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 09/20/2020)

---

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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88068402 ECOPOOL(Standard Characters, see http://uspto.report/TM/88068402/mark.png) has been amended as follows:

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

I.          Refusal under Section 2(d) of the Trademark Act

A.        Introduction

Applicant filed Application Serial No. 88/068,402 for the mark ECOPOOL (“Applicant’s Mark”) in connection with “[w]ater treatment unit for circulating water, namely, in-floor water circulation nozzles for swimming pools and spas,” in Class 11 (“Applicant’s Goods”).

            The Office Action refused to register Applicant’s Mark under Trademark Act Section 2(d) based on a likelihood of confusion between Applicant’s Mark and U.S. Registration No. 4,551,550 for the mark ECOPOOL (the “Cited Mark”) for “[s]wimming pool construction, maintenance, repair, renovation, and cleaning services,” in Class 37 (“Registrant’s Services”), owned by Ecopool, Inc. (“Registrant”).

            Applicant submits that there is no likelihood of confusion between its mark and the Cited Mark because the marks are used on different, unrelated goods and services and are sold to different consumers having different needs.  Applicant further submits that its mark is not likely to be confused with the Cited Markbecause as set forth in the 2008 Coexistence Agreement (the “Agreement”) entered into between Applicant’s predecessor in interest and Registrant (relating to Applicant’s prior application / registration for ECO POOL), Registrant consented to the registration and use by Applicant of the ECO POOL mark for in-floor water circulation nozzles for swimming pools and spas.  Agreement (submitted herewith), at ¶ 6.  Also, as reflected in the Agreement, Registrant and Applicant’s predecessor in interest believed that confusion between Applicant’s ECO POOL mark and the Cited Mark was not likely.  Agreement, at ¶¶ D, 1-5.  Accordingly, Applicant respectfully requests reconsideration of the refusal to register Applicant’s Mark under Section 2(d).          

B.        Applicant’s Goods and Registrant’s Services are different and not related, and would be purchased by different consumers having different needs

            Applicant’s Mark is not likely to be confused with the Cited Mark because Applicant’s Goods are different from and not related to Registrant’s Services, and Applicant’s Goods and Registrant’s Services would be purchased by consumers having different needs.

If the various goods or services in question are not related, confusion is not likely.  TMEP § 1207.01(a)(i); see, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244 (Fed. Cir. 2004) (RITZ for cooking classes and RITZ for kitchen textiles held not confusingly similar because the goods and services are not related); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669-70 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products – e.g., lamps, tubes – related to the photocopying field).   

Applicant’s Goods are narrowly defined as “[w]ater treatment unit for circulating water, namely, in-floor water circulation nozzles for swimming pools and spas,” in Class 11.

In contrast, Registrant’s Services are narrowly defined as “[s]wimming pool construction, maintenance, repair, renovation, and cleaning services,” in Class 37. 

Consumers would not confuse the source of Applicant’s water circulation nozzles with the source of Registrant’s pool construction, maintenance, repair, renovation and cleaning services, even though Applicant’s Goods and Registrant’s Services each relate to swimming pools and/or spas.  Consumers would be unlikely to believe that technical pool products such as Applicant’s water circulation nozzles are offered by a company that constructs, repairs, maintains and cleans pools.

Even if Applicant’s Goods and Registrant’s Services were considered to be related, the sole fact that goods or services covered by marks may be related in some manner is insufficient to create a likelihood of confusion.  See, e.g., Dynamics Res. Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 1576 (Fed. Cir. 1983) (finding no likelihood of confusion between two DRC marks even though both used for goods in the metal fabrication industry).  Products in various other fields, such as personal care products like lip balm and deodorant, and food products such as butter and shortening, have also been held to be insufficiently related to cause confusion even where the marks are identical or nearly identical, where the products “do not compete nor serve the same purpose.”  WWW Pharma. Co. Inc. v. The Gillette Co., 25 USPQ2d 1593, 1598 (2d Cir. 1992); see also Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713 (Fed. Cir. 1992) (no likelihood of confusion between EDS mark used for computer programming services and E.D.S. (Stylized) used for battery chargers and power supplies even though goods and services under both marks were sold to some of the same companies); Imperial Sugar Co. v. Imperial Prods., 139 USPQ 344, 345 (TTAB 1963) (IMPERIAL mark used for both dessert powders and sugar; no likelihood of confusion because dessert powders and sugar are “such different food products”).

