/
`
`TRA. MARK EXAMINATION WORKS
`
`lET
`
`El AMENDMENTSTAGE
`
`Name:DEBORAH_MARTIN
`
`><NOCHANGE
`L.o.101_ Date_2/
`
`'
`
`UBLICATION/REGIS)§§AIION
`1
`Serial No. 75/
`6 S ,
`Z
`
`\
`
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`‘
`Data Element
`
`El Goods and Services
`El First Use in Commerce Date
`El Certification
`
`.
`
`Cl Pseudo Mark
`El Design Search Code
`
`Le 1 al Instrument Examiner LIE
`
`__
`
`Class Data
`
`El Prime/Intemational Class
`_ El First Use Date
`- E!
`In Another Form .
`
`‘
`Mark Data -’ El Word Mark
`_ El Mark Drawing Code
`- El Scan Sub Drawing
`Misc. Mark Data _ El Mark Description
`_ El Lining/Stippling
`
`Other:
`
`orrespbndence-
`- —
`—
`I certify that all corrections have been entered in accord '
`lith xt editing guidelines.
`1)
`'
`i
`
`'
`
`El Disclaimer
`D" Name/Portrait/Consent,
`
`‘
`
`—-
`
`Section 2(1) - El Section 2a) Entire Mark
`,‘ - El Section 2(i) Limitation Statement
`
`El Section 2(i) in Part
`
`-—
`
`Foreign Reg. Data—
`
`—_-—
`
`awnewata—
`-
`
`v
`
`Cl Composed of
`El Entity Statement
`- .
`
`—- C
`
`I
`
`z 3
`
`.
`
`L E
`
`'
`
`_2/ (\3’01
`
`DATE
`
`

`

`SOU AMENDMENT WORKSHEET
`
`NAME: Mary Cowan
`DATE10/04/2000
`
`SERIAL NUMBER 75/ 385419
`
`INSTRUCTIONS: The dates of use and/or deletion
`
`to goods have been entered in the file. The Text
`Editor should check the “Entered column after the
`
`amendment has been entered in the database.
`
`SCREEN CODE
`
`RETAIN IN APPLICATION FILE
`AMENDED
`ENTERED
`
`AMENDED TO :
`
`CL
`
`X
`
`X
`
`DATE OF 1 USE
`IN COMMERCE
`
`
`
`
`
`NC/99 __
`C
`CORRESP.
`<
`
`DELETE (GS)
`
`I
`
`PY
`
`GOODS &
`SERVICES
`INTERNATIONAL
`CLAS S
`APPLICANT
`<>NAME
`< >ADDRESS
`<>ENTITY TYPE
`<>CITIZENSHIP
`ASSIGNMENT/
`
`>NAME
`< >ADDRESS
`
`

`

`
`
`
`
`OTHER INFORMATION OR
`
`AMENDMENTS:
`
`Init.
`
`MC
`
`Date.
`
`All indicated amendments(s) have been entered in the database in
`accordance with the above instructions and text editing guidelines.
`
`10/02/2000
`
`

`

`|llllll'lllll|||||||l||l|||||||ll|||||||||l||||||||
`
`Applicant:
`
`Serial N0.:
`
`Filed:
`
`Mark:
`
`Class:
`
`JAGUAR CARS LIMITED
`
`75/385,419
`
`October 30, 1997
`
`JAGUAR AND DESIGN
`
`International Class 8
`
`2%
`
`mifiNTED
`
`03-08—2000
`U.S. Patent & TMOfc/TM Mail Ficpt DI. #30
`1- , THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`35:91.93 0?
`
`Attorney Ref. N0.:
`
`JAGU 0103 TUS
`
`SECOND REQUEST FOR EXTENSION OF TIME
`UNDER 37 CFR 2.89, TO FILE A STATEMENT OF USE
`
`ASSISTANT COMMISSIONER FOR TRADEMARKS
`
`2900 Crystal Drive
`Arlington, Virginia 22202—3513
`
`Sir:
`
`Pursuant to 37 CFR 2.89, Applicant, JAGUAR CARS LIMITED, requests an additional
`
`six~month extension of time to file the Statement of Use under 37 CFR 2.88. The mailing date
`
`of the Notice of Allowance was May 25, 1999.
`
`Applicant has a continued bona fide intention to use the mark in commerce in connection
`
`with the goods identified in the Notice of Allowance.
`
`This is the second request for an extension of time following mailing of this Notice of
`
`Allowance. Applicant has not used the mark in commerce yet in connection with the goods
`
`identified in the Notice of Allowance because Applicant is still in the process of developing the
`
`product line. An additional six months is, therefore, necessary to submit a Statement of Use and
`
`is hereby respectfully requested.
`WEWEOOG Ei-étiflfiii
`001300014 mails-us
`
`‘31 $654393
`
`

