicles pollution control; vehicles quality control services for others; technological consulting services on renewable energy resources; consulting services on renewable energy researchClass 042 for Engineering services, namely, evaluations, energy efficiency estimates and scientific and technological research all in the field of energy efficiency; design and development of computer hardware and software; research and development of new products for third parties; technical project study, namely, research in the fields of vehicle engineering, tracking, efficiency, monitoring and design; architectural services; design of interior decor; developing and designing software; computer software installation; computer services, namely, remote and on-site management of information technology systems comprising software applications for others; software updating; renting software; computer programming; computer software consulting; data and computer program conversion other than physical conversion; data and document conversion from physical to electronic media; vehicle roadworthiness testing; graphic design services; industrial design services; authenticating art work; industrial research services in the field of renewable energy; design of new products for others, namely, vehicles, using ecology and new technologies; testing and research services in the field of vehicles pollution control; vehicles quality control services for others; technological consulting services on renewable energy resources; consulting services on renewable energy research
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.

The applicant hereby appoints Jennifer L. Dean. Other appointed attorneys are Robert Cannuscio, Brian Coleman, Melissa Dillenbeck, Darren Cahr, Diane J. Mason, Tore T. DeBella, Jennifer T. Criss, Kelly M. Horein and Renato Perez. Jennifer L. Dean of Drinker Biddle & Reath LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Suite 1100
      1500 K Street, N.W.
      Washington, District of Columbia 20005-1209
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 581736.

The phone number is 202-842-8800.

The fax number is 202-842-8465.

The email address is dctrademarks@dbr.com

Jennifer L. Dean submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: . , is located at

      
      ,

The applicants proposed correspondence information: Jennifer L. Dean. Jennifer L. Dean of Drinker Biddle & Reath LLP, is located at

      Suite 1100
      1500 K Street, N.W.
      Washington, District of Columbia 20005-1209
      United States
The docket/reference number is 581736.

The phone number is 202-842-8800.

The fax number is 202-842-8465.

The email address is dctrademarks@dbr.com; tmdocket@dbr.com

SIGNATURE(S)
Response Signature
Signature: /tore t. debella/     Date: 12/19/2019
Signatory's Name: Tore T. DeBella
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 202-842-8800

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    
   
   
   
   ,
Mailing Address:    Jennifer L. Dean
   Drinker Biddle & Reath LLP
   Suite 1100
   1500 K Street, N.W.
   Washington, District of Columbia 20005-1209
        
Serial Number: 88099606
Internet Transmission Date: Thu Dec 19 14:37:07 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191219143707557
043-88099606-700ae2eddeb4bf9962171f7b674
91a9dd89492b27ba0a3ed9962d833e6cba1-N/A-
N/A-20191219114458090874