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 07/31/2017)

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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 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86858400 AQUAFLEX(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86858400/large) has been amended as follows:

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

The Examiner has refused the subject application for likelihood of confusion with registration 3983286. The registered mark is identical to the applied-for mark AQUAFLEX, however the goods for the applied-for mark are sufficiently distinct to avoid confusion in commerce. As indicated by the Examiner in the Office Action dated 4- 15-2016, the description of goods for the registered mark are as follows: IC 19: Soft, synthetic, non-metal chlorine resistant surfaces for indoor and outdoor waterplay environments, playgrounds, sports terrains and play areas. The description of goods for the applied-for mark, as filed, was as follows: Material used to remove contaminants from air, water and soil. The Examiner also claimed that the applied-for description of goods was indefinite and required clarification. The following descriptions were suggested, if appropriate: - material used to remove contaminants from air, water, and soil, namely, cloths impregnated with a detergent for cleaning (INT. CLASS 3) - material used to remove contaminants from air, water, and soil, namely, filters and purifiers for removing contaminants from gases used in the semiconductor industry (INT. CLASS 7) - material used to remove contaminants from air, water, and soil, namely, external filtering device for use in a local containment area for removing oil and other contaminants from storm drain effluent as it exits storm water systems (INT. CLASS 11) - material used to remove contaminants from air, water, and soil, namely, cleaning cloths (INT. CLASS 21) Please amend the applied-for description of goods to the following: IC 11: Material used to remove contaminants from air, water, and soil, namely external filtering device for use in local contaminant area for removing oil and other contaminants from affected areas. The subject mark, representing the amended described goods in IC 11, is not likely to be confused with the registered mark (reg. 3983286) representing goods in IC 19. The registered mark presently coexists with several identical marks which are registered, each with slightly different descriptions of goods in other classes, as followed (attached): AQUAFLEX IC 05: Solid gel for use with electromedical ultrasonic imaging equipment (filing date Dec 5, 1985) IC 01: Chemicals used to produce water-blown flexible urethane foam (filing date Jan 16, 1996) IC 19: Soft, synthetic, non-metal chlorine resistant surfaces for indoor and outdoor waterplay environments, playgrounds, sports terrains and play areas (filing date Feb 15, 2010) IC 01: Polymer for use as an ingredient in the manufacture of hair care products (filing date May 17, 2010) IC 17: Flexible PVC film used to make large banners and signs used in aquatic settings (filing date Sep 25, 2012) IC 01: Adhesives for use in the flooring industry (filing date Sep 14, 2015) The applicant asserts that the applied-for mark, representing material used to remove contaminants from air, water, and soil, namely external filtering device for use in local contaminant area for removing oil and other contaminants from affected areas, in Class 11, will not be likely to confuse consumers in commerce, any more than there is a potential to confuse consumers among the above-referenced registrations for the identical mark. The Examiner has requested additional information to help clarify the goods being represented by the applied-for mark. Please see the attached screen shot with a picture of a device constructed with the AQUAFLEX material. It has a general shape of a cheerleading ?pom-pom? with various fingers. The passive device is dragged through contaminated air, water, or soil and contaminants are collected on the subject material.

EVIDENCE
Evidence in the nature of Six registrations for the AQUAFLEX mark along with a screenshot of a device made of the subject material and the mark on the page. has been attached.
JPG file(s):
Evidence-1
Original PDF file:
evi_71248188113-20161017101315242722_._1405454.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_71248188113-20161017101315242722_._1966814.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_71248188113-20161017101315242722_._3890288.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_71248188113-20161017101315242722_._3983286.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_71248188113-20161017101315242722_._4342052.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_71248188113-20161017101315242722_._4945818.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for material used to remove contaminants from air, water, and soil

Applicant hereby adds the following class of goods/services to the application:
New: Class 011 (Original Class: 009 ) for material used to remove contaminants from air, water, and soil, namely external filtering device for use in local contaminant area for removing oil and other contaminants from affected areas
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.

SIGNATURE(S)
Response Signature
Signature: /Brian M. Dingman/     Date: 10/17/2016
Signatory's Name: Brian M. Dingman
Signatory's Position: Attorney of Record, MA Bar Member

Signatory's Phone Number: 508-898-9495

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 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 86858400
Internet Transmission Date: Mon Oct 17 10:26:28 EDT 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201610171026284
34085-86858400-570bc4f782cbda8d0c1c72b9d
276ea8f8215dd74827d4442829231d9dc94aa4-N
/A-N/A-20161017101315242722