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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88148020 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 110 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88148020/mark.png |
| LITERAL ELEMENT |
HYDROPEL |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
| Reconsideration of the application is respectfully requested. In the Office Action dated January 28, 2019, the Examining Attorney has cited two
issues: ? Section 2(d) refusal ? likelihood of confusion; and ? Entity Uncertain LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d) The office action dated January 28, 2019 includes a refusal to
register under Section 2(d) of the Trademark Act on the basis of alleged confusing similarity to trademark registration No. 4451861 for HYDROPEL the (?Cited Mark?). In response and in consideration
of the factors of In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Applicant respectfully submits that there is no likelihood of confusion between the
Applicant?s Mark and the Cited Mark. According to TMEP ?1207.01, ?In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the
goods/services are related, because these factors are outweighed by other factors, such as differences in the relevant trade channels of the goods/services, the presence in the marketplace of a
significant number of similar marks in use on similar goods/services, the existence of a valid consent agreement between the parties, or another established fact probative of the effect of use.? All
factors must be considered for a proper determination of likelihood of confusion. The Applicant respectfully submits that there is no likelihood of confusion between Applicant?s Mark and the Cited
Mark due to the factors of unrelated goods, unrelated trade channels, the presence of similar marks in the marketplace, and sophisticated consumers operating in unrelated industries. Unrelated Goods
as Defined in the Applications Applicant?s good are hard wood flooring in international class 19, while the Registrant?s goods are sealer coatings for concrete surfaces in international class 2. The
Examining Attorney has asserted that the similarity is in the presumption that the Applicant?s hard wood flooring is ?engineered to repel water similar to the purpose of registrants goods, which are
water repellant sealers.? While there may be some connection or similarity in function, this ignores that fact that the goods themselves, flooring compared to a coating, have little to no similarity.
For example, a coating for concrete would not be a suitable alternative to wood flooring. A consumer seeking hard wood flooring would not consider concrete coatings. Accordingly, Applicant submits
that the goods lack similarity and do not support a likelihood of confusion. Unrelated Established, Likely-to-Continue Trade Channels The Applicant respectfully submits that the established,
likely-to-continue trade channels currently employed by the Applicant and intended to be used by the Applicant for the goods defined in this application are: (i) directly from the Applicant to
residential and commercial builders retail stores; and (ii) via distributors specializing in flooring sales to residential and commercial builders and retail stores. In contrast to the Applicant?s
trade channels, the Applicant respectfully submits that the established, likely-to- continue trade channels for the Registrant?s goods are: (i) directly from the Applicant to owners of concrete
buildings and to construction contractors in the concrete construction and repair industry; and (ii) via distributors operating as suppliers to the concrete construction and repair industry.
Therefore, the Applicant respectfully submits that there is no overlap between the respective trade channels of the Applicant and those of the Registrant, in that a consumer operating in the concrete
construction and repair industry is unlikely to encounter finished goods for flooring. Accordingly, the Applicant respectfully submits that there are significant dissimilarities between the
established, likely-to-continue trade channels of the Applicant and those of the Registrant, such that the goods of this application and those of the cited registrations have unrelated trade
channels. Similar marks in the marketplace The U.S. Trademark Office has registered other similar or identical marks with goods in the same or more closely related classes as the Registrant. These
include Registration No. 3885117 for Q HYDROPEL for polymer sealants in class 3, Registration No. 4288116 for Q HYDROPEL and design for polymer sealants in class 3, Registration No. 1572710 for
HYDROPEL for vinyl ester resins in class 1, Registration No. 3291864 for HYDROPEL for marine resins, Registration No. 3885117 for polymer sealants in class 3, and Registration No. 3297961 for
