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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88201731 CLOUD WATER(Standard Characters, see http://uspto.report/TM/88201731/mark.png) has been amended as follows:

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

Registration should not be refused because the applied-for mark is not so similar to the registered mark to render it unregistrable even though the goods are similar. In Palm Bay Imps., Inc. v. Veuve Clicquot (cited by the examining attorney in the Office Action), the word at issue was "Veuve," a French word. "Veuve" is far more distinct and memorable than the word "Cloud" so that case should not apply. In Century 21 Real Estate Corp. (cited by the examining attorney), the word "Century" is also far more memorable and distinct than the word "Cloud" because "Century 21" is such a well known company that it leaps to mind when considering professional service companies such as real estate. Here, the word "Cloud" is generic. There are no dominant companies in the space (or any space) with the word "Cloud" in the name such that it would stick in the consumer's mind like "Century" does. Further, the words "Water" and "Juice" are dissimilar. Water is (and evokes thoughts of) a clear, pure, refreshing liquid, provided by nature without human interference, and is easily symbolized by a "teardrop" shape. "Juice" is a completely different substance: opaque (at best), sugary, and not associated with purity at the level of water and also not associated with the "teardrop" shape. Further, "water" is a naturally occurring substance that is given in the form of rivers, streams, lakes, oceans, and rain. "Juice" is a substance that must be manually obtained by squeezing, crushing, and otherwise destroying its source (be it fruit, vegetable, or otherwise). Lastly, "water" succinctly describes the product so the consumer would know exactly what's in the bottle. "Juice" on the other hand leaves it to a consumer to infer what the product is, and does not clearly identify what's being sold. Therefore, a consumer would not likely associate a product named "Cloud Juice" with water, and it is therefore dissimilar enough from the applied-for mark "Cloud Water" that the applied-for mark should be granted registration. For the same reasons as set forth in the immediately preceding paragraph, the SMS, Inc. v. Byn-Mar Inc. case cited by the Examining Attorney is inapplicable. Because of the fundamental differences between the words "Water" and "Juice," a consumer is not likely to infer that "Cloud Water" is a new offering by "Cloud Juice." Therefore, consumers are unlikely to conclude that the goods are related and originate from a single source. As such, registration should not be refused under Trademark Act 2(d).

The applicant's current attorney information: Gregory J. Borman, Esq.. Gregory J. Borman, Esq. of BORMAN LAW GROUP, is located at

      3170 FOURTH AVENUE, SUITE 250
      SAN DIEGO, California 92103
      US

The phone number is 858-232-7100.

The email address is greg@bormanlaw.com

The applicants proposed attorney information: Gregory J. Borman, Esq.. Gregory J. Borman, Esq. of BORMAN LAW GROUP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      3170 FOURTH AVENUE, SUITE 250
      SAN DIEGO, California 92103
      United States

The phone number is 858-232-7100.

The email address is greg@bormanlaw.com

Gregory J. Borman, Esq. 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: GREGORY J. BORMAN, ESQ.. GREGORY J. BORMAN, ESQ. of BORMAN LAW GROUP, is located at

      3170 FOURTH AVENUE, SUITE 250
      SAN DIEGO, California 92103
      US

The phone number is 858-232-7100.

The email address is greg@bormanlaw.com

The applicants proposed correspondence information: Gregory J. Borman, Esq.. Gregory J. Borman, Esq. of BORMAN LAW GROUP, is located at

      3170 FOURTH AVENUE, SUITE 250
      SAN DIEGO, California 92103
      United States

The phone number is 858-232-7100.

The email address is greg@bormanlaw.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use water apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Gregory J. Borman/     Date: 09/06/2019
Signatory's Name: Gregory J. Borman
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: (858) 232-7100

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:    GREGORY J. BORMAN, ESQ.
   BORMAN LAW GROUP
   
   3170 FOURTH AVENUE, SUITE 250
   SAN DIEGO, California 92103
Mailing Address:    Gregory J. Borman, Esq.
   BORMAN LAW GROUP
   3170 FOURTH AVENUE, SUITE 250
   SAN DIEGO, California 92103
        
Serial Number: 88201731
Internet Transmission Date: Fri Sep 06 20:11:37 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019090620113764
0082-88201731-610dd5693cf9bc29a5c15683ff
792a3332cc52d1a9fd63ae5763ddbd84394901c3
f-N/A-N/A-20190906194205669055