`

`willful false statements may jeopardize the validity of the application or any resulting registration,
`
`declares that she is properly authorized to execute this Request for Extension of Time to File a
`
`Statement of Use on behalf of the applicant, she believes the applicant to be the owner of the
`
`trademark sought to be registered; and all statements made of her own knowledge are true and all
`
`statements made on information and belief are believed to be true.
`
`JAGUAR CARS LIMITED
`
`By: /
`
`Eliza
`
`th F. Jan a
`
`thorized Domestic Representative with
`Power of Attorney
`
`ECL—ARAM
`
`The undersigned being hereby warned that willful false statements and the like so
`
`made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such
`
`Dated:
`
`

`

`Hill!"I"HUI"!!!WNW!!!”"Ilium"!
`
`U.
`
`03-08-2000
`.
`S Patent& TMOTc/TM Mail ficptDt #30
`
`Applicant:
`
`Serial No.:
`
`Filed:
`
`Mark:
`
`Class:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`er 30, 1997
`
`JAGUAR and Design
`
`International Class 8
`
`Attorney Ref. No.:
`
`JAGU 0103 TUS
`
`March 8, 2000
`
`(Date of Deposit)
`
`By: Michelle L. White
`
`(Sig
`
`ture)
`
`LETTER OF TRANSMITTAL
`
`Commissioner of Patents and Trademarks
`Box ITU Fee
`Arlington, Virginia 22202—3513
`.
`Sir:
`
`Enclosed for filing please find the following:
`
`1.
`
`2.
`
`I hereby certify pursuant to 37 C.F.R. § 18 that this correspondence is being deposited with the United States Postal
`Service via express mail #EL481732891US in an envelope addressed to : Commissioner of Patents and Trademarks,
`Box ITU Fee, Arlington, Virginia 22202-3513 on:
`
`Dated: March 8, 2000
`
`is
`§3:).
`‘0
`:73
`l
`J:
`
`U N
`
`J:an
`
`Second Request for Extension of Time to File a Statement of Use.
`
`A check in the amount of One Hundred Fifty ($150.00) Dollars for the filing fee.
`
`Please charge any additional fees or credit any overpayment to our Deposit Account N0. 02-3978.
`A copy of this Transmittal Letter is enclosed.
`
`Respectfully submitted,
`
`JAGUAR CARS LIMITED
`
`BROOKS KUSHMAN P.
`
`lizabe F. Jand
`
`Atto eys for App 'cant
`1000 Town Center
`
`Twenty-Second Floor
`Southfield, Michigan 48075
`(248) 358—4400
`
`

`

`lllllllllllllllllllllllllllllllllllllIllllllllllll
`
`03-08-2000
`US. Patent & TMOfcITM Mail cht Di. #30 N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Serial No.:
`
`Filed:
`
`Mark:
`
`Class:
`
`JAGUAR CARS LIMITED
`
`75/385,419
`
`October 30, 1997
`
`JAGUAR and Design
`
`International Class 8
`
`Attorney Ref. N0.:
`
`JAGU 0103 TUS
`
`I hereby certify pursuant to 37 C.F.R. § 18 that this correspondence is being deposited with the United States Postal
`Service via express mail #EL481732891US in an envelope addressed to : Commissioner of Patents and Trademarks,
`Box ITU Fee, Arlington, Virginia 22202-3513 on:
`
`Dated: March 8, 2000
`
`March 8 2000
`(Date of Deposit)
`
`By: Michelle L. White
`
`.
`
`.
`(Signature)
`
`j
`
`.
`
`'
`'
`i )A/c» .
`
`LETTER OF TRANSMITTAL
`
`Commissioner of Patents and Trademarks
`Box ITU Fee
`
`Arlington, Virginia 22202-3513
`
`Sir:
`
`Enclosed for filing please find the following:
`
`1.
`
`2.
`
`Second Request for Extension of Time to File a Statement of Use.
`
`A check in the amount of One Hundred Fifty ($150.00) Dollars for the filing fee.
`
`Please charge any additional fees or credit any overpayment to our Deposit Account No. 02-3978.
`A copy of this Transmittal Letter is enclosed.
`
`Respectfully submitted,
`
`JAGUAR CARS LIMITED
`
`1000 Town Center
`
`Twenty—Second Floor
`Southfield, Michigan 48075
`(248) 358-4400
`
`