            Like the goods and services in the cited cases, Applicant’s Goods and Registrant’s Services are not substitutes or replacements for one another, do not compete or serve the same purpose, and would be purchased by different consumers having different needs. 

            A person that is seeking in-floor water circulation nozzles for a pool or spa would not instead turn to pool construction, maintenance, repair, renovation or cleaning services.  A water circulation nozzle is a specific pool product that is not substitute for pool construction, maintenance, repair, renovation or cleaning services, and that does not serve the same purpose as such services.

            Also, the purchasers of Applicant’s Goods are different from the purchasers of Registrant’s Services.  Applicant’s Goods largely would be purchased by swimming pool and spa professionals for installing in the swimming pools or spas of their residential and commercial customers.  In contrast, Registrant’s Services would be purchased by current and prospective residential and commercial pool owners looking to have a pool built for them or looking to have a current pool maintained, repaired or cleaned.  As such, Applicant’s Goods and Registrant’s Services would not be encountered by the same consumers, and consumers would not be confused as to the source of these different goods and services.

            Given that the goods / services and purchasers are different, purchasers of Applicant’s Goods would not encounter Registrant’s Services.  Likewise, purchasers of Registrant’s Services would not encounter Applicant’s Goods.

            C.        As set forth in the Coexistence Agreement between Applicant’s predecessor in interest and Registrant, Applicant’s Mark and the Cited Mark are not likely to be confused

            The Coexistence Agreement (the “Agreement”) submitted herewith that was entered into between Applicant’s predecessor in interest, Paramount Leisure Industries, Inc., and Registrant on December 31, 2008, relating to Applicant’s prior application / registration for ECO POOL, which is nearly identical to Applicant’s Mark, is further evidence that Applicant’s Mark is not likely to be confused with the Cited Mark.  In the Agreement, Registrant consented to the registration and use of the ECO POOL mark for the same goods that are listed in Applicant’s instant application.  Agreement, at ¶ 6.  Further, as reflected in the Agreement, Registrant and Applicant’s predecessor in interest believed that confusion between their respective marks was not likely.  Agreement, at ¶ D (“[t]he parties do not believe that the Marks are confusing similar, and are not likely to cause confusion, to cause mistake, or to deceive”), ¶ 1 (“use of the Marks in connection with their respective goods and services is not likely to cause confusion, to cause mistake, or to deceive”); see also Agreement, at ¶¶ 2-5.

            In In re E. I. du Pont de Nemours & Co., the Court of Customs and Patent Appeals stated as follows:

when those most 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. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.

476 F.2d 1357, 1363 (CCPA 1973).  The Examining Attorney “should give substantial weight to a proper consent agreement.”  Trademark Manual of Examining Procedure, Oct. 2018 ed. (“TMEP”), §1207.01(d)(viii).  The USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.  See id. (citing In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993); In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)). 

Here, the Agreement between Applicant’s predecessor in interest and Registrant is proper because it includes detail as to why confusion between the parties’ marks is not likely.  In particular, the Agreement states that Registrant’s swimming pool construction, maintenance, repair, renovation and cleaning services offered under the Cited Mark are “different in nature” from Applicant’s in-floor water circulation nozzles for swimming pools and spas offered under Applicant’s ECO POOL mark.  Agreement, at ¶ 2.  The Agreement also states that “[t]he purchasers of the respective services and goods are sophisticated purchasers who buy with great care and unquestionably know the source of the services and goods they purchase,” and it states that the respective consumers of Applicant’s Goods and  Registrant’s services “are unique and different.”  Agreement, at ¶ 3.  The Agreement further states that “[t]he channels of commerce through which [the parties’ respective goods and services] are sold are unique and different.”  Agreement, at ¶ 5.   As such, Applicant’s predecessor in interest and Registrant agreed that “use of the Marks in connection with their respective goods and services is not likely to cause confusion, to cause mistake, or to deceive” and that purchasers of their respective goods and services “will be able to distinguish the [parties’ marks] and identify the different services and goods offered by the respective owners of the Marks and are not likely to be mistaken merely because of certain similarities between the Marks.”  Agreement, at ¶¶ 1, 4.  

