To: | Establissements Peugeot Freres (ipdocket@greensfelder.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88367954 - PEUGEOT - 25322-888013 |
Sent: | 6/19/2019 6:48:59 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88367954
MARK: PEUGEOT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Establissements Peugeot Freres
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 6/19/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Although no similar registered or pending mark has been found that would bar registration, Applicant must satisfy/address the following Requirements:
Requirements to be Addressed
1. Identification of Goods – International Class 18
2. Foreign Registration Certificate
Identification of Goods Requirement – International Class 18
Therefore, Applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
The wording “tool cases, shopping bags, bags for campers, bags for mountain-climbing, bags for climbing and furs,” in the identification of goods must be reworded and/or identify the material composition to remain in International Class 18 because it is overly broad and could identify goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Further, semi-Colons “;” should be used to separate distinct and individual goods. Commas “,” should be used in the identification to separate items within a particular category of goods. When the items are preceded by the word “namely,” a comma should always be used before and after that term. For example, “clothing, namely, hats, caps, sweaters, and jeans” is an acceptable identification of goods in Class 25 and shows proper use of commas.
Applicant may substitute the following wording, if accurate:
Key cases of leather ; school satchels of leather ; tool bags sold empty ; shopping bags; all-purpose purpose carrying bags for campers; garment bags for travel; boxes of leather or leather board; leather straps; clothing for pets; leather leashes; muzzles; trimmings of leather for furniture; rucksacks; backpacks; all-purpose carrying bags for mountain-climbing; all-purpose carrying bags for climbers; sport bags; wheeled shopping bags; beach bags; travelling bags; sling bags for carrying children; pouch baby carriers; handbags; brief bags; travelling sets and pouches made of leather; suitcases; wallets; jewelry rolls sold empty and made of leather; credit card holders, coin purses, school satchels, leather leads, travelling trunks and leather straps, all the aforesaid goods being of leather and limitation leather; tool bags, tool pouches, tool holsters, all of leather; skins and furs pelts; trunks and travelling bags; umbrellas; parasols and walking sticks; whips; Harness and saddlery. |
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, Applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
Foreign Registration Certificate Required
A copy of a foreign registration must consist of a document issued to an Applicant by, or certified by, the intellectual property office in the Applicant’s country of origin. TMEP §1004.01. If an Applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the Applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the Applicant’s country of origin. TMEP §1016.
Therefore, Applicant must provide a copy of the foreign registration from Applicant’s country of origin. If the foreign registration is not written in English, Applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF Applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF Applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Thomas M. Manor/
Trademark Examining Attorney
Law Office 110
Phone: (571) 270-1519
Fax. No. (571) 273-1519
Thomas.Manor@USPTO.GOV
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual Applicant or someone with legal authority to bind an Applicant (i.e., a corporate officer, a general partner, all joint Applicants). If an Applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that Applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.