`

`mmqnqqq 13:75
`lllllllIllllllllllllllllllllllllllllllllllllllllll
`
`81283-282835
`x
`1”
`BRDUKS 8‘
`
`K; is
`
`mm
`
`JAGUAR COLLECTION
`
`2483583351
`
`PAGE. @123
`P. 4/
`
`09-01 -1 999
`
`U.S.PaumG.TMO1c/TMMailficptDi.#40
`
`IN THE UNITED STATES FPATENT AND TRADEMARK OFFICE
`
`qlfil
`
`100.00 0P
`
`Applicant:
`
`Serial No.:
`
`Filed:
`
`Mark:
`
`Class:
`
`JAGUAR CARS LIMITED
`
`75/305,419
`
`October 30, 1997
`
`JAGUAR AND DESIGN
`
`International Class S
`
`Attorney Ref. No.:
`
`JAGlt‘l 0103 TUS
`
`REQUEST Pom EXTENSION OF mm
`
`“DAM37 R 2- W
`
`ASSISTANT COMMISSIONER FOR TRADEMARKS
`
`2900 Crystal Drive
`Arlington, Virginia 22202—3513
`
`Sir:
`
`In response to the Notice of Allowance mailed May 25. 1999, JAGUAR CARS
`
`LIMITED, requests a six-month extension of time to file the Statement of Use under 37 CFR.
`
`Applicant has a continued liona fide intenlion to use the mark in commerce in
`
`connection with the following goods:
`
`HAND TOOL KIT CONSISTlNlG OF PLIERS; SCREWDRI‘VERS AND
`WRENCH'ES FOR PROMOTIONAL USE RELATING TO THE. FIELD OF
`AUTOMOTIVE VEHICLES
`
`Those goods identified in the: Notice of Allowance in this apglication.
`
`This is the first request for an Extension of Time following mailing of this Notice
`
`of Allowance.
`
`09/07/1999 FllllCKl
`
`00000197 75305419
`
`01 H3364
`
`

`

`61263-262835
`61/69/1999 15:25
`RUG-31999 21.22 11
`BROOKS 8. KUalHMRN
`
`JAGUAR COLLECTION
`
`2483583351
`
`83
`PAGE
`P.85/13
`
`13mg:LARATION
`
`3.
`
`The undersigned being hat-limb}! Warned that willful false statements and the lilm so
`
`willful false Statements may jeopardize the. validity of the application or any resulting registration.
`
`declares that he is properly authorized togeexecute this Request for Extension of Time to File a
`
`Statement of Use on behalf of the applielimt, he believes the applicant to be the owner of the
`
`trademark sought to be registered; and mememeuts made of his own knowledge are true and all
`
`made are punishable by fine or imprisonélnent, or both, under 18 U.S.C. 1001. and that such
`
`statements made on information and belief are believed to be true.
`
`

`

`lllllllIlllllllllllllllllll|l|||l||||llll|llllllll
`
`Applicant:
`
`Serial No.:
`
`Mark:
`
`Class:
`
`JAGUAR CARS LIMITED
`
`75/385,419
`
`JAGUAR and Design
`
`International Class 8
`
`Attorney Ref. No.:
`
`JAGU 0103 TUS
`
`I hereby certify pursuant to 37 C.F.R. § 18 that this correspondence is being deposited with the United States Postal Service
`via express mail #EL450406614US in an envelope addressed to : Box NEW ITU FEE, Assistant Commissioner for
`>'—\
`Trademarks, 2900 Crystal Drive, Arlington, Virginia 2202-3513 on:
`
`September 11 1999
`(Date of Deposit)
`
`By: Michelle L. White
`
`(Si
`
`re)
`
`LETTER OF TRANSMITTAL
`
`Commissioner of Patents and Trademarks
`Box ITU Fee
`
`2900 Crystal Drive
`a Arlington, Virginia 22202—35 13
`
`'
`
`" Sir:
`
`09-01 -1 999
`U.S. Patent 5 TMOfc/TM Mail ficpt Dt. #40
`JE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Dated: September 1, 1999
`
`Enclosed for filing please find the following:
`
`1.
`2.
`
`Request for Extension of Time to File a Statement of Use.
`A check in the amount of One Hundred ($100.00) Dollars for the filing fee.
`
`Please charge any additional fees or credit any overpayment to our Deposit Account No.
`02-3978. A copy of this Transmittal Letter is enclosed.
`
`Respectfully submitted,
`
`JAGUAR CARS LIMITED
`
`BROOK/Si & KUSHMAN .C
`
`Attor eys for Ap lican
`1000 Town Center
`
`Twenty—Second Floor
`Southfield, Michigan 48075
`(248) 358-4400
`
`

`

`ll|||||Illllllllll||||||||lll||||||ll1|||||lll||||
`
`09-01-1999
`
`“'S‘P‘”"””M°'°”M M‘" “°"'°"“°,TE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Serial No.:
`
`Mark:
`
`Class:
`
`JAGUAR CARS LIMITED
`
`75/385,419
`
`JAGUAR and Design
`
`International Class 8
`
`Attorney Ref. No.:
`
`JAGU 0103 TUS
`
`(Si
`
`re)
`
`I hereby certify pursuant to 37 C.F.R. § 18 that this correspondence is being deposited with the United States Postal Service
`via express mail #EL450406614US in an envelope addressed to : Box NEW ITU FEE, Assistant Commissioner for
`Trademarks, 2900 Crystal Drive, Arlington, Virginia 2202-3513 on:
`‘1
`a
`September 1. 1999
`By: MichelleL.White W
`
`Dated: September 1, 1999
`
`(Date of Deposit)
`
`LETTER OF TRANSMITTAL
`
`Commissioner of Patents and Trademarks
`Box ITU Fee
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Sir:
`
`Enclosed for filing please find the following:
`
`1.
`2.
`
`Request for Extension of Time to File a Statement of Use.
`A check in the amount of One Hundred ($100.00) Dollars for the filing fee.
`
`Please charge any additional fees or credit any overpayment to our Deposit Account No.
`02-3978. A copy of this Transmittal Letter is enclosed.
`
`Respectfully submitted,
`
`JAGUAR CARS LIMITED.
`
`BROOKS & KUSHMAN .C
`
`HZ
`
`Atto eys for Ap lican
`1000 Town Center
`
`Twenty—Second Floor
`Southfield, Michigan 48075
`(248) 358-4400
`
`