Accordingly, given that the parties most familiar with the marketplace and most interested in preventing confusion, Applicant’s predecessor in interest and Registrant, believed that confusion was not likely between ECO POOL and ECOPOOL, the Examining Attorney should give substantial weight to the Agreement and find that confusion between Applicant’s Mark and the Cited Mark is not likely. 

            D.        Conclusion

            There is no likelihood of confusion between Applicant’s Mark and the Cited Mark.  Applicant’s Goods and Registrant’s Services are different and not related, and they would be purchased by different consumers having different needs.  Furthermore, Registrant consented to the registration and use of Applicant’s ECO POOL mark, and per the Coexistence Agreement, Registrant and Applicant’s predecessor in interest believed that confusion was not likely.  Accordingly, registration of Applicant’s Mark would not result in a likelihood of confusion with the Cited Mark, and Applicant respectfully requests reconsideration of the Examining Attorney’s refusal to register Applicant’s Mark under Section 2(d) of the Trademark Act.

II.        Applicant’s Mark May Be Suggestive But Is Not Merely Descriptive

            The Office Action maintained and continued the refusal to register Applicant’s Mark on the basis that Applicant’s Mark merely describes a purpose, function and/or use of Applicant’s Goods.  Applicant submits that its mark does not immediately and directly convey information about Applicant’s Goods, and therefore its mark is not descriptive but is, at most, suggestive of Applicant’s Goods.

A.        When the two common methods of determining whether a mark is descriptive or suggestive are applied to Applicant’s Mark, Applicant’s Mark is, at least, suggestive

            i.          The Imagination Test

One common method of determining suggestiveness versus descriptiveness is the “imagination” test.  See Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1218 (9th Cir. 1987) (“[t]he imagination test focuses on the amount of imagination required in order for a consumer to associate a given mark with the goods or services it identifies”); see also J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition (“McCarthy”) § 11:67 (4th ed. 2008), and cases cited therein.  This test dictates that “a term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods.  A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.”  Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 488, 160 USPQ 777 (S.D.N.Y. 1968) (emphasis added). 

In considering whether a term requires imagination to reach a conclusion as to the nature of the goods or services, courts commonly consider how immediate and direct is the thought process from the mark to the particular characteristic of the goods or services.  For example, in In re Shutts, the Trademark Trial and Appeal Board held that the mark SNO-RAKE was not merely descriptive of a snow removal hand tool; rather it was suggestive.  217 USPQ 363 (TTAB 1983).  The Board determined that the term rake “as applied to applicant’s tool, does not readily and immediately evoke an impression and understanding of applicant’s implement as a snow removal device.”  Id. at 364.  See also Am. Home Prods. Corp. v. Johnson Chemical Co., 589 F.2d 103, 200 USPQ 417 (2d Cir. 1978) (ROACH MOTEL not merely descriptive of insect trap).

Similarly, Applicant’s Mark does not readily and immediately evoke an impression and understanding of Applicant’s in-floor water circulation nozzles for swimming pools and spas.  See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (finding the mark SLICKCRAFT suggestive when applied to boats); Donsky v. Bandwagon, Inc., 193 USPQ 336 (D. Mass 1976) (finding 100 YEAR NITE-LITE for night light to be suggestive of a light with a 500 year life expectancy, where “the average consumer would conclude that the name suggests the qualities of long life, durability, and reliability,” and “[t]hus, to the average consumer the words 100-YEAR NITE-LITE would not impart information directly about the light”).  Imagination, thought and mental processing are required to ascertain that Applicant’s Mark identifies in-floor water circulation nozzles for swimming pools and spas.

