Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1109012
`
`Filing date:
`
`01/20/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88474187
`
`Printemps
`
`Applied for Mark
`
`PRINTEMPS
`
`Correspondence
`Address
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`JULIANNE ABELMAN
`ABELMAN FRAYNE & SCHWAB
`666 THIRD AVENUE
`NEW YORK, NY 10017-5612
`UNITED STATES
`Primary Email: jabelman@lawabel.com
`Secondary Email(s): docket@lawabel.com, jbseyler@lawabel.com, aal-
`len@lawabel.com
`212-885-9248
`
`Applicants Request for Remand and Amendment
`
`PRINTEMPS REQUEST FOR REMAND 187 APP.pdf(276902 bytes )
`PRINTEMPS LETTER OF CONSENT.pdf(161690 bytes )
`
`Marie Anne Mastrovito
`
`mamastrovito@lawabel.com, docket@lawabel.com
`
`/MAMastrovito/
`
`01/20/2021
`
`
`
`ESTTA Tracking number:
`
`ESTTA1109012
`
`Filing date:
`
`01/20/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88474187
`
`Printemps
`
`Applied for Mark
`
`PRINTEMPS
`
`Correspondence
`Address
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`JULIANNE ABELMAN
`ABELMAN FRAYNE & SCHWAB
`666 THIRD AVENUE
`NEW YORK, NY 10017-5612
`UNITED STATES
`Primary Email: jabelman@lawabel.com
`Secondary Email(s): docket@lawabel.com, jbseyler@lawabel.com, aal-
`len@lawabel.com
`212-885-9248
`
`Applicants Request for Remand and Amendment
`
`PRINTEMPS REQUEST FOR REMAND 187 APP.pdf(276902 bytes )
`PRINTEMPS LETTER OF CONSENT.pdf(161690 bytes )
`
`Marie Anne Mastrovito
`
`mamastrovito@lawabel.com, docket@lawabel.com
`
`/MAMastrovito/
`
`01/20/2021
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`88/474187
`Printemps
`PRINTEMPS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date of
`
`
`IN THE MATTER OF Trademark Application:
`
`Serial No.:
`Applicant:
`Mark:
`.
`
`
`
`
`
`
`
`this Paper: January 20, 2021
`
`
`
`REQUEST FOR SUSPENSION OF APPEAL
`AND REMAND TO EXAMINER FOR CONSIDERATION OF LETTER OF CONSENT
`
`
`
`Applicant requests suspension of the pending appeal of the Examiner’s final refusal
`
`
`
`
`to register the mark under Section 2(d) of the Trademark Act and remand of the application to the
`
`Examining Attorney for consideration of the attached Letter of Consent granted by the owner of two
`
`of the registrations cited against the Applicant’s application.
`
` The Examining Attorney has refused registration of the Applicant’s Mark, PRINTEMPS,
`
`based on an alleged likelihood of confusion with the mark PIVOINES PRINTEMPS
`
`(Registration No. 5726168) and BOUQUET DE PRINTEMPS (Registration No. 5191361) both
`
`owned by L’Oreal (“Registrant”). The attached consent, signed by both the Applicant and
`
`Registrant, recites seven factors supporting the conclusion of the parties that confusion between
`
`their respective marks is not likely.
`
`Applicant was previously under the impression that the Examining Attorney had
`
`considered this Consent, because the consent was referenced in the Applicant’s Response filed
`
`on March 11, 2020, however, it has recently come to the Applicant’s attention that the Consent
`
`
`
`did not properly load into the record and was NOT considered by the Examining Attorney.
`
`Applicant submits that consideration of the consent is warranted in this case. As this is an ex
`
`parte appeal, the remand of this matter to the Examining Attorney for consideration of all the
`
`evidence, will not prejudice any other parties. Further, the Consent is likely to obviate the need
`
`for an appeal of the refusals based on these two registrations. As recognized by the Court of
`
`Customs and Patent Appeals in In re E.I du Pont de Nemours & Co., 177 USOPQ 563, 568
`
`((C.C.P.A 1973), “when those familiar with use in the marketplace and most interested in
`
`precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly
`
`tilted. It is at least difficult to maintain a subjective view that confusion will occur when those
`
`directly concerned say it won’t.” As a result examining attorneys are required to give substantial
`
`weight to a proper consent agreement. Since the parties involved believe that the marks are not
`
`likely to cause confusion, the Examining Attorney should respect that business judgment and the
`
`refusal to register the Applicant’s Mark under Section 2(d) should be withdrawn.