`

`US. Patent and Trademark Office (PTO)
`
`Page 01 of 01
`
`ISSUE DATE OF NOA: May 25, 1999
`
`JANDA
`ELIZABETH F
`BROOKS 8 KUSHMAN PC
`1000 TOWN CTR 22ND FL
`SOUTHFIELD MI
`I-I8075
`
`'
`
`ATTORNEY
`REFERENCE NUMBER
`JAGU.OIO3.TU
`
`NOTICE OF ALLOWANCE
`(NOTE: If any data on this notice is incorrect, please submit a written request for correction of the NBA to: Assistant Commissioner for Trademarks,
`Box ITU, 2900 Crystal Drive, Arlington, VA 22202-3513. Please include the serial number of your application on ALL correspondence with the PTO,
`15 U.S.C. 1063(b)(2))
`
`ADDITIONAL INFORMATION MAY BE PRESENT IN THE PTO RECORDS
`
`The followigg information should be reviewed for accuracy:
`
`SERIAL NUMBER: 75/385h19
`MARK:
`JAGUAR (AND DESIGN)
`OWNER:
`JAGUAR CARS LIMITED
`Brown Lane
`AIIesIey
`Coventry CV5 9BR, ENGLAND
`
`GOODS/SERVICES BY INTERNATIONAL CLASS
`
`DOB-HAND TOOL KIT CONSISTING OF PLIERS; SCREWDRIVERS AND WRENCHES FOR PROMOTIONAL USE
`RELATING TO THE FIELD OF AUTOMOTIVE VEHICLES
`ALL OF THE GOODS/SERVICES IN EACH CLASS ARE LISTED
`
`—_________—__—______—__—_———————————-—————-
`
`m”"‘“" °”°"'
`
`

`

`UNITED STA'
`
`DEPARTMENT OF COMMERCE
`
`Iemark Office
`,Patent and Ti
`ASSISTANT COMMISSIONER FOR TRADEMARKS
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Jan 29, 1999
`
`NOTICE OF PUBLICATION UNDER 12(a)
`
`1. Serial No.:
`75/385,419
`
`3. International Classles):
`8
`
`2. Mark:
`JAGUAR
`and design
`
`4. Publication Date:
`Mar 2, 1999
`
`5. Applicant:
`JAGUAR CARS LIMITED
`
`The mark of the application identified appears to be entitled to registration. The
`mark will,
`in accordance with Section 12(a) of the Trademark Act of 1946, as
`amended, be published in the Official Gazette on the date indicated ,above for the
`purpose of opposition by any person who believes he will be damaged by the
`registration of the mark.
`If no opposition is filed within the time specified by
`Section 13(a) of the Statute or by rules 2.101 or 2.102 of the Trademark Rules,
`the Commissioner of Patents and Trademarks may issue a notice of allowance
`pursuant to section 13(b) of the Statute.
`
`PCFDLR (REV 12/9 7)
`
`Copies of the trademark portion of the Official Gazette containing the publication
`of the mark may be obtained at $38.00
`each for domestic orders, or at $47.50
`each for foreign orders from:
`
`The Superintendent of Documents
`US. Government Printing Office
`PO Box 371954
`Pittsburgh, PA 15250—7954
`Phone: (202)512-1800
`
`By direction of the Commissioner.
`
`