If one must exercise “mature thought or follow a multi-stage reasoning process” to determine characteristics of the goods or services, the term is considered suggestive, not descriptive.  In re Tennis in the Round, Inc., 199 USPQ 496 (TTAB 1978) (finding TENNIS IN THE ROUND suggestive of tennis services); see also Rodeo Collection, Ltd., 812 F.2d 1215 (finding the RODEO COLLECTION to be suggestive of a shopping center).  It is not fatal if a mark is informational as “one may be informed by suggestion as well as by description.”  Application of Reynolds Co., 480 F.2d 902, 904 (CCPA 1973); see also TMEP § 1209.01(a) (“a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable”). 

Applicant’s Mark is suggestive of both “economical” and “ecological” as these concepts may relate to pools.  These general concepts do not, however, describe characteristics Applicant’s Goods.  Rather, one must engage in a multi-stage reasoning process to determine characteristics of Applicant’s in-floor water circulation nozzles from the mark ECOPOOL.  This reasoning process is not immediate and direct.  As such, ECOPOOL does not readily and immediately evoke an impression and understanding of Applicant’s in-floor water circulation nozzles for swimming pools and spas.

For all of these reasons, consumers must exercise “mature thought or follow a multi-stage reasoning process” and use “imagination, thought and perception” to determine characteristics of Applicant’s Goods from Applicant’s Mark.  Thus, ECOPOOL is not descriptive of Applicant’s Goods, and, at least, is suggestive of these goods.

            ii.         The Need Test

Related to the “imagination” test is another test courts use to determine whether a mark is suggestive or descriptive.  This “need” test “focuses on the extent to which a mark is actually needed by competitors to identify their goods or services.”  Rodeo Collection, Ltd., 812 F.2d at 1218; see also 2 McCarthy § 11:68 (“[I]s the suggestion made by the mark so remote and subtle that it is really not likely to be needed by competitive sellers to describe their goods?  If the answer is yes, then this tends to indicate that the mark is merely suggestive, not descriptive”).  This test is closely related to the “imagination” test because “the more imagination that is required to associate a mark with a product [or service] the less likely the words used will be needed by competitors to describe their products [or services].”  Rodeo Collection, Ltd., 812 F.2d at 1218 (citation omitted).

            Applicant’s Mark ECOPOOL is not needed by Applicant’s competitors to describe goods similar or competitive to Applicant’s.  There are countless other ways in which competitors can describe identical or similar in-floor water circulation nozzles for swimming pools and spas.  See Application of Reynolds Co., 480 F.2d at 904 (registration of BROWN-IN-BAG will not prevent competitors from informing buyers that goods may be brown); Minnesota Mining & Mfg. Co. v. Johnson & Johnson, 454 F.2d 1179, 1180, 172 USPQ 491 (CCPA 1972) (registration of SKINVISIBLE for a transparent medical adhesive tape will not deprive competition of language to describe their products).  Thus, under the “need” test, ECOPOOL is not merely descriptive.

B.        Applicant’s Mark can function as a trademark even if it conveys information about Applicant’s Goods

            Even if Applicant’s Mark conveys information about Applicant’s Goods, Applicant’s Mark is not necessarily descriptive.  It is well established that marks that convey information about goods and services can still function as trademarks.  See, e.g., In re DC Comics, Inc., 215 USPQ 394 (CCPA 1982) (pictorial representation of the goods not merely descriptive to the extent that the pictorial representation could function as a trademark).  See also In re Realistic Co., 19 USPQ 610 (CCPA 1971) (CURV not merely descriptive of permanent wave curling solutions); In re Frank J. Curran Co., 189 USPQ 560 (TTAB 1975) (CLOTHES FRESH not merely descriptive of clothes and shoe spray deodorant); In re C.J. Webb, Inc., 182 USPQ 63 (TTAB 1974) (BRAKLEEN need not be disclaimed because even assuming that it is the phonetic equivalent of “brake clean,” it is not merely descriptive of a chemical composition for cleaning and degreasing automotive brake parts); In re Pennwalt Corp., 173 USPQ 317 (TTAB 1972) (DRI-FOOT not merely descriptive of an anti-perspirant deodorant for feet).