HYDROPEL for slide fasteners in class 26. Copies of the registration certificates are attached. Sophisticated consumers operating in unrelated industries The Applicant respectfully submits that
consumers of flooring typically research flooring brands given the investment required prior to making a purchase. Such purchasers will consider the benefits of the flooring in comparison to other
flooring manufacturers and will not purchase on impulse. Similarly, consumers in the concrete construction and repair industry require a level of sophistication. Typically, such consumers and
contractors have professional buyers who are trained to make such purchases from suppliers. The difference in the consumers for Applicant?s and Registrants is emphasized by the difference in the
products, which are obtained from unrelated industries for unrelated purposes. Accordingly, Applicant respectfully submits that the knowledge of the consumers for their respective goods, which are in
unrelated industries strongly support the lack of confusion in the use of the Applicant?s mark compared to the Cited Mark. No Likelihood of Confusion Based on the lack of similarity between the
Applicant?s mark and the registrant?s mark and the lack of similarity of the goods, there is no likelihood of confusion. Accordingly, withdrawal of the refusal under Section 2(d) is proper and
respectfully requested. ENTITY INDEFINITE Applicant respectfully submits that the requirement for correction of the entity is moot in view of the owner of record, currently Armstrong Hardwood
Flooring Company as a Tennessee Corporation. |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_10858162186-20190729202249141642_._Evidence_HYDROPEL.pdf |
CONVERTED PDF FILE(S)
(5 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\480\88148020\xml4\ROA0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\881\480\88148020\xml4\ROA0003.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\881\480\88148020\xml4\ROA0004.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\881\480\88148020\xml4\ROA0005.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\881\480\88148020\xml4\ROA0006.JPG |
| DESCRIPTION OF EVIDENCE FILE |
Registration Certificates for trademarks similar to HYDROPEL |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/christina.w.geerlof/ |
| SIGNATORY'S NAME |
Christina W. Geerlof |
| SIGNATORY'S POSITION |
Attorney of record, New Jersey bar member |
| SIGNATORY'S PHONE NUMBER |
9734762715 |
| DATE SIGNED |
07/29/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Mon Jul 29 20:30:40 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XXX-
20190729203040248593-8814
8020-6206ee97d4d91abcc22c
4dc6679d8b89181e5da895a48
5c52b58c36ddf8211638-N/A-
N/A-20190729202249141642 |
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.
88148020 HYDROPEL(Standard Characters, see http://uspto.report/TM/88148020/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Reconsideration of the application is respectfully requested. In the Office Action dated January 28, 2019, the Examining Attorney has cited two issues: ? Section 2(d) refusal ? likelihood of
confusion; and ? Entity Uncertain LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d) The office action dated January 28, 2019 includes a refusal to register under Section 2(d) of the Trademark Act on
the basis of alleged confusing similarity to trademark registration No. 4451861 for HYDROPEL the (?Cited Mark?). In response and in consideration of the factors of In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Applicant respectfully submits that there is no likelihood of confusion between the Applicant?s Mark and the Cited Mark. According to TMEP
?1207.01, ?In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods/services are related, because these factors are
outweighed by other factors, such as differences in the relevant trade channels of the goods/services, the presence in the marketplace of a significant number of similar marks in use on similar
goods/services, the existence of a valid consent agreement between the parties, or another established fact probative of the effect of use.? All factors must be considered for a proper determination
of likelihood of confusion. The Applicant respectfully submits that there is no likelihood of confusion between Applicant?s Mark and the Cited Mark due to the factors of unrelated goods, unrelated
trade channels, the presence of similar marks in the marketplace, and sophisticated consumers operating in unrelated industries. Unrelated Goods as Defined in the Applications Applicant?s good are
hard wood flooring in international class 19, while the Registrant?s goods are sealer coatings for concrete surfaces in international class 2. The Examining Attorney has asserted that the similarity
is in the presumption that the Applicant?s hard wood flooring is ?engineered to repel water similar to the purpose of registrants goods, which are water repellant sealers.? While there may be some