`

`ELIZABETH F JANDA
`BROOKS & KUSHMAN PC
`1000 TOWN CTR 22ND FL
`SOUTHFIELD MI
`
`48075
`
`

`

`PUBLICATIUII/REGISTRATION EXAMINATION WOhn éHEET
`
`Serial No:
`
`1i
`
`3 m Register:
`
`_ .
`i..... MDC:
`
`AM
`la:
`
`nm w
`
`State/Country
`'
`
`Zip
`
`ange:
`
`.
`
`.
`
`US. Class:
`First Use in Commerce:
`
`lnter
`Address:
`ssrgnmen or ame
`NC
`co Composed of:
`lntemational Class:
`First Use:
`.reL
`:cs Goods and Services:
`cs
`65
`
`l
`
`Date: _
`101
`L0:
`{Re-viewer: caro'yn Spriggs
`’
`i I'mcertify all information in the database matched the information in the file and no corrections were required.
`if the information in the database does not match the information in the file the reviewer should check the ERROR column. After correction
`I INSTRUCTIONS:
`www-m—mm—"me............
`jgfling). the EDITED column should be checked.
`RETAIN lN FILE WRAP.
`ERROR FOUND DURING REVIEW REQUIRING AMENDMENT OF:
`
`Text Editor
`
`.
`
`
`
`‘
`GS
`i 1(b) Claimed:
`18
`i m ' Disclaimer.
`5 W l Descri tion of Mark:
`Ls
`i Lining and Stippling Statement:
`TR
`Translation of Words in Mark:
`NO Name/Portrait Descri tion/Consent:
`n:
`
`Added
`
`Deleted C]
`
`Section 2(f): CUEntire Mark
`El In Part
`[3 Limitation Statement:
`Use in Another Form:
`65" ertification Statement:
`Concurrent Use Statement:
`
`Prior U.S. Registrations:
`PR DomesticReresentative:
`
`F7"
`FN
`
`'Foreign Country of Origin:
`Foreign A plication No:
`
`Frgn. Appl. Filing Date:
`
`.:
`
`_;
`
`a
`
`CD
`
`Other:
`
`‘
`
`FN
`
`Foreign Registration No:
`
`Frgn. Reg. Date:
`
`i
`
`,
`
`AT AttomeyName:
`[:1 Name
`Correspondence:
`. A" AttomeyDocket Number:
`‘
`'
`
`City/State/Zip
`’ Cl Inter St. Address
`
`
`
`
`certify that all corrections have been entered in accordance with the above instructions and text editing guidelines.
`
`—M:L___.
`
`...........
`
`

`

`ABRNDMENT EXAMINATION WORK '
`LO:
`:
`SeriaiNo:
`
`Amended Re ister:
`Amended Re Date:
`
`PR:
`
`SR:
`
`_
`
`US Class:
`First Use in Commerce:
`
`Cl Zi
`DState/Count
`CiC'
`Address: Ct Inter
`. Assi - nment or Name Chan e:
`%I
`
`'
`
`Name/PoflmitDescti o ion/Consent:
`Section 2(f):
`DEntine Mark
`D
`D
`
`'
`
`ntry of Origin:
`Application No:
`
`;
`
`‘ 0'
`gistratton Renewed Expiration Date:
`Attorney Name:
`Name
`Corres - ondence:
`A
`ttomey Docket Number:
`
`[2 inter St. Addr
`ess
`
`'
`:cn IStatelZi
`
`Text Editor
`
`

`

`UNITED S r ATES DEPARTMENT OF COIHMERCE
`Patent and Trademark Office
`
`SERIAL NO.
`"system. :1
`
`APPLICANT
`3121 Emma: mans: L t M 3: Tan
`
`MARK
`.3Trustiaiz: out: {vagrant
`
`E L Z
`BRIDE! l“: S 334
`
`Ming},
`H F
`1"»: L5 EQHMRN F‘ 1:3
`
`“13311501 CTR LZENE' F'L.
`1 131313
`EiQUTHF I EL- 13 M}:
`‘15:: ’3 7 5
`
`7
`
`‘3
`
`I
`
`MAILING DATE
`i [E / Cl :55 f '93.
`
`FORM PTO-1525 (5-90)
`
`u.s. DEPT. OF COMM. PAT. & TM OFFICE m‘L’iU U 1 “3 TU
`
`'8 AMENDMENT
`
`ADDRESS:
`Assistant Commissioner
`for Trademarks
`
`2900 Crystal Drive
`.
`t
`_
`“1mg ‘m’VAmm 3513
`Ifno fees are enclosed, the address should
`inclIJde the words "Box Responses - No Fee. ”
`
`Please provide in all correspondence:
`
`1. Filing Date, serial number, mark and
`Applicant's name.
`. Mailing date ofthis action.
`. Examining Attorney's name and
`law Office number.
`. Your telephone number and ZIP code.
`
`(703) 308-9101 ext. 144
`
`OFFICE SEARCH: The examining attorney has searched the Office records and has found no similar registered or
`pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP
`section 1105.01.
`RE: Serial Number 75/385419
`the application has been
`In accordance with the authorization granted by the above Applicant or attorney,
`AIVIENDED as indicated below. No response is necessary unless there is an objection to the amendment.
`
`October 6, 1998
`
`CALL RECORD/NOTES
`
`Identification of Goods
`
`The identification of goods has been amended to:
`
`screwdrivers and wrenches for
`Hand tool kit consisting of pliers;
`promotional use relating to the field of automotive vehicles.
`
`The refusal issued pursuant to Section 2(d) has been withdrawn.
`
`Laurie S. Mintzer é
`Trademark Examining Attorney
`Law Office 101
`
`

