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. 88230657 CSR(Standard Characters, see http://uspto.report/TM/88230657/mark.png) has been amended as follows:

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

The amended description of goods obviates the basis for refusal. The goods are highly specialized, used in connection with highly specialized services, and purchased by sophisticated industrial consumers. Accordingly, the goods are unlikely to originate from the same source and there can be no basis for consumer confusion. Applicant respectfully disagrees and requests that the mark be published for opposition. There is no mechanical test for determining likelihood of confusion and ?each case must be decided on its own facts? In re E.I du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). In other words, ?trademark law must necessarily be flexible responding to particular circumstances disclosed by particular situations?[E]ach case must be decided on the basis of all relevant facts which include the marks and the goods as well as the marketing environment in which a purchaser normally encounters them?? Interstate Brands Corp. v. Celestial Seasonings, Inc., 196 U.S.P.Q 321 (T.T.A.B. 1997), aff?d. 198 U.S.P.Q. 151 (C.C.P.A. 1978). In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks are similar, because similarity is outweighed by other factors. When determining whether there is a likelihood of confusion, the Examiner should apply all of the DuPont factors relevant to the overall determination. Not all of the factors are relevant and only those relevant factors for which there is evidence in the record must be considered. DuPont, 476 F.2d at 1361-62. Rather than consider the similarities between the component parts of the marks, it is proper to evaluate the impression that each mark in its entirety is likely to have on a purchaser exercising the attention usually given by purchasers of such products. See General Mills Inc. v. Kellogg Co., 824 F. 2d 622; see also, Duluth News-Tribune, a Div. of Northwest Publications Inc. v. Mesabi Pub. Co., 84 F 3d. 1093 (8th Cir. 19996) The relevant factors for determining a likelihood of confusion include, inter alia: a. The relatedness of the goods or services as described in the application or registration(s) b. Similarity or dissimilarity and nature of goods described in the application or registration c. The conditions under which and buyers to whom sales are made, i.e., ?impulsive? vs. careful, sophisticated purchasing In re E.I DuPont de Numours and Co., 476 F. 2d 1357, 177 U.S.P.Q. 563 (C.C.P.A 1973) a. The relatedness of the goods or services as described in the application or registration(s) The products are not related in any matter and the conditions and activities surrounding the marketing of these goods are such that they could not be encountered by same persons under circumstances that could, because of similarities of marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same producer. Schering Corporation v. Alza Corporation, 207 USPQ 504 (TTAB 1980); Oxford Pendaflex Corporation v. Anixter Bros. In., 201 USPQ 851 (TTAB 1978) Despite the superficial similarities between the goods, various points of dissimilarities can be drawn between the products of the parties. CSR and CSR PLUS markets are totally different. CSR PLUS protects goods related to the water treatment infrastructure, while CSR relates with chemistry alternatives for the oil and gas industry. Moreover, CSR PLUS owner and CSR applicant conduct business in different industry fields. b. Similarity or dissimilarity and nature of goods described in the application or registration Applicant seeks the registration of CSR for ?Synthetic replacement for chemicals for hydraulic fracturing?, while CSR PLUS trademark is registered for ?Acidic liquid descaling compositions for industrial use for removing mineral deposits from pipelines, air stripper media, filtration basins, troughs, clarifiers, storage tanks, and water treatment plant surfaces?. It is necessary to look at the goods in question, and not only to which class they happen to be classified. Even though the registered trademark and the applicant trademark protect and seek to protect goods covered by international class 1, the goods are completely dissimilar. There should be no per se refusal to register because two similar marks are to be used on or in connection with goods/services which are similar or are in the same class. It is necessary to examine the nature of the goods or services, therefore it should not be sufficient to find that the trademarks are registered in the same class. Each trademark satisfies a specific need for different markets. Applicant?s mark was designed for a particular need in the oil and gas industry, being used for hydraulic fracturing. On the contrary, CSR PLUS trademark highly differentiates from applicant?s good since it is used for removing mineral deposits. These are two highly specialized products used in completely different industry areas. c. The conditions under which and buyers to whom sales are made, i.e., ?impulsive? vs. careful, sophisticated purchasing It is not the situation where CSR PLUS consumers will impulsively decide to buy goods intended to be protected by the applicant. There is no likelihood that consumers would mistakenly encounter the cited registrants? mark, believing that the goods sold under the mark originated from the same source as that of the cited application. Based on the products involved, one would expect that all of the purchasers would exercise a high degree of care when making their purchasing decision. Here, the circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) (finding that, "even in the case of the least sophisticated purchaser, a decision as important as choosing a senior living community will be made with some thought and research, even when made hastily"); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380, 1383 (TTAB 2006) . Fluid Energy Group LTD. is the world leader in modified and synthetic acid system. Their products have multiple applications in the oil and gas industry. [see exhibit 1-website] CSR is deemed to be a synthetic replacement for chemicals for hydraulic fracturing. Hydraulic fracturing is an oil and gas production technique used in tight geologic formations that involves horizontal directional drilling of wells as well as the use of water and sand and chemicals at high pressures to fracture rocks and release carbons [see exhibit 2-hydraulic fracturing ]. Applicant?s product is designed to be used as a synthetic fluid in replacement of chemical fluids in the process of obtaining natural gas and oil. On the contrary, Blue Earth Labs., LLC is a company specialized in chemical manufacturing providing cleaning solutions for municipal and commercial water treatment infrastructure. CSR PLUS is a Proprietary Hydrochloric Acid Blend , is a highly sophisticated product that only works with specific devices made of hydrogen chloride, a compound of the elements hydrogen and chlorine. CSR PLUS is a product used by the water infrastructure industry, specifically by chemical manufacturing companies for municipal and commercial water treatment infrastructures. CSR is a highly specialized product that is going to be used during the process of hydraulic fracturing to restoring small fractures in a formation and stimulate the production from new and existing oil and gas wells. Special synthetic substitutes for chemicals as CSR are used to restore those fractures. On the Contrary, CSR PLUS (Calcium Scale Remover Plus) has been specifically formulated and used to remove calcium carbonate and other mineral deposits from filtration basins, troughs, clarifiers and other water treatment plant surfaces [see exhibit 3- CSR PLUS-Product specification sheet]. It has also been used to clean air stripper media or as an off-line pipeline treatment. There is no likelihood of confusion between these marks as applied to their respective goods because the goods are unrelated. That is, no rational consumer would assume that these goods and services emanate from the same source. CSR and CSR PLUS are intended for totally different industries. CSR PLUS is a product used by the water infrastructure industry, specifically by chemical manufacturing companies for municipal and commercial water treatment infrastructures. On the contrary, CSR consumers, will be the oil and gas industry, specifically for hydraulic fracturing. Despite the similarities of the marks in their entireties as to appearance, sound, connotation and commercial impression, the finding is that there is no likelihood of confusion.

