TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88175799 DUREX (Stylized and/or with Design, see http://uspto.report/TM/88175799/mark.png) has been amended as follows:
FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of United Kingdom registration number UK00003345912 registered 03/15/2019, with a renewal date of __________ and an expiration date of 10/16/2028, and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_3814038148-111628328_._DUREX___Red_Logo_-_UK00003345912.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Moisturising preparations for the skin; essential oils; massage oils; massage creams; massage gels, not for medical purposes; non-medicated cleansing preparations for personal use on and care of intimate parts of the body
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [United Kingdom application number 3345912 filed 10/16/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 003 for Moisturising preparations for the skin; essential oils; massage oils; massage creams; massage gels, not for medical purposes; non-medicated cleansing preparations for personal use on and care of intimate parts of the body
Deleted Filing Basis: 1(b); and 44(d).
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ United Kingdom registration number UK00003345912 registered 03/15/2019 with a renewal date of __________ and an expiration date of 10/16/2028 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-3814038148-111628328_._DUREX___Red_Logo_-_UK00003345912.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Contraceptive preparations and substances; spermicidal gels, liquids and creams; hygienic lubricants and disinfectants for use in the area of the vagina, penis and anus; personal lubricants; topical lubricants, gels, liquids and creams for sexual health and enhancing sexual performance
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [United Kingdom application number 3345912 filed 10/16/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 005 for Contraceptive preparations and substances; spermicidal gels, liquids and creams; hygienic lubricants and disinfectants for use in the area of the vagina, penis and anus; personal lubricants; topical lubricants, gels, liquids and creams for sexual health and enhancing sexual performance
Deleted Filing Basis: 1(b); and 44(d).
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ United Kingdom registration number UK00003345912 registered 03/15/2019 with a renewal date of __________ and an expiration date of 10/16/2028 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU1-3814038148-111628328_._DUREX___Red_Logo_-_UK00003345912.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Condoms; contraceptives, hygienic and prophylactic devices, namely, contraceptive apparatus; adult sexual stimulation aids, marital aids and sex toys, namely, vibrators and vibrating rings, penis rings, rings for genital stimulation, benwa balls, butt plugs, artificial penises and tongue rings specifically adapted for sexual stimulation
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [United Kingdom application number 3345912 filed 10/16/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 010 for Condoms; contraceptives, hygienic and prophylactic devices, namely, contraceptive apparatus; adult sexual stimulation aids, marital aids and sex toys, namely, vibrators and vibrating rings, penis rings, rings for genital stimulation, benwa balls, butt plugs, artificial penises and tongue rings specifically adapted for sexual stimulation
Deleted Filing Basis: 1(b); and 44(d).
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ United Kingdom registration number UK00003345912 registered 03/15/2019 with a renewal date of __________ and an expiration date of 10/16/2028 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU2-3814038148-111628328_._DUREX___Red_Logo_-_UK00003345912.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3


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 amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AAU 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 application or AAU filing date; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services/collective membership organization in the application or AAU; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over use of the mark in commerce as of the application or AAU filing date; 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: for a trademark or service mark application, the applicant believes 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; the signatory is properly authorized to execute the declaration on behalf of the applicant; 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 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: /mark lerner/    Date: 04/23/2019
Signatory's Name: Mark Lerner
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 2124048714

Response Suspension Inquiry Signature
Signature: /mark lerner/     Date: 04/23/2019
Signatory's Name: Mark Lerner
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 2124048714

        
Serial Number: 88175799
Internet Transmission Date: Tue Apr 23 16:18:33 EDT 2019
TEAS Stamp: USPTO/RSI-XX.XXX.XX.XXX-2019042316183320
5190-88175799-6207cd034669e469b392c1fbda
f71b995bf645efdf2f6fc3628614b41a772c0f7-
N/A-N/A-20190416111628328433