`

`
`
`i INstRUCTXONS: To certify amendments the RU. Clerk shouid check the ’AME 050' column. The Ten Editor shoutd chock ‘EN'IERED' aim the amendment has be.“
`I entered.
`RETAIN IN FILE.
`
`53"
`
`Fiat;-
`
`DState/Count
`
`US Class:
`First Use in Commerce:
`
`Deleted a
`
`'
`
`AMENDED rm
`:scxeeumuenoeoieureneol
`f _m Mark Type:
`Register:
`' AM _'=rmi Mark:
`: wt Amended Reisten
`l
`Amended Re Date:
`Owner:
`CiName:
`EJCitizenshi:
`EIEnt' Te:
`E] Entity Statement:
`DBNAKAITAStatement:
`-
`DCi
`—_ W Address:
`[Zilnter
`Assi nment or Name Chan e:
`ml Com osed of:
`E IntemationalCiass:
`First Use:
`1' i Goods and Services:
`
`'1 Text Editor
`
`
`1(b) Claimed: Added E]
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`[oil use at e .
`3‘ I’Ol' uzl.
`'15"
`' i
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`g Stateme :
`--ém--i T nslatio ofWordsi Mark:
`Name/Portrait escn' ion/Consent:
`'- Sectionzm:
`DEntire Mark
`Ciln Part
`EILimitation Statement:
`: Usein Another Form:
`; Certification Statement:
`Concurrent e Statement:
`- PriorUS Reistrations:
`DomestioRerésentative:
`Foreign Country'of Origin:
`oreignAppiIcatron o:
`
`/
`
`Frgn.Appi.Fiiing Date:
`
`oreign Registration No:
`orergn egi re 1.: __
`_ plra ran a e:
`
`Frgn. Reg. Date:
`
`‘
`
`oratgn enewa eg. a:
`Foreign Registration Renewed
`an: Attorney Name:
`I
`EIName
`too: Con'esondence:
`I
`_m Attomey‘ Docket Number:
`
`piration Date:
`
`rgn. eg. enewe:
`
`E1 Inter St. Address
`
`ECity/State/Zi
`
`

`

`U.S. Panama TMOfc/TM Mall Rep! DE. #33
`Hutummmummmmunumuuuum
`08-07-1998
`
`lvo"/ ’/ ,.,
`
`TRADEMARK LAW OFF CE 101
`SERIAL NO. 75/385,419
`MARK: JAGUAR AND DESIGN
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Mark:
`
`Jaguar Cars Limited
`
`JAGUAR AND DESIGN
`
`Serial No.:
`
`75/385,419
`
`Filed:
`
`Class:
`
`October 30, 1997
`
`8
`
`Trademark Atty.:
`
`Laurie Mintzer
`Law Office 101
`
`Attorney Ref. No.:
`
`JAGU 0103 TUS
`
`Auggst 4, 1998
`(Date of Deposit)
`
`by Elizabeth F. Janda
`(Name of Person Signing)
`
`I hereby certify that this correspondence is being deposited with the United States Postal Office as first-class mail in an
`envelope addressed to: BOX RESPONSES-NO FEE, Assistant Commissioner for Trademarks, 2900‘C
`'
`Arlington, Virginia 22202-3513 on
`
`February 4, 1998.
`
`RESPONSE TO OFFICE ACTION NO. 1
`
`BOX RESPONSES - NO FEE
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Sir:
`
`This document is filed in response to the Examiner's Office Action No. 1, mailed
`
`

`

`SERIAL NO. 75/385,419
`
`A.
`
`Re uest For Amendment Of Desi
`
`ation Of Goods
`
`In accordance with the Examiner’s request, please amend the designation of goods
`
`m.
`
`6 M to read as follows:
`V
`
`mark is a strong and famous mark which would not be confused with the cited marks owned by
`
`equipment. These two cited marks are owned by "Jaguar" Stahlwarenfabrik GmbH & Co. of
`
`recommendation, and is proper in accordance with 37 CPR. 2.71(b) and T .M.E.P. § 804.09.
`
`B.
`
`Request For Reconsideration 01' Section 21d) Refusal
`
`The Applicant respectfully requests the Examiner reconsider her objection under
`
`15 U.S.C. § 1052(d), and the citations to a registration for "JAGUAR AND CAT DESIGN",
`
`Registration No. 1,034,661, and a pending application Serial No. 75/162,097 for a variation of
`
`that design mark for use in connection with cutlery, razors, knives, and manicure and pedicure
`
`Germany. As noted by the Examiner,
`
`the law requires consideration of all circumstances
`
`surrounding the sale of goods, including the degree of similarity between the marks and between
`
`the goods and services, the respective marketing channels, and the nature of the prospective
`
`purchasers.
`
`Industrial Nuclear Corp. v. Hinde Engineering Co. 475 F.2d 1197, 177 U.S.P.Q.
`
`386 (CCPA 1973).
`
`The Applicant submits that its distinctive "JAGUAR PLUS LEAPER DESIGN"
`
`

