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. 88099662 PEUGEOT (Stylized and/or with Design, see http://uspto.report/TM/88099662/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 012 for Vehicles, namely, cars, trucks, vans, motor scooters, mopeds, bicycles, electric bicycles and motorcycles; engines for land vehicles, gearboxes for land vehicles, body in the nature of structural parts for land vehicles, chassis, steering wheels, shock absorbers, transmission mechanisms for land vehicles, brakes, wheels, wheel rims, wheel covers, seats, anti-theft alarms, back-up warning alarms, fitted seat covers, seat headrests, rear-view mirrors, steering wheels, windshield wipers, torsion bars, fuel tank filler caps, bumper stoppers, tow trailer hitches, rack trunk bags for bicycles and motorcycles, ski racks, side window deflectors, doors, sunroofs, windows
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 093699137 registered 12/16/2009 with a renewal date of __________ and an expiration date of 12/16/2019 ], 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:
Tracked Text Description: Vehicles, namely, cars, trucks, vans, motor scooters, mopeds, bicycles, electric bicycles and motorcycles; engines for land vehicles, gearboxes for land vehicles, body in the nature of structural parts for land vehicles, chassis, steering wheels, shock absorbers, transmission mechanisms for land vehicles, brakes, wheels, wheel rims, wheel covers, seats, anti-theft alarms, back-up warning alarms, fitted seat covers, seat headrests, rear-view mirrors, steering wheels, windshield wipers, torsion bars, fuel tank filler caps, bumper stoppers, tow trailer hitches, rack trunk bags for bicycles and motorcycles, ski racks, side window deflectors, doors, sunroofs, windows; engines for land vehicles, gearboxes for land vehicles, body in the nature of structural parts for land vehicles, vehicle chassis, vehicle steering wheels, shock absorbers for automobiles, transmission mechanisms for land vehicles, brakes for vehicles, vehicle wheels, wheel rims, wheel covers, vehicle seats, anti-theft alarms for vehicles, back-up warning alarms for vehicles, fitted vehicle seat covers, vehicle seat headrests, rear-view mirrors, steering wheels, windshield wipers for vehicles, torsion bars for vehicles, vehicle fuel tank filler caps, automobile bumper guards, tow trailer hitches, rack trunk bags for bicycles and motorcycles, ski racks for vehicles, side window deflectors, doors for vehicles, automobile sunroofs, vehicle windowsClass 012 for Vehicles, namely, cars, trucks, vans, motor scooters, mopeds, bicycles, electric bicycles and motorcycles; engines for land vehicles, gearboxes for land vehicles, body in the nature of structural parts for land vehicles, vehicle chassis, vehicle steering wheels, shock absorbers for automobiles, transmission mechanisms for land vehicles, brakes for vehicles, vehicle wheels, wheel rims, wheel covers, vehicle seats, anti-theft alarms for vehicles, back-up warning alarms for vehicles, fitted vehicle seat covers, vehicle seat headrests, rear-view mirrors, steering wheels, windshield wipers for vehicles, torsion bars for vehicles, vehicle fuel tank filler caps, automobile bumper guards, tow trailer hitches, rack trunk bags for bicycles and motorcycles, ski racks for vehicles, side window deflectors, doors for vehicles, automobile sunroofs, vehicle windows
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 093699137 registered 12/16/2009 with a renewal date of __________ and an expiration date of 12/16/2019 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Banking and financial services, namely, loan services; credit and leasing services, hire purchase financing services; underwriting insurances for vehicles; underwriting life insurances; underwriting accident insurances; underwriting accidental death insurance; insurance brokerage; consultation, information and advice in matters of insurances; credit card payment processing services and other means of electronic payments processing through prepaid cards used for the purchase of fuels and lubricants, for the performance of maintenance and repair of vehicles; arranging of financial loans, financial services in the domain of leasing and rental of vehicles, namely, vehicle rental financing, financial guarantee services being sureties for vehicles; arranging of financial loans for the repair of vehicles; third-party extended warranty services for vehicles
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 093699137 registered 12/16/2009 with a renewal date of __________ and an expiration date of 12/16/2019 ], 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:
Tracked Text Description: Banking and financial services, namely, loan services; credit and leasing services, hire purchase financing services; credit and leasing services for vehicles, hire purchase financing services; underwriting insurances for vehicles; underwriting life insurances; underwriting accident insurances; underwriting accidental death insurance; insurance brokerage; consultation, information and advice in matters of insurances; credit card payment processing services and other means of electronic payments processing through prepaid cards used for the purchase of fuels and lubricants, for the performance of maintenance and repair of vehicles; arranging of financial loans, financial services in the domain of leasing and rental of vehicles, namely, vehicle rental financing, financial guarantee services being sureties for vehicles; arranging of financial loans for the repair of vehicles; third-party extended warranty services for vehiclesClass 036 for Banking and financial services, namely, loan services; credit and leasing services for vehicles, hire purchase financing services; underwriting insurances for vehicles; underwriting life insurances; underwriting accident insurances; underwriting accidental death insurance; insurance brokerage; consultation, information and advice in matters of insurances; credit card payment processing services and other means of electronic payments processing through prepaid cards used for the purchase of fuels and lubricants, for the performance of maintenance and repair of vehicles; arranging of financial loans, financial services in the domain of leasing and rental of vehicles, namely, vehicle rental financing, financial guarantee services being sureties for vehicles; arranging of financial loans for the repair of vehicles; third-party extended warranty services for vehicles
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 093699137 registered 12/16/2009 with a renewal date of __________ and an expiration date of 12/16/2019 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Transportation, namely, vehicle renting services, vehicle loaning or replacement services, assistance in case of breakdown of vehicles in the nature of towing, rental of garages and parking spaces
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 093699137 registered 12/16/2009 with a renewal date of __________ and an expiration date of 12/16/2019 ], 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:
Tracked Text Description: Transportation, namely, vehicle renting services, vehicle loaning or replacement services, assistance in case of breakdown of vehicles in the nature of towing, rental of garages and parking spaces; Transportation, namely, vehicle renting services, vehicle loaning or replacement in the nature of loaner car services, assistance in case of breakdown of vehicles in the nature of towing, rental of garages and parking spacesClass 039 for Transportation, namely, vehicle renting services, vehicle loaning or replacement in the nature of loaner car services, assistance in case of breakdown of vehicles in the nature of towing, rental of garages and parking spaces
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 093699137 registered 12/16/2009 with a renewal date of __________ and an expiration date of 12/16/2019 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

The applicant's current attorney 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
      US
The docket/reference number is 465397.

The phone number is 202-842-8800.

The fax number is 202-842-8465.

The email address is dctrademarks@dbr.com

The applicants proposed attorney information: 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
The docket/reference number is 581737.

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: 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
      US
The docket/reference number is 465397.

The phone number is 202-842-8800.

The fax number is 202-842-8465.

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

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 581737.

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:    JENNIFER L. DEAN
   DRINKER BIDDLE & REATH LLP
   SUITE 1100
   1500 K STREET, N.W.
   WASHINGTON, District of Columbia 20005-1209
Mailing Address:    Jennifer L. Dean
   Drinker Biddle & Reath LLP
   Suite 1100
   1500 K Street, N.W.
   Washington, District of Columbia 20005-1209
        
Serial Number: 88099662
Internet Transmission Date: Thu Dec 19 14:32:47 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191219143247805
164-88099662-70063b6318596c68959b2893f39
d1f7658836ff23aedca6ff1037ea36b455ffc5-N
/A-N/A-20191219110213168288