To the Commissioner for Trademarks:

In response to the Office Action issued on December 15, 2018, Applicant respectfully requests that the Examining Attorney withdraw his refusal to register Applicant’s PEUGEOT & Design mark, Ser. No. 88/099,662 (“Applicant’s Mark”) on the ground that it is likely to be confused with the following mark registered by Peugeot Citroën Automobiles SA: Reg. No. 4,333,233 – STELLAB PSA PEUGEOT CITROEN (the “Cited Mark”). 

Attached as Exhibit A is a letter of consent dated May 2, 2019, signed by Peugeot Automobiles S.A. (a/k/a PSA Automobiles), formerly known as Peugeot Citroën Automobiles SA (“Registrant”), the owner of Reg. No. 4,333,233.  The attached letter shows that Registrant has consented to Applicant’s use and registration of Applicant’s Mark for the goods and services listed in the instant application.  In essence, because Registrant and Applicant are sister corporations, both owned 99% by Peugeot S.A., and because both Registrant and Applicant are part of the Peugeot group of companies identified by the trade name PSA PEUGEOT CITROËN, consumers will view all users of PEUGEOT marks in the automotive industry as constituting a single source.  Thus, because the applied-for goods and services in Ser. Nos. 88/099,606 and 88/099,662 relate to the automotive industry, and the PEUGEOT mark is well-known in that industry, consumers will immediately recognize these services as emanating from the PEUGEOT group of companies.  As a result, there is no risk of confusion, and the Examining Attorney should withdraw his refusal to register Applicant’s Mark. 

In cases such as this, examining attorneys are instructed to give “great weight” to a consent agreement.  T.M.E.P. § 1207.01(d)(viii).  As noted by Judge Rich in In re National Distillers and Chem. Corp., 132 U.S.P.Q. 271, 277 (C.C.P.A. 1962) (Rich, J., concurring), the role of the United States Patent and Trademark Office (“PTO”) is not to “deny registration if it feels there is, by its independent determination, any likelihood of confusion of any kind as between the mark sought to be registered and the prior registration, without regard to the desires, opinions, or agreements of the owner of the prior registration. . . .”  Id.  Rather, the PTO “must count on the self-interest of trademark owners to do that.”  In re Four Seasons Hotels Ltd., 26 U.S.P.Q.2d 1071, 1072 (Fed. Cir. 1993) (quoting In re National Distillers and Chem. Corp., 132 U.S.P.Q at 279). 

The United States Court of Appeals for the Federal Circuit has expressly recognized that it is improper for the PTO to substitute its judgment for that of the mark owners.  In Bongrain Int’l Corp. v. Delice de France, Inc., 1 U.S.P.Q.2d 1775 (Fed. Cir. 1987), the Federal Circuit stated:

We have often said, in trademark cases involving agreements reflecting parties’ views on the likelihood of confusion in the marketplace, that they are in a much better position to know the real life situation than bureaucrats or judges and therefore such agreements may, depending on the circumstances, carry great weight, as was held in DuPont.  Here, the board appears effectively to have ignored the views and conduct of the parties merely because it harbored a different view from the parties on likelihood of confusion … It is possible to preserve the registrations, as the parties originally agreed to do, by accepting their reasonable appraisal of marketplace conditions, and agreeing with them that confusion does not and is not likely to exist.  Section 2(d) should be construed in pari materia with the rest of the Act and the historical policies known to underlie it.  Those policies were not served by the independent, misguided efforts of the board to take it upon itself to prove facts, quite unnecessarily and by reasoning entirely on its own, to establish a case of likelihood of confusion when not asked to do so.

Id. at 1778-79.  The Bongrain rationale applies here.  The parties have carefully assessed the conditions in the marketplace, and have determined that the coexistence of the respective marks is unlikely to confuse purchasers.  The PTO should therefore accept the parties’ determination and find that confusion between Applicant’s Mark and the Cited Mark does not and is not likely to exist.