            Here, ECOPOOL does not directly convey information about Applicant’s in-floor water circulation nozzles for swimming pools and spas in a manner that would be readily apparent to a consumer.  However, even if ECOPOOL did convey some general information about Applicant’s Goods, ECOPOOL still is not merely descriptive.

C.        Conclusion

            In view of the foregoing, it is respectfully submitted that ECOPOOL is not merely descriptive but, at least, suggestive, and to the extent, if any, that Applicant’s Mark could be considered descriptive, any doubt should be resolved in favor of Applicant.  See In re Micro Instru. Corp., 222 USPQ 252 (TTAB 1984).  Accordingly, it is respectfully requested that the Examining Attorney reconsider and withdraw the refusal to register Applicant’s Mark under Section 2(e)(1) of the Trademark Act.

 

           

EVIDENCE
Evidence in the nature of copy of Coexistence Agreeement has been attached.
Original PDF file:
evi_63764866-20191204155056608087_._Fully_executed_Paramount_Ecopool_agreement_re_ECO_POOL_2008.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

The applicant's current attorney information: Michael R. Friscia. Michael R. Friscia of MCCARTER & ENGLISH, LLP, is located at

      100 Mulberry Street, 4 Gateway Center
      Newark, New Jersey 07102
      US
The docket/reference number is 096964.

The phone number is 973-622-4444.

The fax number is 973-624-7070.

The email address is mfriscia@mccarter.com

The applicants proposed attorney information: Michael R. Friscia. Other appointed attorneys are Carissa L. Rodrigue. Michael R. Friscia of MCCARTER & ENGLISH, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Four Gateway Center
      100 Mulberry Street
      Newark, New Jersey 07102
      United States
The docket/reference number is 096964-01748.

The phone number is 973-848-8308.

The fax number is 973-624-7070.

The email address is mfriscia@mccarter.com

Michael R. Friscia submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: Michael R. Friscia. Michael R. Friscia of MCCARTER & ENGLISH, LLP, is located at

      100 Mulberry Street, 4 Gateway Center
      Newark, New Jersey 07102
      US
The docket/reference number is 096964.

The phone number is 973-622-4444.

The fax number is 973-624-7070.

The email address is mfriscia@mccarter.com; kknoll@mccarter.com

The applicants proposed correspondence information: Michael R. Friscia. Michael R. Friscia of MCCARTER & ENGLISH, LLP, is located at

      Four Gateway Center
      100 Mulberry Street
      Newark, New Jersey 07102
      United States
The docket/reference number is 096964-01748.

The phone number is 973-848-8308.

The fax number is 973-624-7070.

The email address is mfriscia@mccarter.com; crodrigue@mccarter.com; dpopovic@mccarter.com

SIGNATURE(S)
Response Signature
Signature: /Michael Friscia/     Date: 12/04/2019
Signatory's Name: Michael R. Friscia
Signatory's Position: Attorney of Record, NJ Bar Member

Signatory's Phone Number: 973-848-8308

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Michael R. Friscia
   MCCARTER & ENGLISH, LLP
   
   100 Mulberry Street, 4 Gateway Center
   Newark, New Jersey 07102
Mailing Address:    Michael R. Friscia
   MCCARTER & ENGLISH, LLP
   Four Gateway Center
   100 Mulberry Street
   Newark, New Jersey 07102
        
Serial Number: 88068402
Internet Transmission Date: Wed Dec 04 17:01:11 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201912041701118200
45-88068402-700415941c2128c1dfe65316db1b
36a5057684ff6d8712eb2239293eeeadc280-N/A
-N/A-20191204155056608087