TEAS Petition to Revive Abandon Applic

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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

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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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 88212584 GALA (Stylized and/or with Design, see http://uspto.report/TM/88212584/mark.png) has been amended as follows: PETITION Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

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

This document is filed in response to the Examiner’s non-final Office Action issued March 11, 2019.

 

PRIOR FILED APPLICATION ADVISORY 

 

The Examiner has noted prior filed Appl. No. 87258477 for GALA SCIENTIFIQUE LABORATOIRES as a potential obstacle if it matures to registration. However, the prior Appl. No. 87258477 is facing refusal. Therefore, Applicant respectfully requests suspension of the subject application pending the outcome of the cited application.

 

NON-DISTINCTIVE PRODUCT PACKAGING REFUSAL

 

The Examiner has refused registration because the mark consists of a non-distinctive configuration of packaging for the goods that is not registrable on the Principal Register.

 

However, please note that Applicant is not seeking protection for the configuration of the configuration. Therefore, with this response Applicant includes a disclaimer statement  that it is not claiming rights in the three-dimensional configuration of the bottle by this application.

 

For easy reference, please see the attached report (Exhibit A) of other perfume bottles which have registered.

  

As such, Applicant respectfully requests withdrawal of the “non-distinctive product packaging” refusal.

 

AMENDED MARK DESCRIPTION AND COLOR CLAIM REQUIRED 

 

Applicant hereby submits following  amended description:

 

The mark consists of the three-dimensional configuration of a transparent bottle for the goods with the phrase "GALA" in white located on the front of said bottle. The bottle has a multi-faceted, rectangular oblong stopper with a flat top and bottom and rounded edges. The base of the stopper is silver. The container consists of a rounded top and a hexagonal bottom, with six carved out facets, each with a rounded arch top and a straight bottom. There is liquid appearing in the color pink featured inside the internal container of the bottle.

 

Applicant also accepts the color claim suggested by the Examiner: pink, silver, and white.

 

IDENTIFICATION OF GOODS

 

Applicant amends the ID as follows with this response:

 

Perfumery; perfumes; toilet water; scented linen water; perfumed waters; Eau de Cologne; fragrance products for personal use, namely, body spray used as a personal deodorant and as fragrance, fragranced facial  moisturizer, fragranced body moisturizer; perfumed extracts for perfume; essential oils; personal deodorants; cosmetic products in the form of aerosols for skincare; cosmetic preparations for skin scare; oils for toiletry purposes; cleansing milk for toilet purposes; toiletries, namely, non-medicated toiletry preparations; talcum powder for toilet use; oils for cosmetic purposes for the bath; cosmetic preparations for baths;  toilet, shaving, skin, beauty soaps; shampoos; hair lotions.

 

ENTITY CLARIFICATION

 

Applicant is a “Simplified Joint Stock Company with Sole Shareholder," which is the translation of “Société par Actions Simplifiée à Associé Unique.”

 

FOREIGN REGISTRATION REQUIRED

 

Please find enclosed the certificate of registration of Applicant’s French trademark registration n°18 4 501 071 and its simple translation.

 

Applicant submits that it has responded to all of the issues raised in the Office Action. Should the Examiner require anything further, they are invited to contact the undersigned counsel.

EVIDENCE
Evidence in the nature of Exhibit A - report of other perfume bottles which have registered has been attached.
Original PDF file:
evi_1252140226-20191022123330872191_._EX_A_perfume_bottle_trade_dress.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Perfumery; perfumes; toilet water; scented water; perfume water; Eau de Cologne; fragrance products for personal use; extracts for perfume; essential oils; personal deodorants; cosmetic products; cosmetics preparations for skin scare; oils for toilet purposes; cleansing milk for toilet purposes; toiletries; talcum powder for toilet use; oils for cosmetic purposes for the bath; cosmetic preparations for baths; soaps; shampoos; hair lotions
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(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 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 4501071 filed 11/19/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Perfumery; perfumes; toilet water; scented water; scented linen water; perfume water; perfumed waters; Eau de Cologne; fragrance products for personal use; fragrance products for personal use, namely, body spray used as a personal deodorant and as fragrance, fragranced facial moisturizer, fragranced body moisturizer; extracts for perfume; perfumed extracts for perfume; essential oils; personal deodorants; cosmetic products; cosmetic products in the form of aerosols for skincare; cosmetics preparations for skin scare; cosmetic preparations for skin scare; oils for toilet purposes; oils for toiletry purposes; cleansing milk for toilet purposes; toiletries; toiletries, namely, non-medicated toiletry preparations; talcum powder for toilet use; oils for cosmetic purposes for the bath; cosmetic preparations for baths; soaps; toilet, shaving, skin, beauty soaps; shampoos; hair lotionsClass 003 for Perfumery; perfumes; toilet water; scented linen water; perfumed waters; Eau de Cologne; fragrance products for personal use, namely, body spray used as a personal deodorant and as fragrance, fragranced facial moisturizer, fragranced body moisturizer; perfumed extracts for perfume; essential oils; personal deodorants; cosmetic products in the form of aerosols for skincare; cosmetic preparations for skin scare; oils for toiletry purposes; cleansing milk for toilet purposes; toiletries, namely, non-medicated toiletry preparations; talcum powder for toilet use; oils for cosmetic purposes for the bath; cosmetic preparations for baths; toilet, shaving, skin, beauty soaps; shampoos; hair lotions
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 4501071 filed 11/19/2018]. 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 184501071 registered 11/19/2018 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:
FRU0-1252140226-123330872_._CERTITICAT_TM_GALA__bouteille_rose__-_FRANCE.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU0-1252140226-123330872_._TRANSLATION_4501071_-_GALA_FOR_WOMAN_-_pink.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: PARFUMS PAROUR a(n) Société par Actions Simplifiée à Associé Unique, legally organized under the laws of France, having an address of
      6 avenue Matignon
      75008 PARIS,
      France

