Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86085747 AQUARIUS (Stylized and/or with Design, see http://uspto.report/TM/86085747/mark.png) has been amended as follows:

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

Response to office action dated 1/27/14.  Response due 7/27/14

 

Applicant amends the application to delete Classes 001 and 009.

 

Applicant amends the Class 010 description of goods as follows:

 

"Surgical, medical, dental and veterinary apparatus and instruments, namely feeding tubes."

 

Feeding tube is the common commercial or generic name for the goods Applicant seeks to register. 

 

Applicant amends the description of the mark as follows:

 

"The mark consists of the wording AQUARIUS in stylized form with a wave design underneath connected to the "A" in AQUARIUS."

 

Argument in response to the Section 2(d) Refusal:

 

Applicant has limited its description of goods to feeding tubes.  Accordingly, application submits that there will be no likelihood of confusion between its registration and RNs 1609629 (AQUARIUS for control units and logic systems for de-ionized fluid heating units), 2600983 (AQUARIUS WORKSTATION for computer hardware and software), 3781584 (AQUARIUS for renal replacement pumps, scales and weighing apparatus for use with fluid balance monitor pumps, extracorporeal blood circuit pumps and modules), 3417701 (AQUARIUS for lasers not for medical use), 1979789 (AQUARIUS for a multichannel computerized urodynamic monitor and processor), 2949860 (AQUARIUS for hydrophilic coatings), 4296885 (AQUARIUS for medical hearing aids), 4426019 (AQUARIUS for temperature therapy systems), and SNs 79133763 (AQUARIS stylized for goods in class 9) and 86010541 (AQUARIUS for oral irrigators, tips, replacement heads and attachments).  With respect to the foregoing registrations and applications, the goods travel in different channels of trade to different classes of consumers.  Moreover, the vast number of registrations already issued indicates that consumers in the field of medical goods are highly educated and not readily confused.

 

In addition, and with respect to the registration owned by Baxter International, RN3781584, Applicant and Registrant have entered into a Trademark Agreement in which Registrant has agreed that it shall not object to Applicant’s use or registration in respect of the following goods:

 

“Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; disposable medical and surgical apparatus and instruments; catheters; medical and surgical drains and drainage systems; drainage reservoirs for medical and surgical use; vascular ties and clamp covers; tubing for medical and surgical use; stethoscopes, probes for medical and surgical use; clamps for medical and surgical; parts and filling for all of the aforesaid; none of the aforementioned goods being, or for use with, haemofiltration apparatus and instruments.”

 

Feeding tubes fall within the category of “tubing for medical and surgical use.”

 

A true and correct copy of that agreement is submitted herewith.

 

Applicant believes that all issues raised by the Examiner have been addressed, and respecfully requests publication.

 

 

EVIDENCE
Evidence in the nature of Trademark Agreement with Baxter International has been attached. Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 001 for Chemicals used in science; unprocessed artificial resins, unprocessed plastics; silicone resins; excluding goods for use as coatings for pharmaceutical nutritional supplements

Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Scientific apparatus and instruments, none being weighing apparatus and instruments or scales, and none being, or for use with, haemofiltration apparatus and instruments; optical apparatus and instruments, none being, or for use with, haemofiltration apparatus and instruments; scientific apparatus and instruments and optical apparatus and instruments, not including pagers, paging systems, paging instruments and apparatus, paging receivers, paging interface apparatus for use with computers, alarm devices, alarms, alarm control apparatus, alarm sensors, alarm signalling apparatus, receivers and transmitters, alarms systems, encoders, location systems, lone worker alarms, nurse call systems or parts and fittings for all these aforesaid goods

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; disposable medical and surgical apparatus and instruments; catheters; medical and surgical drains and drainage systems; drainage reservoirs for medical and surgical use; vascular ties and clamp covers; tubing for medical and surgical use; stethoscopes; probes for medical and surgical use; clamps for medical and surgical use; parts and fittings for all the aforesaid; none of the aforementioned goods being, or for use with, haemofiltration apparatus and instruments
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Surgical, medical, dental and veterinary apparatus and instruments, namely feeding tubes; orthopaedic articles; suture materials; disposable medical and surgical apparatus and instruments; catheters; medical and surgical drains and drainage systems; drainage reservoirs for medical and surgical use; vascular ties and clamp covers; tubing for medical and surgical use; stethoscopes; probes for medical and surgical use; clamps for medical and surgical use; parts and fittings for all the aforesaid; none of the aforementioned goods being, or for use with, haemofiltration apparatus and instrumentsClass 010 for Surgical, medical, dental and veterinary apparatus and instruments, namely feeding tubes
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, 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/services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the wording AQUARIUS in stylized form with a wave design underneath connected to the "A" in AQUARIUS.

SIGNATURE(S)
Response Signature
Signature: /LuAnn Cserr/     Date: 04/08/2014
Signatory's Name: LuAnn Cserr
Signatory's Position: Attorney of record

Signatory's Phone Number: 401-453-6400

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86085747
Internet Transmission Date: Tue Apr 08 14:38:42 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XX.X.XX-201404081438423545
58-86085747-500c2fbd8c2ca8436911afd65a5f
57c36aa19ecc9981b4f13e5588d3699c9e8-N/A-
N/A-20140408135756490564