connection or similarity in function, this ignores that fact that the goods themselves, flooring compared to a coating, have little to no similarity. For example, a coating for concrete would not be
a suitable alternative to wood flooring. A consumer seeking hard wood flooring would not consider concrete coatings. Accordingly, Applicant submits that the goods lack similarity and do not support a
likelihood of confusion. Unrelated Established, Likely-to-Continue Trade Channels The Applicant respectfully submits that the established, likely-to-continue trade channels currently employed by the
Applicant and intended to be used by the Applicant for the goods defined in this application are: (i) directly from the Applicant to residential and commercial builders retail stores; and (ii) via
distributors specializing in flooring sales to residential and commercial builders and retail stores. In contrast to the Applicant?s trade channels, the Applicant respectfully submits that the
established, likely-to- continue trade channels for the Registrant?s goods are: (i) directly from the Applicant to owners of concrete buildings and to construction contractors in the concrete
construction and repair industry; and (ii) via distributors operating as suppliers to the concrete construction and repair industry. Therefore, the Applicant respectfully submits that there is no
overlap between the respective trade channels of the Applicant and those of the Registrant, in that a consumer operating in the concrete construction and repair industry is unlikely to encounter
finished goods for flooring. Accordingly, the Applicant respectfully submits that there are significant dissimilarities between the established, likely-to-continue trade channels of the Applicant and
those of the Registrant, such that the goods of this application and those of the cited registrations have unrelated trade channels. Similar marks in the marketplace The U.S. Trademark Office has
registered other similar or identical marks with goods in the same or more closely related classes as the Registrant. These include Registration No. 3885117 for Q HYDROPEL for polymer sealants in
class 3, Registration No. 4288116 for Q HYDROPEL and design for polymer sealants in class 3, Registration No. 1572710 for HYDROPEL for vinyl ester resins in class 1, Registration No. 3291864 for
HYDROPEL for marine resins, Registration No. 3885117 for polymer sealants in class 3, and Registration No. 3297961 for HYDROPEL for slide fasteners in class 26. Copies of the registration
certificates are attached. Sophisticated consumers operating in unrelated industries The Applicant respectfully submits that consumers of flooring typically research flooring brands given the
investment required prior to making a purchase. Such purchasers will consider the benefits of the flooring in comparison to other flooring manufacturers and will not purchase on impulse. Similarly,
consumers in the concrete construction and repair industry require a level of sophistication. Typically, such consumers and contractors have professional buyers who are trained to make such purchases
from suppliers. The difference in the consumers for Applicant?s and Registrants is emphasized by the difference in the products, which are obtained from unrelated industries for unrelated purposes.
Accordingly, Applicant respectfully submits that the knowledge of the consumers for their respective goods, which are in unrelated industries strongly support the lack of confusion in the use of the
Applicant?s mark compared to the Cited Mark. No Likelihood of Confusion Based on the lack of similarity between the Applicant?s mark and the registrant?s mark and the lack of similarity of the goods,
there is no likelihood of confusion. Accordingly, withdrawal of the refusal under Section 2(d) is proper and respectfully requested. ENTITY INDEFINITE Applicant respectfully submits that the
requirement for correction of the entity is moot in view of the owner of record, currently Armstrong Hardwood Flooring Company as a Tennessee Corporation.
EVIDENCE
Evidence in the nature of Registration Certificates for trademarks similar to HYDROPEL has been attached.
Original PDF file:
evi_10858162186-20190729202249141642_._Evidence_HYDROPEL.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
SIGNATURE(S)
Response Signature
Signature: /christina.w.geerlof/ Date: 07/29/2019
Signatory's Name: Christina W. Geerlof
Signatory's Position: Attorney of record, New Jersey bar member
Signatory's Phone Number: 9734762715
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: 88148020
Internet Transmission Date: Mon Jul 29 20:30:40 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201907292030402
48593-88148020-6206ee97d4d91abcc22c4dc66
79d8b89181e5da895a485c52b58c36ddf8211638
-N/A-N/A-20190729202249141642
