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. 88381237 AXIUM(Standard Characters, see http://uspto.report/TM/88381237/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration of the subject trademark, asserting that its registration is likely to cause confusion with U.S. Registration 3,700,422 for "AXIOM". The cited trademark is registered for temperature-controlled beverage dispensers, including heated beverage dispensing units, beverage brewing equipment and portable hot beverage collecting and serving containers, etc. The Examining Attorney further asserts that manufacturers/distributors of heated beverage and hot water dispensers, etc., may offer water filters for filtering water delivered to the beverage dispensers, beverage brewing equipment, etc. As evidence of this fact, the Examining Attorney cites internet evidence regarding Keurig coffee makers and asserts that the entity making coffee makers may also sell filters for the coffee maker under the same mark. The Registration of Applicant's trademark is not likely to cause confusion in the marketplace in view of Applicant's amended goods description. As amended, Applicant's trademark is to be used in connection with whole-house water conditioning and purifying systems for residential, commercial and industrial use. The systems are sold by authorized dealers. A consumer looking to acquire or purchase a whole-house filtering system would not expect to obtain such a filtering system from a manufacturer of beverage dispensers or coffee makers. Whole- house filtering/treatment systems are typically purchased from specialized dealers and typically require a professional installation by technical experts. The purchaser of a whole-house filtering system does not typically install the system himself or herself. Moreover, filters for heated beverage dispensers and coffee makers are not sold in the same trade channels as whole-house filters. Consumers seeking to purchase a whole-house filtering system from an authorized dealer would be considered sophisticated consumers, as opposed to consumers purchasing a coffee maker. Accordingly, a purchaser of a whole-house filtering system would not be confused into believing that the whole-house filtering system bearing Applicant's trademark is being provided by a manufacturer or seller of hot beverage dispensers and coffee makers. It is respectfully submitted that the registration of Applicant's mark, when used on the specified goods, is not likely to cause confusion in the marketplace with Registrant's mark used on heated beverage dispensers and coffee makers. Applicant respectfully requests that the Examining Attorney withdraw her Section 2(d) Refusal and allow the subject application to proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Water treatment, water conditioning and purifying systems and apparatus, namely, water softening apparatus and installations, drinking water filtration systems comprised of water filters and parts and fittings thereof and replacement parts therefor, drinking water purification units, reverse-osmosis membrane units and whole-house water filters, water conditioning and purifying systems for residential, commercial and industrial use, comprised of water filters, sterilizing filters, drinking water filters, additive containing filters, additive containing cartridges and membrane filtering units
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: Water treatment, water conditioning and purifying systems and apparatus, namely, water softening apparatus and installations, drinking water filtration systems comprised of water filters and parts and fittings thereof and replacement parts therefor, drinking water purification units, reverse-osmosis membrane units and whole-house water filters, water conditioning and purifying systems for residential, commercial and industrial use, comprised of water filters, sterilizing filters, drinking water filters, additive containing filters, additive containing cartridges and membrane filtering units; Water treatment, water conditioning and purifying systems and apparatus, namely, whole-house water filters, whole house water conditioning and purifying systems for residential, commercial and industrial use sold by authorized dealers, comprised of water filters, sterilizing filters, additive containing filters, membrane filtering unitsClass 011 for Water treatment, water conditioning and purifying systems and apparatus, namely, whole-house water filters, whole house water conditioning and purifying systems for residential, commercial and industrial use sold by authorized dealers, comprised of water filters, sterilizing filters, additive containing filters, membrane filtering units
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: John R. Hlavka. John R. Hlavka of TAROLLLI, SUNDHEIM, COVELL & TUMMINO, LLP, is located at

      SUITE 1700
      1300 EAST NINTH STREET
      CLEVELAND, Ohio 44114
      US
The docket/reference number is KIN-193149US.

The phone number is 216-621-2234.

The fax number is 216-621-4072.

The email address is docketing@tarolli.com

The applicants proposed attorney information: John R. Hlavka. John R. Hlavka of TAROLLLI, SUNDHEIM, COVELL & TUMMINO, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 1700
      1300 EAST NINTH STREET
      CLEVELAND, Ohio 44114
      United States
The docket/reference number is KIN-193149US.

The phone number is 216-621-2234.

The fax number is 216-621-4072.

The email address is docketing@tarolli.com

John R. Hlavka 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: JOHN R. HLAVKA. JOHN R. HLAVKA of TAROLLLI, SUNDHEIM, COVELL & TUMMINO, LLP, is located at

      SUITE 1700
      1300 EAST NINTH STREET
      CLEVELAND, Ohio 44114
      US
The docket/reference number is KIN-193149US.

The phone number is 216-621-2234.

The fax number is 216-621-4072.

The email address is docketing@tarolli.com

The applicants proposed correspondence information: John R. Hlavka. John R. Hlavka of TAROLLLI, SUNDHEIM, COVELL & TUMMINO, LLP, is located at

      SUITE 1700
      1300 EAST NINTH STREET
      CLEVELAND, Ohio 44114
      United States
The docket/reference number is KIN-193149US.

The phone number is 216-621-2234.

The fax number is 216-621-4072.

The email address is docketing@tarolli.com

SIGNATURE(S)
Response Signature
Signature: /John R. Hlavka/     Date: 11/25/2019
Signatory's Name: John R. Hlavka
Signatory's Position: Attorney of Record, Ohio bar member

Signatory's Phone Number: 2166212234

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:    JOHN R. HLAVKA
   TAROLLLI, SUNDHEIM, COVELL & TUMMINO, LLP
   SUITE 1700
   1300 EAST NINTH STREET
   CLEVELAND, Ohio 44114
Mailing Address:    John R. Hlavka
   TAROLLLI, SUNDHEIM, COVELL & TUMMINO, LLP
   SUITE 1700
   1300 EAST NINTH STREET
   CLEVELAND, Ohio 44114
        
Serial Number: 88381237
Internet Transmission Date: Mon Nov 25 15:55:08 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019112515550861
0525-88381237-700611d5da25f1e107ca1ce786
758df12ab2dc2f91872d012856bbfb509ad773e4
-N/A-N/A-20191125153312710647