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. 88354924 BOREALIS(Standard Characters, see http://uspto.report/TM/88354924/mark.png) has been amended as follows:

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

Registration of the present application was refused on the basis of a likelihood of confusion with Registration No. 5,220,619 for the mark BOREALIS. Applicant does not dispute that the appearance, sound and meaning of the registered mark and applicant's mark are identical. Nevertheless, applicant disputes that applicant?s mark and the registered mark are confusingly similar. The goods of the registration are listed as "building materials, namely, concrete blocks, stones, bricks, paving blocks, stone slabs, concrete slabs for building floors and surfaces, patios, pool sides, driveways and retaining and decorative landscaping walls". All of the foregoing are finished consumer products. Registrant is a Canadian company but markets its BOREALIS products in the U.S. through local retail distributors to retail consumers (i.e., home owners) and to contractors (see http://www.techo-bloc.com/support/customer-support/faq/). For example, in the Arlington, Virginia area, registrant's web site lists the following retail distributors for its BOREALIS products: Sisler's Stone; Tri-State Stone & Building Supply, Inc.; Merrifield Garden Center (Vienna, Fairfax, Falls Church and Gainesville); Ernest Maier (Gaithersburg and Curtis Bay); Stone Center - North Virginia; South Riding Nurseries LLC; The Stone Store; SCP Distributors LLC (Hanover); Country Springs Wholesale Nursery LLC (Leesburg and Woodbine); Maisel Brothers Inc.; All Landscape Supply; L&L Supply; Frederick Brick Works Inc. and Frederick Block & Stone (Round Hill) (see http://locator.techo-bloc.com/en/dealers/us?_ga=2.99223582.1805626033.1575564806- 621165956.1575564806). People shopping at these distributors are either end users or contractors for end users. Applicant's goods, as amended, are listed as, "Natural pozzolans in powder form sold in bulk on a wholesale basis to industrial and commercial consumers for incorporation in cementitious material, such as concrete or mortar". Applicant's goods are not a finished consumer product, but, rather, are a raw material that is incorporated into concrete or mortar. For example, applicant's goods can be mixed with portland cement, aggregate and water to make concrete. Since concrete is often a structural product, a concrete manufacturer would not add a product to its concrete without extensive investigation. Purchasers of applicant's goods would select them carefully, not only because of the price of such goods, but because of the performance characteristics required of applicant's goods. Most likely, a prospective purchaser would request extensive testing data showing the performance of concrete or mortar including applicant's goods. Or, a prospective customer might request samples of applicant's goods for their own testing before purchasing. Prospective customers would be interested in the following characteristics of concrete including applicant's goods: compressive strength, curing time, permeability, ASR mitigating properties and other physical properties. Physical properties of concrete are important because concrete is often used as a structural material, such as in buildings. Since the integrity of a structure carries substantial liability, users of concrete are extremely concerned with the sources of their materials and their characteristics and properties. Thus, a purchaser of applicant's goods would unquestionably know very well from whom it is purchasing those goods and would not be likely to confuse applicant with the registrant. Applicant's goods are only sold in bulk, such as in truck loads or rail car loads, on a wholesale basis. Purchasers of applicant's goods would be, for example, concrete manufacturers, concrete or mortar bag goods manufacturers and/or ready-mix suppliers. Applicant's goods are not sold to retail consumers (i.e., home owners), contractors or distributors, such as those listed above (Exhibit 2). A purchaser of applicant's goods would typically not be a one-time buyer but would enter into a contract for purchasing large amounts of product over a period of time, such as a year or more. Such contract would be very carefully prepared and negotiated. And, applicant's goods would be shipped directly to the purchaser. Unlike registrant's goods, one would not find applicant's goods in a building supply store or at a landscape contractor. Accordingly, applicant's goods would travel in separate and distinct channels of commerce from those of registrant's goods. As a result, a purchaser of applicant's goods would unquestionably know very well from whom it is purchasing those goods and would not be likely to confuse applicant's goods with the registrant's goods. Furthermore, the purchasers of applicant's goods would be highly educated and knowledgeable with respect to such goods and might hold a degree in civil engineering or have many years of experience in the concrete industry. Applicant's goods would not be an impulse purchase, but would be a thoughtful, considered purchase after significant investigation into the nature and source of such goods. When one is purchasing a raw material of the nature of applicant's goods, the reliability and consistency of that source is very important. A concrete supplier would not want to be unable to provide its concrete to its customers because it source of raw material was unreliable. Thus, applicant's customers would thoroughly investigate applicant and be well aware of who they are dealing with. Applicant and registrant are not competitors. As stated above, registrant is selling a finished product to end use purchasers; whereas, applicant is selling a raw material to a manufacturer of a finished or intermediate product. And, registrant is not likely to become a competitor of applicant because applicant?s goods are covered by multiple U.S. patents (U.S. Patent Nos. 9,822,037; 9,828,289; 10,047,006; 10,065,886; 10,047,005 and other pending patent applications). In view of the foregoing, applicant respectfully submits that there is not a likelihood of confusion between the present application and the registered mark.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for Cementitious material for building purposes, namely, natural pozzolans sold in bulk on a wholesale basis to industrial and commercial consumers
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: Cementitious material for building purposes, namely, natural pozzolans sold in bulk on a wholesale basis to industrial and commercial consumers; Natural pozzolans in powder form sold in bulk on a wholesale basis to industrial and commercial consumers for incorporation in cementitious material, such as concrete and mortarClass 019 for Natural pozzolans in powder form sold in bulk on a wholesale basis to industrial and commercial consumers for incorporation in cementitious material, such as concrete and mortar
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: Robert E. Richards. Robert E. Richards of RICHARDS IP LAW, is located at