`

`SERIAL NO. 75/385,419
`
`TRADEMARK
`
`"Jaguar" Stahlwarenfabrik GmbH & Co. The Applicant's mark creates an entirely different
`
`commercial impression in the marketplace, and does not create a likelihood of confusion as to the
`
`source or origin of its respective goods and services.
`
`The Applicant‘s mark contains its distinctive and famous "JAGUAR PLUS
`
`LEAPER DESIGN, " which is well recognized in the United States and throughout the world, and
`
`is registered in the United States in connection with a wide variety of goods and services. The
`
`of promotional items sold in the United States and worldwide which feature and promote the life
`
`style associated with the vehicles bearing the famous "JAGUAR PLUS LEAPER DESIGN " mark.
`
`While this Applicant is not the only entity to have developed rights in "JAGUAR" for a variety
`
`of goods or services, Jaguar Cars Limited is the only entity with the right to use its strong design
`
`mark. The presence of Applicant‘s "LEAPER DESIGN" mark eliminates any potential of
`
`confusion as to the source or origin of Applicant's goods.
`
`"Jaguar" Stahlwarenfabrik’s cited marks include an entirely different car design,
`
`which is quite different than Applicant's mark "JAGUAR PLUS LEAPER DESIGN, " and
`
`Applicant's principal goods are its famous automotive vehicles, and it also has an extensive line
`
`pedicure utensils. Applicant seeks to register its "JAGUAR AND LEAPING CAT DESIGN " for
`
`distinctive Leaper Design.
`
`In addition, the respective goods and services are different. In the cited registration
`
`and pending application, the referenced goods are cutlery, razors, knives, and manicure and
`
`

`

`SERIAL NO. 75/385,419
`
`TRADEMARK
`
`use in connection with its "hand tool kits consisting of pliers; screwdrivers and wrenches."1
`
`Applicant‘s goods are not used for personal grooming, and do not contain knives and cutlery.
`
`Applicant‘s tool kit is to be kept in the automobile, contains tools used for minor adjustments and
`
`repairs of that automobile, and does not contain razors. No prospective customer would assume
`
`that Applicant's tool kit bearing its "JAGUAR PLUS LEAPER DESIGN " mark comes from the
`
`same source as the Registrant‘s pedicure and manicure kits or cutlery and razors.
`
`The channels of trade further eliminate any likelihood of confusion. The products
`
`of Jaguar Cars Limited and the Registrant are sold through entirely different channels of trade,
`
`and would be marketed in a way which would eliminate any likelihood of confusion as to the
`
`source or origin of the respective goods and services. The Applicant's products would be
`
`purchased by an individual as a prestige product specifically because of the association with
`
`"JAGUAR" cars and the famous and distinctive "JAGUAR PLUS LEAPER DESIGN" mark.
`
`5‘32?
`
`For further clarification, Applicant would be willing to amend the designation of
`1
`goods to read " hand tool kit consisting of pliers; screwdrivers and wrenches for promotional use
`relating to the field of automotive vehicles." If this limitation on the nature of the goods would
`provide sufficient clarification, please advise.
`
`Applicant's goods are sold through its own catalogs and dealers or in upscale retail settings, and
`
`are clearly associated with "JAGUAR" cars. The source of these products is quite clear to the
`
`purchasing public. Concurrent use of these marks in their respective markets would not confuse
`
`the public. There is no likelihood of confusion between Jaguar Cars Limited's use of its strong,
`
`distinctive and previously registered mark "JAGUAR PLUS LEAPER DESIGN" and the use of
`
`the cited marks by the cited Registrant on these non-identical goods.
`
`fi
`
`.43
`
`

`

`SERIAL NO. 75/385,419
`
`TRADEMARK
`
`For the foregoing reasons, Applicant asserts that its mark and goods are clearly
`
`refusal. The Applicant's mark is registerable as a source indicator for the designated goods.
`
`The Applicant submits that its mark is now in a form suitable for registration on
`
`the Principal Register and respectfully requests such action.
`
`Should the Examiner require
`
`additional information or have further questions, she is requested to contact undersigned counsel.
`
`Respectfully submitted,
`
`BROOKS & KUSI-HVIAN RC.
`
`1000 own Center, 22nd
`
`oor
`
`Southfield, Michigan 4 075
`(248) 358—4400
`
`distinguishable by the cited registration and requests that the Examiner withdraw her Section 2(d)
`
`Dated: August 4, 1998
`
`

`

`UNITED STATES DEPARTMENT OF C(QMERCE
`
`Patent and Trademark Office
`
`7 APPLICANT
`
`PAPER NO.
`
`,
`NO.
`
`7
`
`MAlLING DATE
`
`ADDRESS:
`Assistant Commissioner
`for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`If no fees are enclosed, the address should include the
`words "Box Res onses - No Fee."
`Please provide in all correspondence:
`
`1. Filing Date, serial number, mark and
`Applicant's name.
`2. Mailing date of this Office action.
`3. Examining Attomey‘s name and
`Law Office number.
`4. Your tele hone number and ZIP code.
`
`FORM PTO 1525 (5-90)
`
`U5. DEPT. OF COMM. PAT. 8- TM OFFICE
`
`JAGUAR because it is the literal portion of the mark. The literal portions are the dominant and
`
`In determining whether there is a likelihood of confusion, the examining attorney must consider all
`circumstances surrounding the sale of the goods. Industrial Nucleonic Corp. v. Hinde Engineering
`Co., 475 F.2d 1197, 177 USPQ 386 (CCPA 1973). These circumstances include the marketing
`channels, the identity of the prospective purchasers and the degree of similarity between the marks
`and between the goods.
`In comparing the marks, similarity in any one of the elements of sound,
`appearance or meaning is sufficient to find a likelihood of confusion.
`If the goods of the parties
`differ, it is necessary to Show that they are related in some manner.
`In re Mack, 197 USPQ 755
`(TTAB 1977).
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed.
`Please attach it to the upper right corner ofyour response. Ifthe label is not enclosed, print or type
`the Trademark Law Office No, Serial No, and Mark in the upper right corner ofyour response.
`
`RE: Serial Number: 75/385419
`
`The assigned examining attorney has reviewed the referenced application and determined the
`following.
`
`_ Likelihood of Confusion
`The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section
`1052(d), because the applicant's mark, when used on or in connection with the identified goods, so
`resembles the mark in US. Registration No. 1034661 as to be likely to cause confusion, or to cause
`mistake, or to deceive. TMEP section 1207. See the enclosed registration.
`
`The applicant applied to register the mark JAGUAR with a design of a jaguar. The registrant’s
`mark is JAGUAR with a design of a jaguar. The dominant portion of the parties’ marks is the term
`
`