EVIDENCE
Evidence in the nature of Exhibits 1-3 as referenced in the submitted argument has been attached.
Original PDF file:
evi_381211809-20190913171528241889_._Exhibits_for_ROA_-_CSR_88230657.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Synthetic replacement for chemicals
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: Synthetic replacement for chemicals; Synthetic replacement for chemicals for hydraulic fracturingClass 001 for Synthetic replacement for chemicals for hydraulic fracturing
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.

The applicant's current attorney information: Ben Natter. Ben Natter of HAUG PARTNERS, LLP, is located at

      745 FIFTH AVENUE
      NEW YORK, New York 10151
      US
The docket/reference number is A133-28.

The email address is bnatter@haugpartners.com

The applicants proposed attorney information: Ben Natter. Other appointed attorneys are Kyle Koemm. Ben Natter of HAUG PARTNERS, 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

      745 Fifth Ave
      New York, New York 10151
      United States
The docket/reference number is A133-28.

The email address is bnatter@haugpartners.com

Ben Natter 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: BEN NATTER. BEN NATTER of HAUG PARTNERS, LLP, is located at

      745 FIFTH AVENUE
      NEW YORK, New York 10151
      US
The docket/reference number is A133-28.

The email address is bnatter@haugpartners.com; docket@haugpartners.com

The applicants proposed correspondence information: Ben Natter. Ben Natter of HAUG PARTNERS, LLP, is located at

      745 Fifth Ave
      New York, New York 10151
      United States
The docket/reference number is A133-28.

The email address is bnatter@haugpartners.com; docket@haugpartners.com; kkoemm@haugpartners.com

SIGNATURE(S)
Response Signature
Signature: //Kyle Koemm//     Date: 09/13/2019
Signatory's Name: Kyle Koemm
Signatory's Position: Attorney of Record, member NY bar

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:    BEN NATTER
   HAUG PARTNERS, LLP
   
   745 FIFTH AVENUE
   NEW YORK, New York 10151
Mailing Address:    Ben Natter
   HAUG PARTNERS, LLP
   745 Fifth Ave
   New York, New York 10151
        
Serial Number: 88230657
Internet Transmission Date: Fri Sep 13 17:48:59 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20190913174859721
996-88230657-610f8214523163bcb5dde464a4d
77e1f827952390dd36d28296f5ab828a9c15-N/A
-N/A-20190913171528241889