      310 CHASE LANE
      MARIETTA, Georgia 30068
      US
The docket/reference number is GREEN-8031.

The phone number is 404-990-4558.

The email address is richardsiplaw@comcast.net

The applicants proposed attorney information: Robert E. Richards. Robert E. Richards of RICHARDS IP LAW, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      310 CHASE LANE
      MARIETTA, Georgia 30068
      United States
The docket/reference number is GREEN-8031.

The phone number is 404-990-4558.

The email address is richardsiplaw@comcast.net

Robert E. Richards 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: ROBERT E. RICHARDS. ROBERT E. RICHARDS of RICHARDS IP LAW, is located at

      310 CHASE LANE
      MARIETTA, Georgia 30068
      US
The docket/reference number is GREEN-8031.

The phone number is 404-990-4558.

The email address is richardsiplaw@comcast.net; ripdocketing@comcast.net

The applicants proposed correspondence information: Robert E. Richards. Robert E. Richards of RICHARDS IP LAW, is located at

      310 CHASE LANE
      MARIETTA, Georgia 30068
      United States
The docket/reference number is GREEN-8031.

The phone number is 404-990-4558.

The email address is richardsiplaw@comcast.net; ripdocketing@comcast.net

SIGNATURE(S)
Response Signature
Signature: /Robert E. Richards/     Date: 12/05/2019
Signatory's Name: Robert E. Richards
Signatory's Position: Attorney of record

Signatory's Phone Number: 404-990-4558

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:    ROBERT E. RICHARDS
   RICHARDS IP LAW
   
   310 CHASE LANE
   MARIETTA, Georgia 30068
Mailing Address:    Robert E. Richards
   RICHARDS IP LAW
   310 CHASE LANE
   MARIETTA, Georgia 30068
        
Serial Number: 88354924
Internet Transmission Date: Thu Dec 05 12:26:04 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912051226042
59998-88354924-700504f69dcd4c85983635a14
771f8668f995267ccacee6e67bb31fba1c485f89
c-N/A-N/A-20191205120724485560