`

`75/385419
`
`-2—
`
`most significant features of marks because consumers will call for the goods or services in the
`marketplace by that portion.
`In re Appetito Provisions C0., 3 USPQ2d 1553 (TTAB 1987); In re
`Drug Research Reports, Inc, 200 USPQ 554 (TTAB 1978). For this reason, the examining
`attorney must give greater weight to the literal portions of the marks in determining whether there
`is a likelihood of confusion. Thus, the dominant portion of the applicant’s mark and the dominant
`portion of the registrant’s mark are identical. The examining attorney must look at the marks in
`their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more
`significant in creating a commercial impression. Greater weight is given to that dominant feature in
`determining whether there is a likelihood of confusion.
`In re National Data Corp, 224 USPQ 749
`(Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc, 534 F.2d 915, 189 USPQ 693 (CCPA 1976).
`In re JM Originals Inc, 6 USPQ2d 1393 (TTAB 1988).
`
`The applicant’s goods are “toolkit containing pliers, screwdrivers and wrenches.” The registrant’s
`relevant goods are razors, razor blades, safety-razors and wording knives. The parties’ goods are
`related because the registrant’s goods may be included in a tool kit. Please note that the term
`“razors” in the registrant’s identification of goods is extremely broad and may include all types of
`razors including razors used to cut cardboard. The goods of the parties need not be identical or
`directly competitive to find a likelihood of confusion. They need only be related in some manner,
`or the conditions surrounding their marketing be such, that they could be encountered by the same
`purchasers under circumstances that could give rise to the mistaken belief that the goods come from
`a common source.
`In re Martin’s Famous Pastry Shoppe, Inc, 748 F.2d 1565, 223 USPQ 1289
`(Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223
`USPQ 830 (TTAB 1984); Guardian Products C0., Inc. v. Scott Paper C0., 200 USPQ 738 (TTAB
`1978); In re International Telephone & Telegraph Corp, 197 USPQ 910 (TTAB 1978).
`
`Hand tool kit consisting of pliers; screwdrivers and wrenches.
`
`Overall, the similarities among the marks and the goods are so great as to create a likelihood of
`confusion. The examining attorney must resolve any doubt regarding a likelihood of confusion in
`favor of the prior registrant.
`In re Hyper Shoppes (Ohio), Inc, 837 F.2d 463, 6 USPQ2d 1025
`(Fed. Cir., 1988).
`
`lnformalities
`
`Although the examining attorney has refused registration, the applicant may respond to the refusal
`to register by submitting evidence and arguments in support of registration.
`If the applicant
`chooses to respond to the refusal to register, the applicant must also respond to the following
`informalities.
`
`! Identification of Goods
`The applicant must amend the
`The identification of goods is unacceptable as indefinite.
`identification to specify the common commercial name of the goods.
`If there is no common
`commercial name, the applicant must describe the product and its intended uses. TMEP section
`804.
`
`The applicant may adopt the following identification of goods, if accurate:
`
`Class 08:
`
`

`

`75/385419
`
`-3-
`
`Please note that, while an application may be amended to clarify or limit the identification,
`additions to the identification are not permitted. 37 CPR. Section 2.71(b); TMEP section 804.09.
`Therefore, the applicant may not amend to include any goods that are not within the scope of goods
`set forth in the present identification.
`
`Claim of Prior Registration
`The applicant's claim of ownership of Registration No. 1,891,968 will not be printed on any
`registration which may issue from this application because the registration is unrelated to this
`application. TMEP section 812.
`
`If the applicant has any questions or needs assistance in responding to this Office action, please
`telephone the assigned examining attorney.
`
`Laurie Mintzer
`Trademark Examining Attorney
`Law Office 101
`
`Prior Pending Application
`In addition to the registration cited above, the examining attorney encloses information regarding
`.357 gig, pending Application Serial No. 75/162097. There may be a likelihood of confusion between the
`\J
`' two marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
`If the referenced
`w'1'} "L
`application matures into a registration, the examining attorney may refuse registration in this case
`k
`under Section 2(d). 37 C.F.R. Section 2.83; TMEP sections 1208.01 and 1208.01(b