`
`
`
`Wherefore, the Applicant requests that the Board grant this request and remand the
`
`application to the Examining Attorney for consideration of the attached Letter of Consent.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` ___/Marie
`MARIE
`
`ABELMAN, FRAYNE & SCHWAB
`150 East 42nd Street
`New York, N. Y. 10017
`
`Attorneys for Applicant
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant: PRINTEMPS
`
`Serial Nos.:
`
`88474187 and 88478190
`
`Trademarks: PRINTEMPS and PRINTEMPS.COM
`
`LETTER OF CONSENT
`
`Applicant, PRINTEMPS, (hereinafter "Applicant") has filed to register Application No.
`
`88474187 for PRINTEMPS and Application No. 88478190 for PRINTEMPSCOM (“Applicant's
`
`Marks”) for retail department stores and online retail department store services in Class 35.
`
`In
`
`accordance with the requirements of the U.S. Patent and Trademark Office, the recitation of
`
`services identifies the goods sold in Applicant’s retail stores and online retail stores as luxury
`
`designer brand clothing, footwear, handbags and leather goods; soaps, perfumery, essential oils,
`
`cosmetics, incense, hair lotions, precious metals and their alloys not for dental purposes; jewelry;
`
`precious stones; horological and chronometric instruments;
`
`leather and imitation leather and
`
`goods made of leather and imitations of leather, namely: cases for keys made of leather,
`
`briefcases, wallets, purses not of precious metal, credit card cases, attache cases; vanity cases,
`
`toiletry cases; make-up cases, phone cases, laptops cases, tablets cases, handbags, satchels and
`
`school bags, empty tool bags, backpacks, shopping bags, mountaineer's bags, campers' bags,
`
`bags beach bags, traveling bags, garment bags for travel, boxes of leather or cardboard-leather,
`
`bags in the form of envelopes or pouches of leather for packaging; leather straps, animal collars,
`
`animal clothing,
`
`leashes, muzzles,
`
`furniture,
`
`leather upholstery; animal skins,
`
`trunks and
`
`suitcases, travel kits, umbrellas, parasols and walking sticks, whips and saddlery; textile fabrics;
`
`bed and table covers; household and table linen at
`
`the exception of paper table linen;
`
`organization of exhibitions and events for commercial and advertising purposes; personal
`
`@7
`
`
`
`shopping services; mail order selling using any electronic medium; provision of product samples
`
`for promotional purposes; dissemination of advertising material
`
`in the form of leaflets,
`
`prospectuses, printed matters; product demonstration on an e-commerce site; product sales
`
`promotion services in the nature of a rewards program related to the use of loyalty cards;
`
`organization of fashion shows for promotional purposes; promoting goods and services on behalf
`
`of others through time-limited promotional offers via an online electronic communications
`
`network; advertising services for others; rental of advertising space for others.
`
`It was also
`
`specifically stated in the original description that within the retail stores, Applicant is selling
`
`third party goods.
`
`L'OREAL, ("Registrant") owns Registration No. 5726168 for PIVOINES PRINTEMPS,
`
`(“Registrant’s PIVOINES Mark”) for “Perfitmed soaps; perfumes; eau de cologne; toilet waters;
`
`eau de parfum; personal deodorants; cleaning and room and air fi'agrancing preparations; scented
`
`body lotions and creams; essential oils”, (“Registrant’s Pivoines Goods”. The English translation
`
`of the trademark PIVOINES PRINTEMPS is “spring peonies”.
