UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85156935
MARK: AQUARIUS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: OASE GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal
THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Applicant’s mark is AQUARIUS, while the registered marks are AQUARIUS (U.S. Registration Nos. 0717876, 0981603, 3107989 and 3902416), AQUARIUS IRRIGATION SUPPLY and design (U.S. Registration No. 3044557) and PRISTINE AQUARIUS BULK WATER TREATMENT SYSTEM (U.S. Registration No. 3052093).
In this case, Applicant’s mark is identical to the marks in U.S. Registration Nos. 0717876, 0981603 and 3902416, and has a highly similar commercial impression to the marks in U.S. Registration Nos. 3044557 and 3052093 based on shared wording. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).
U.S. Registration No. 0717876
With respect to U.S. Registration No. 0717876, the parties specify identical and/or closely related International Class 011 “fountains”. Moreover, International Class 007, 009 and 011 “fountain” parts and lighting (such as those specified by the applicant) are frequently offered under the same mark and in the same channels of trade as “fountains” such as those identified in the cited registration.
U.S. Registration Nos. 0981603 and 3052093
As to cited U.S. Registration Nos. 0981603 and 3052093, the parties specify identical and closely related water treatment and filtering products in International Classes 007, 009 and 011. (See attached third party registrations.)
U.S. Registration No. 3044557
In this case, goods such as those identified by the applicant are frequently offered via retail and wholesale services such as those specified in the cited registration. (See attached third party registrations, as well as attached web page printouts from Registrant’s website.)
U.S. Registration No. 3107989
U.S. Registration No. 3902416
In this case, applicant’s “water features for public facilities … and interior spaces” are identified broadly. Therefore, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers. See In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); TMEP §1207.01(a)(iii). Moreover, “water pipes” and “overflows” (such as those identified by the applicant) are used with goods such as those specified in the cited registration.
Applicant must respond to the requirement(s) set forth below.
Identification and Classification of Goods
THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Therefore, applicant must amend the identification of goods by deleting the wording “UNIVERSAL” and substituting the common commercial or generic name for the goods.
The following wording in the identification of goods is unacceptably indefinite and must be clarified because it is not sufficiently clear for proper classification. Moreover, some of the wording is also too broad and could include goods classified in other international classes:
“industrial pumps, pumps for chemicals, in particular acid-proof pumps, coolant pumps, replacement parts for the aforesaid pumps”
“hydraulic and pneumatic controllers … mechanical recordings, …software sold as a component of control units for manually or automatically operating and controlling water fountain displays, such software containing programming for water and lighting displays associated with water fountains”
“electric light fixtures … water filtering apparatus, … pond filters, … fountain filters, and parts for the aforesaid goods, … water pipes, overflows, swimming pools and fountains; fountains and water features for public facilities, gardens, balconies and interior spaces”.
Applicant may amend the identification and classification to the following, if accurate. [Changes are noted in bold type.]
“Metal water pipes; metal swimming pools” [in International Class 006]
“Pumps in the nature of electric pumps and as parts of machines; electric pumps for liquids, sludge, suspended matter or floating materials on water surfaces; electric pumps for fountains, swimming pools, aquariums, water treatment systems and sprinkling devices; electric wet-pit pumps, rotary pumps, industrial pumps for the beverage industry, pumps for chemicals, in particular acid-proof centrifugal pumps, coolant pumps in the nature of refrigerant recovery pumps, and replacement parts for the aforesaid pumps, namely, {specify the types of replacement parts belonging in this class}” [in International Class 007]
“Electrical controllers, electronic controllers, and hydraulic and pneumatic controllers in the nature of flow regulators and switches, all for regulating the flow and flow direction of water in sanitary installations, water pipes, swimming pools, fountains, water treatment apparatus, water-filtering apparatus and water-purifying apparatus; and electrical and electronic controllers for lighting; sound recording and sound reproduction apparatus; computers and data-processing apparatus, namely, data processors; data carriers containing magnetic, optical or mechanical sound and video recordings and video films featuring information and details about fountains, water gardens and artificial lakes; software sold as a component of electric motor control units for manually or automatically operating and controlling water fountain displays, such software containing programming for water and lighting displays associated with water fountains” [in International Class 009]
“Lighting apparatus and installations, namely, electric lighting fixtures and landscape lighting installations and waterscape lighting installations; lighting apparatus, namely, UV lamps not for medical purposes, sterilizing lamps not for medical purposes; water treatment apparatus, namely, chemical sterilization units, water filtration units, water purification apparatus; water filters for use in ponds, aquarium filters, water filters for use in drinking fountains, and replacements parts for the aforesaid goods, namely, {specify types of replacement parts belonging in this class, e.g., replacement filters for use therewith}; filter devices and lighting devices therefor, namely, light bulbs and water filters; pressurized water purification apparatus, namely, separators for the cleaning and purification of water; plumbing fittings for sanitary installations, namely, tub overflows for swimming pools and fountains; tub parts, namely, tub overflows; decorative water fountains; ornamental fountains and water jets for use therewith, all for use in public facilities, gardens, balconies and interior spaces; water fountains, nozzles for use with fountains, namely, spray nozzles for water fountains, drinking fountains” [in International Class 011]
“Non-metal water pipes; non-metal swimming pools” [in International Class 019].
TMEP §§1402.01 and 1402.03. [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Combined Applications
(1) LIST GOODS/SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class; and
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
Application Pursuant to Sections 1(b) and 44(d)
Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.
Therefore, applicant must clarify the basis in the application by satisfying one of the following:
(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify. In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004. A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should respond to this Office action requesting suspension pending receipt of the foreign registration documentation. TMEP §1003.04(b).; or
(2) If applicant intends to rely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must specify that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
/Nelson B. Snyder III/
Trademark Examining Attorney
Law Office 107
(571) 272-9284
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.