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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88845653 PUMA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8884565 3/large) has been amended as follows:

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

Registration of Applicant's mark was refused as to certain services in International Classes 35 and 36 based on an alleged likelihood of confusion with the marks in U.S. Registration Nos. 5120350, 5870677, 4770130, and 4770129. To address this partial refusal, Applicant hereby amends deletes many of the services from its recitation of services in International Classes 35 and 36, and amends or narrows others. After this significant narrowing of the scope of Applicant's services in International Classes 35 and 36, Applicant submits that confusion between its mark and the marks in U.S. Registration Nos. 5120350, 5870677, 4770130, and 4770129 is unlikely due to the differences between the companies' respective services. Therefore, Applicant respectfully requests that the Section 2(d) likelihood of confusion refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable electronic publications; application software for mobile phones, tablets, laptops and desktops for the management of service station supply and the trading of petroleum products
The applicant, or the applicant's related company or licensee, is using the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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: Downloadable electronic publications; Downloadable electronic publications in the nature of newsletters, magazines, brochures, and pamphlets in the fields of petroleum, fuel, lubricants, and renewable energy; application software for mobile phones, tablets, laptops and desktops for the management of service station supply and the trading of petroleum products; downloadable application software for mobile phones, tablets, laptops and desktops for the management of service station supply and the trading of petroleum productsClass 009 for Downloadable electronic publications in the nature of newsletters, magazines, brochures, and pamphlets in the fields of petroleum, fuel, lubricants, and renewable energy; downloadable application software for mobile phones, tablets, laptops and desktops for the management of service station supply and the trading of petroleum products
Deleted Filing Basis: 1(a)
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 13720/2019 filed 10/18/2019]. 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 [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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:

Current:
Class 035 for Advertising; promotional services; management of commercial affairs; commercial administrative assistance; clerical work; service of professional advisers in commercial affairs and advice in organization and commercial affairs; services of advisers in commercial management to companies; market research; economic forecasts; administrative data processing services; collection of economic and business data in a central file on behalf of public or private legal persons; compilation of economic and business statistics; business expertise; procurement services for third parties (purchase of products and services for other companies); retail or wholesale services of crude or refined petroleum, oils, lubricants (oils, fats), fuels, diesel, fuel gases, liquid gas, petrol (fuels), kerosene, lighting materials, naphtha, bitumen, asphalt, chemical additives for fuel treatment; retail services for food, alcoholic and non-alcoholic beverages, cigarettes and tobacco products, smoking accessories, e-cigarettes, e-liquids; retail services for laundry detergent and softener, soap, cleaning products, air freshener, insecticide; retail services for bags and wraps, pet food and pet accessories, health and beauty care products, batteries, films for cameras, video tapes, school and office supplies; retail services for trading cards, sunglasses, tools, flowers, softener salt, charcoal and logs, lawn and gardening tools and equipment; retail services for ice chest, cell phones, beepers, accessories for computers and cell phones, propane bottles, paper publications, newspapers, magazines, books, comics, maps; retail services for automobile accessories, motor oil, anti-freeze, brake fluids, scratch cards for playing lottery games; retail services for third-party encoded pre-paid payment cards for the purchase of crude or refined petroleum, oils, motor oil, lubricants (oils, fats), fuels, diesel, fuel gases, liquid gas, petrol (fuels), kerosene, lighting materials, naphtha, bitumen, asphalt, chemical additives for fuel treatment, automobile accessories, anti-freeze, brake fluids, food, alcoholic and non-alcoholic beverages, cigarettes and tobacco products, smoking accessories, e-cigarettes, e-liquids, laundry detergent and softener, soap, cleaning products, air freshener, insecticide, bags and wraps, pet food and pet accessories, health and beauty care products, cosmetics, batteries, films for cameras, video tapes, school and office supplies, trading cards, sunglasses, garden tools, flowers, softener salt, charcoal and logs, lawn and gardening tools and equipment, ice chest, cell phones, beepers, accessories for computers and cell phones, propane bottles, paper publications, newspapers, magazines, books, comics, maps, scratch cards for playing lottery games and retail services for third-party pre-paid cards for the purchase of telecommunication services; photocopying services; none of the aforementioned services being in the field of sports, sporting goods, sports clothing or casual clothing
The applicant, or the applicant's related company or licensee, is using the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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: Advertising; Help in the management of business affairs of an industrial or commercial enterprise; promotional services; business administrative assistance; management of commercial affairs; clerical services; commercial administrative assistance; service of professional advisers in commercial affairs and advice in organisation and commercial affairs, namely, commercial consultancy; clerical work; services of advisers in commercial management to companies, namely, business management consultancy; service of professional advisers in commercial affairs and advice in organization and commercial affairs; economic forecasting; services of advisers in commercial management to companies; administrative data processing services; market research; collection of economic and business data from public or private legal persons into a central file; economic forecasts; analysis of economic and business statistics for business purposes; business expertise, namely, business consulting and information services; collection of economic and business data in a central file on behalf of public or private legal persons; procurement, namely, purchasing petroleum, fuel, lubricants, and renewable energy for third parties; compilation of economic and business statistics; procurement of contracts for others for the purchase of energy; business expertise; retail or wholesale store services featuring crude or refined petroleum, oils, lubricants, fuels, diesel, fuel gases, liquid gas, petrol, kerosene, lighting materials, naphtha, bitumen, asphalt, chemical additives for fuel treatment; procurement services for third parties (purchase of products and services for other companies); retail store services featuring convenience store items in the nature of food, alcoholic and non-alcoholic beverages, cigarettes and tobacco products, smoking accessories, e-cigarettes, e-liquids, laundry detergent and softener, soap, cleaning products, air freshener, insecticide, food bags and wraps, pet food and pet accessories, batteries, films for cameras, video tapes, school and office supplies, trading cards, tools, flowers, softener salt, charcoal and logs, lawn and gardening tools and equipment, ice chest, cell phones, beepers, accessories for computers and cell phones, propane bottles, paper publications, newspapers, magazines, books, comics, maps, automotive products, motor oil, anti-freeze, brake fluids, scratch cards for playing lottery games, pre-paid cards and pre-paid telecommunication cards; retail or wholesale services of crude or refined petroleum, oils, lubricants (oils, fats), fuels, diesel, fuel gases, liquid gas, petrol (fuels), kerosene, lighting materials, naphtha, bitumen, asphalt, chemical additives for fuel treatment; photocopying services; retail services for food, alcoholic and non-alcoholic beverages, cigarettes and tobacco products, smoking accessories, e-cigarettes, e-liquids; none of the aforementioned services being in the field of sports, sporting goods, sports clothing or casual clothing; retail services for laundry detergent and softener, soap, cleaning products, air freshener, insecticide; retail services for bags and wraps, pet food and pet accessories, health and beauty care products, batteries, films for cameras, video tapes, school and office supplies; retail services for trading cards, sunglasses, tools, flowers, softener salt, charcoal and logs, lawn and gardening tools and equipment; retail services for ice chest, cell phones, beepers, accessories for computers and cell phones, propane bottles, paper publications, newspapers, magazines, books, comics, maps; retail services for automobile accessories, motor oil, anti-freeze, brake fluids, scratch cards for playing lottery games; retail services for third-party encoded pre-paid payment cards for the purchase of crude or refined petroleum, oils, motor oil, lubricants (oils, fats), fuels, diesel, fuel gases, liquid gas, petrol (fuels), kerosene, lighting materials, naphtha, bitumen, asphalt, chemical additives for fuel treatment, automobile accessories, anti-freeze, brake fluids, food, alcoholic and non-alcoholic beverages, cigarettes and tobacco products, smoking accessories, e-cigarettes, e-liquids, laundry detergent and softener, soap, cleaning products, air freshener, insecticide, bags and wraps, pet food and pet accessories, health and beauty care products, cosmetics, batteries, films for cameras, video tapes, school and office supplies, trading cards, sunglasses, garden tools, flowers, softener salt, charcoal and logs, lawn and gardening tools and equipment, ice chest, cell phones, beepers, accessories for computers and cell phones, propane bottles, paper publications, newspapers, magazines, books, comics, maps, scratch cards for playing lottery games and retail services for third-party pre-paid cards for the purchase of telecommunication servicesClass 035 for Help in the management of business affairs of an industrial or commercial enterprise; business administrative assistance; clerical services; service of professional advisers in commercial affairs and advice in organisation and commercial affairs, namely, commercial consultancy; services of advisers in commercial management to companies, namely, business management consultancy; economic forecasting; administrative data processing services; collection of economic and business data from public or private legal persons into a central file; analysis of economic and business statistics for business purposes; business expertise, namely, business consulting and information services; procurement, namely, purchasing petroleum, fuel, lubricants, and renewable energy for third parties; procurement of contracts for others for the purchase of energy; retail or wholesale store services featuring crude or refined petroleum, oils, lubricants, fuels, diesel, fuel gases, liquid gas, petrol, kerosene, lighting materials, naphtha, bitumen, asphalt, chemical additives for fuel treatment; retail store services featuring convenience store items in the nature of food, alcoholic and non-alcoholic beverages, cigarettes and tobacco products, smoking accessories, e-cigarettes, e-liquids, laundry detergent and softener, soap, cleaning products, air freshener, insecticide, food bags and wraps, pet food and pet accessories, batteries, films for cameras, video tapes, school and office supplies, trading cards, tools, flowers, softener salt, charcoal and logs, lawn and gardening tools and equipment, ice chest, cell phones, beepers, accessories for computers and cell phones, propane bottles, paper publications, newspapers, magazines, books, comics, maps, automotive products, motor oil, anti-freeze, brake fluids, scratch cards for playing lottery games, pre-paid cards and pre-paid telecommunication cards; photocopying services; none of the aforementioned services being in the field of sports, sporting goods, sports clothing or casual clothing
Deleted Filing Basis: 1(a)
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 13720/2019 filed 10/18/2019]. 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 [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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:

Current:
Class 036 for Insurance; financial affairs; financial valuation; financial trust management; financial analysis services; financial management of investment companies; investment fund management; financial management; financial management consulting services; financial investment management services; asset management services; private equity; venture capital financing; fundraising services; financial sponsorship; securities and bond transactions; transactions in financial derivatives services; transactions in futures contracts on securities of overseas markets; trading, namely, commodity brokerage on international markets; money market affairs; real estate; real estate services for the sale, purchase and rental of real estate; real estate brokerage
The applicant, or the applicant's related company or licensee, is using the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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: Insurance; charitable fundraising services; financial affairs; all of the foregoing services in the fields of petroleum, fuel, lubricants, and renewable energy; financial valuation; financial affairs, namely, credit card services and stored value prepaid card services in the nature of processing electronic payments made through prepaid cards; financial trust management; financial sponsorship of motoring events and sporting events; financial analysis services; financial management of investment companies; investment fund management; financial management; financial management consulting services; financial investment management services; asset management services; private equity; venture capital financing; fundraising services; financial sponsorship; securities and bond transactions; transactions in financial derivatives services; transactions in futures contracts on securities of overseas markets; trading, namely, commodity brokerage on international markets; money market affairs; real estate; real estate services for the sale, purchase and rental of real estate; real estate brokerageClass 036 for charitable fundraising services; all of the foregoing services in the fields of petroleum, fuel, lubricants, and renewable energy; financial affairs, namely, credit card services and stored value prepaid card services in the nature of processing electronic payments made through prepaid cards; financial sponsorship of motoring events and sporting events
Deleted Filing Basis: 1(a)
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 13720/2019 filed 10/18/2019]. 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 [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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:

Current:
Class 037 for Vehicle service stations (refueling and maintenance); garage services for maintenance and repair; maintenance, servicing and repair of motor vehicles and their engine; maintenance and repair of vehicle tires; vulcanization of tires (repair); automobile cleaning and car washing; cleaning of vehicle engines; drilling of deep oil or gas well, drilling of crude oil
The applicant, or the applicant's related company or licensee, is using the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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: Vehicle service stations (refueling and maintenance); Vehicle service stations; garage services for maintenance and repair; automobile cleaning and car washing; maintenance, servicing and repair of motor vehicles and their engine; cleaning of vehicle engines; maintenance and repair of vehicle tires; drilling of deep oil or gas wells, drilling of crude oil wells; vulcanization of tires (repair); drilling of deep oil or gas well, drilling of crude oilClass 037 for Vehicle service stations; automobile cleaning and car washing; cleaning of vehicle engines; drilling of deep oil or gas wells, drilling of crude oil wells
Deleted Filing Basis: 1(a)
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 13720/2019 filed 10/18/2019]. 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 [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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:

Current:
Class 039 for Storage, distribution and transportation of raw and refined petroleum, crude oils, diesel oil, fuel oil, motor oil, lubricating oils, castor oil for industrial purposes, lubricants, industrial lubricants, automotive lubricants, motor vehicle lubricants, lubricants for aircraft engines, all-purpose lubricants, fuels, lighting fuel, diesel fuel, biodiesel fuel, gasoline, kerosene, fuel gas, liquefied petroleum gas, liquefied natural gas, petroleum ether, naphtha, coal naphtha, non-chemical additives for fuels, lubricants and greases and non-chemical gasoline additives
The applicant, or the applicant's related company or licensee, is using the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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:
Class 039 for Storage, distribution and transportation of raw and refined petroleum, crude oils, diesel oil, fuel oil, motor oil, lubricating oils, castor oil for industrial purposes, lubricants, industrial lubricants, automotive lubricants, motor vehicle lubricants, lubricants for aircraft engines, all-purpose lubricants, fuels, lighting fuel, diesel fuel, biodiesel fuel, gasoline, kerosene, fuel gas, liquefied petroleum gas, liquefied natural gas, petroleum ether, naphtha, coal naphtha, non-chemical additives for fuels, lubricants and greases and non-chemical gasoline additives
Deleted Filing Basis: 1(a)
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 13720/2019 filed 10/18/2019]. 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 [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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:

Current:
Class 043 for Hotel, restaurant and cafe services; providing food and beverages in restaurants and bars within the premises of a gas station; restaurants featuring home delivery
The applicant, or the applicant's related company or licensee, is using the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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:
Class 043 for Hotel, restaurant and cafe services; providing food and beverages in restaurants and bars within the premises of a gas station; restaurants featuring home delivery
Deleted Filing Basis: 1(a)
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 13720/2019 filed 10/18/2019]. 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 [ Switzerland registration number 737666 registered 10/28/2019 with a renewal date of __________ and an expiration date of 10/18/2029 ], 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.

ADDITIONAL STATEMENTS
Color Claim
The color(s) green, red, and white is/are claimed as a feature of the mark.

Description of mark
The mark consists of a moving image mark, consisting of an animated sequence of 1.22 seconds, starting with a logo consisting of a green parallelogram in which the word "PUMA" is inscribed in white capital letters; out of this logo comes a stylized white puma running to the right; this puma is inserted into a red parallelogram that also moves with it to the right; in the last frame of the sequence, the red parallelogram containing the stylized white puma reaches a size equal to the green parallelogram containing the word "PUMA". The drawing represents four (4) stills (freeze frames) from the animated sequence.
Correspondence Information (current):
      Matthew A. Homyk
      PRIMARY EMAIL FOR CORRESPONDENCE: mhomyk@blankrome.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 155500-00109.
Correspondence Information (proposed):
      Matthew A. Homyk
      PRIMARY EMAIL FOR CORRESPONDENCE: mhomyk@blankrome.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 155500-00109.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
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: /matthew homyk/      Date: 10/21/2020
Signatory's Name: Matthew A. Homyk
Signatory's Position: Attorney of record
Signatory's Phone Number: 215-569-5360


Response Signature
Signature: /matthew homyk/     Date: 10/21/2020
Signatory's Name: Matthew A. Homyk
Signatory's Position: Attorney of record

Signatory's Phone Number: 215-569-5360

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:    Matthew A. Homyk
   BLANK ROME LLP
   
   ONE LOGAN SQUARE
   PHILADELPHIA, Pennsylvania 19103
Mailing Address:    Matthew A. Homyk
   BLANK ROME LLP
   ONE LOGAN SQUARE
   PHILADELPHIA, Pennsylvania 19103
        
Serial Number: 88845653
Internet Transmission Date: Wed Oct 21 13:30:32 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.X-202010211330326135
01-88845653-7503082465bc50eddae8e05fb77f
dcfa65e89d0a5c9e34ef3a824fd3a213f27e-N/A
-N/A-20201021125910013492