`
`Registrant also owns Registration No. 5191361 for BOUQUET DE PRINTEMPS,
`
`(“Registrant’s Mark”) for “perfume, eau de toilette; gels and salts for the bath and the shower not
`
`for medical purpose; toilet soaps, body deodorants; cosmetics, namely, creams, milks, lotions,
`
`gels and powders for the face, the body and the hands; non-medicated sun care preparations;
`
`make-up preparations; shampoos; non-medicated gels, sprays, mousses and non-medicated
`
`balms for hair styling and hair care; hair lacquers; hair coloring and hair decolorant preparations;
`
`permanent waving and curling preparations; essential oils for personal use, (“Registrant’s
`
`Bouquet Goods”). The English translation of the trademark BOUQUET DE PRINTEMPS is
`
`a!“
`
`
`
`“spring bouque ”.
`
`The United States Patent and Trademark Office has refused registration of Applicant’s
`
`Marks in view of PIVOINES PRINTEMPS and BOUQUET DE PRINTEMPS.
`
`For the reasons set forth below, Applicant and Registrant, (“The Parties”), believe that their
`
`respective trademarks are capable of co-existing without confusion and Registrant provides its
`
`consent to registration of Appl icant’s Marks.
`
`1. Applicant has long used the trademark PRINTEMPS on retail store services
`
`and such use dates back to 1865. As a result of such use for over 150 years,
`
`PRINTEMPS is a famous mark with worldwide recognition.
`
`A substantial majority of US. purchasers has shopped in or knows of the
`
`PRINTEMPS retail store on the Boulevard Haussman.
`
`Registrant has knowledge of the PRINTEMPS store in Paris and Applicant’s
`
`long term use of PRINTEMPS and the fame of the mark.
`
`For these reasons alone, Registrant believes that registration of Applicant’s
`
`Marks will not result in purchaser confusion because Applicant’s long term
`
`use and promotion of PRINTEMPS in connection with retail store sevices
`
`evokes a distinct commercial
`
`impression that would negate any confusion
`
`resulting from Registrant’s use of Registrant’s PIVOINES Mark and
`
`Registrant’s BOUQUET Mark for the goods covered by the registrations.
`
`Additional reasons why The Parties believe Applicant’s Marks can co-exist on
`
`the United States trademark register with Registrant’s PIVOINES Mark and
`
`Registrant’s BOUQUET Mark without causing confitsion, mistake or
`
`all
`
`
`
`deception is due to the different commercial impressions evoked by the marks.
`
`Registrant’s PIVOTNES Mark pairs the word PRINTEMPS with PIVOINES
`
`to create a distinct
`
`trademark, PlVOINES PRINTEMPS, with a distinct
`
`meaning, namely SPRING PEONlES. Registrant’s BOUQUET Mark pairs
`
`the word PRINTEMPS with BOUQUET to create a distinct
`
`trademark,
`
`BOUQUET DE PRINTEMPS, with a distinct meaning, namely SPRING
`
`BOUQUET. Thus Applicant’s Marks do not look or sound like either of the
`
`cited trademarks, nor do they otherwise convey a similar meaning.
`
`6. The Parties also note that there are inherent differences in the nature and
`
`purposes of Registrant’s Goods such as perfumed soaps, perfumes, and body
`
`deodorants and Applicant retail store services that stocks a a variety of goods
`
`made by unrelated third parties.
`
`7.
`
`In the event either party becomes aware of public confilsion, they will advise the
`
`other. The parties will thereafier consider and take reasonable steps to prevent
`
`the likelihood of future confiision from occurring.
`
`For the reasons set forth above, Registrant consents to the use and registration of Applicant’s
`
`Marks for the services shown in Application Nos. 88474187 and 88478190 and will agree to
`
`execute additional Letters of Consent to aid in the registration of
`
`i'
`
`{‘5 Marks.
`
`Date:
`
`23/
`
`0 if
`
`2010
`
`Date: Feb. 25, 2020
`
`mewmmsmflm tam-316.9110
`
`160
`
`c
`563
`PRINTEMPS
`4/ W
`Siege sanguine PARIS
`PM wacf
`rue dePrograerggs PARIS
`M Cam
`PRINTE PS»!
`CodeAPE4719AidTVAFR21503314767
`
`
`
`
`
`L’OREAL
`
`4
`
`Delphine de Chalvmn
`General Counsel
`Intellectual Property 8- Medla
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