Proposed: PARFUMS PAROUR, Simplified Joint Stock Company with Sole Shareholder legally organized under the laws of France, having an address of
      6 avenue Matignon
      PARIS, 75008
      France

The applicant's current attorney information: Hope V. Shovein. Hope V. Shovein of BROOKS KUSHMAN P.C., is located at

      1000 TOWN CENTER, 22ND FLOOR
      SOUTHFIELD, Michigan 48075-1238
      US
The docket/reference number is MKPS0135TUS.

The phone number is 248-358-4400.

The fax number is 248-358-3351.

The email address is trademarks@brookskushman.com

The applicants proposed attorney information: Hope V. Shovein. Hope V. Shovein of BROOKS KUSHMAN P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1000 TOWN CENTER, 22ND FLOOR
      SOUTHFIELD, Michigan 48075-1238
      United States
The docket/reference number is MKPS0135TUS.

The phone number is 248-358-4400.

The fax number is 248-358-3351.

The email address is trademarks@brookskushman.com

Hope V. Shovein 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: HOPE V. SHOVEIN. HOPE V. SHOVEIN of BROOKS KUSHMAN P.C., is located at

      1000 TOWN CENTER, 22ND FLOOR
      SOUTHFIELD, Michigan 48075-1238
      US
The docket/reference number is MKPS0135TUS.

The phone number is 248-358-4400.

The fax number is 248-358-3351.

The email address is trademarks@brookskushman.com

The applicants proposed correspondence information: Hope V. Shovein. Hope V. Shovein of BROOKS KUSHMAN P.C., is located at

      1000 TOWN CENTER, 22ND FLOOR
      SOUTHFIELD, Michigan 48075-1238
      United States
The docket/reference number is MKPS0135TUS.

The phone number is 248-358-4400.

The fax number is 248-358-3351.

The email address is trademarks@brookskushman.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use three-dimensional configuration of the bottle apart from the mark as shown.


Color Claim
The color(s) pink, silver, and white is/are claimed as a feature of the mark.

Description of mark
The mark consists of the three-dimensional configuration of a transparent bottle for the goods with the phrase "GALA" in white located on the front of said bottle. The bottle has a multi-faceted, rectangular oblong stopper with a flat top and bottom and rounded edges. The base of the stopper is silver. The container consists of a rounded top and a hexagonal bottom, with six carved out facets, each with a rounded arch top and a straight bottom. There is liquid appearing in the color pink featured inside the internal container of the bottle.

FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)

Signature: /hope v shovein/      Date: 10/22/2019
Signatory's Name: Hope V. Shovein
Signatory's Position: Attorney of record, Michigan bar member
Signatory's Phone Number: 248-358-4400


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: /hope v shovein/      Date: 10/22/2019
Signatory's Name: Hope V. Shovein
Signatory's Position: Attorney of record, Michigan bar member

Response Signature
Signature: /hope v shovein/     Date: 10/22/2019
Signatory's Name: Hope V. Shovein
Signatory's Position: Attorney of record, Michigan bar member

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:    HOPE V. SHOVEIN
   BROOKS KUSHMAN P.C.
   
   1000 TOWN CENTER, 22ND FLOOR
   SOUTHFIELD, Michigan 48075-1238
Mailing Address:    Hope V. Shovein
   BROOKS KUSHMAN P.C.
   1000 TOWN CENTER, 22ND FLOOR
   SOUTHFIELD, Michigan 48075-1238
        
RAM Sale Number: 88212584
RAM Accounting Date: 10/22/2019
        
Serial Number: 88212584
Internet Transmission Date: Tue Oct 22 12:46:17 EDT 2019
TEAS Stamp: USPTO/POA-XX.XX.XXX.XXX-2019102212461798
7773-88212584-6103e9c76b11a8b4c2c5673e55
b6c529f1cb2715aca92ed03e858ef52b26d827df
-DA-46178108-20191022123330872191