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)

---

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. 88295162 TOURBILLON(Standard Characters, see http://uspto.report/TM/88295162/mark.png) has been amended as follows:

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

Remarks

The Examining Attorney has refused to register Applicant’s mark based on a likelihood of confusion with the following registrations (the “cited registrations”):  

Mark:	TOURBILLON and Design
Services:	(IC 035) Retail store services featuring jewelry, watches, chronometers, clocks and wall clocks [ ; on-line retail store services featuring of jewelry, watches, chronometers, clocks and wall clocks ] (IC 037) Repair and maintenance of jewellery, watches, chronometers, clocks and wall clocks
Disclaimer:	no claim is made to the exclusive right to use "TOURBILLON" apart from the mark as shown
Serial Number:	79054736
Filing Date:	May 30, 2008
Current Basis:	66A
Registration No.:	3699058
Int’l Reg. No.:	0966805
Reg. Date:	October 20, 2009
Owner:	(Registrant) The Swatch Group Management Services AG;(The Swatch Group Management Services SA); (The Swatch Group Management Services Ltd) Société anonyme (SA) (joint stock company; sociedad anonima) SWITZERLAND Seevorstadt 6 Biel/Bienne SWITZERLAND CH-2501

Word Mark :	TOURBILLON
Translation:	The English translation of "TOURBILLON" in the mark is "SWIRL".
Services:	IC 035. US 100 101 102. G & S: Retail stores featuring uniforms. First Use: 20090714. First Use In Commerce: 20110119
Serial No.:	77782585
Filing Date:	July 16, 2009
Current Basis:	1A
Reg. No.:	3945131
Reg. Date:	April 12, 2011
Owner:	(Registrant) Zetter Casillas, Javier (Individual México) San Juan De Lagos 192 Guadalajara México 44110

Applicant has deleted Class 35 from the application and has amended Class 12 as requested by the Examiner. Based on the amendments to the identification of goods and services, Applicant submits that confusion between its mark and the cited registrations is unlikely.  

In view of the foregoing, Applicant respectfully requests that the Examiner withdraw the Section 2(d) refusal.

DUAL BASIS

Applicant advises the Examining Attorney that its home application is still pending.

 

Applicant presently wishes to maintain both bases in the instant application and requests that the Examining Attorney suspend the application pending receipt of a copy of its home registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Retail services featuring mopeds, bicycles, racing bicycles, cycle bicycles, e-bikes, mountain bikes, tire covers, brake cables for bicycles, bicycle frames, electric bicycles, transmission chains for bicycles, bicycle forks, bicycle brakes, bicycle handlebars, bicycle engines, bicycle pedals, spokes for bicycle wheels, bicycle wheels

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for mopeds; bicycles; racing bicycles; cycle touring bicycles; electric bicycles; mountain bikes; tire covers; brake cables for bicycles; bicycle frames; transmission chains for bicycles; bicycle forks; bicycle brakes; bicycle handlebars; bicycle engines; bicycle pedals; spokes for bicycle wheels; bicycle wheels
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[ Switzerland application number 80219/2018 filed 10/17/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Mopeds; bicycles; racing bicycles; cycle touring bicycles; electric bicycles; mountain bikes; tire covers; tire covers, namely, anti-skid textile covers for tire; brake cables for bicycles; bicycle frames; transmission chains for bicycles; bicycle forks; bicycle forks in the nature of bicycle parts, namely, forks; bicycle brakes; bicycle handlebars; bicycle engines; bicycle pedals; spokes for bicycle wheels; bicycle wheelsClass 012 for Mopeds; bicycles; racing bicycles; cycle touring bicycles; electric bicycles; mountain bikes; tire covers, namely, anti-skid textile covers for tire; brake cables for bicycles; bicycle frames; transmission chains for bicycles; bicycle forks in the nature of bicycle parts, namely, forks; bicycle brakes; bicycle handlebars; bicycle engines; bicycle pedals; spokes for bicycle wheels; bicycle wheels
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 [ Switzerland application number 80219/2018 filed 10/17/2018]. 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.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Voltitude SA (Voltitude AG) (Voltitude Ltd) a(n) société anonyme (sa), legally organized under the laws of Switzerland, having an address of
      
      c/o VFM Conseil SALes Epinettes 2
      Les Charbonnières, 1343
      Switzerland

Proposed: Voltitude SA, DBA Voltitude AG and Voltitude Ltd, société anonyme (sa) legally organized under the laws of Switzerland, having an address of
      c/o VFM Conseil SA
      Les Epinettes 2
      Les Charbonnières, 1343
      Switzerland

SIGNATURE(S)
Response Signature
Signature: /Perla M. Kuhn/     Date: 10/18/2019
Signatory's Name: Perla M. Kuhn
Signatory's Position: Attorney of record, member of the NY Bar

Signatory's Phone Number: (212) 878-1424

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.

        
Serial Number: 88295162
Internet Transmission Date: Fri Oct 18 11:17:16 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201910181117165
38642-88295162-6101e73a682b5e2a29bdab1c1
63684bca67ee698cbf1d2cf0f48dad4cb5757057
-N/A-N/A-20191018104441370400