Response to Office Action

EVACLEAN

EarthSafe Chemical Alternatives, LLC

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88411377
LAW OFFICE ASSIGNED LAW OFFICE 120
MARK SECTION
MARK http://uspto.report/TM/88411377/mark.png
LITERAL ELEMENT EVACLEAN
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)
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK EXAMINING DIVISION Applicant: Serial No. : 88411377 Mark : EVACLEAN Applicant : Earth Safe Chemical Alternatives, LLC Filed : May 1, 2019 Examining Attorney : Joshua Toy, Trademark Examining Attorney Law Office : 120 Applicant submits the following in response to the Office Action dated July 15, 2019, for the above-reference application. I. NO LIKELIHOOD OF CONFUSION The Examining Attorney has identified the following Registered EVERCLEAN mark (registration no. 2943405) (Hereinafter ?Mark 1?) and EVERCLEAN mark (registration no. 5276640) (Hereinafter ?Mark 2?) (Collectively ?EVERCLEAN Marks?) as in conflict with the Applicant EVACLEAN mark, under Section 2 (d) of the Trademark Act, 15 U.S.C. ? 1052(d): Citing Registration Nos. 2943405 and 5276640 for likelihood of confusion, the Applicant respectfully requests consideration in light of the below argument to overcome the refusal to Class 005 by revising the Applicant mark?s description from its class in its application to, ?sporicidal tablet form effervescent disinfectant for healthcare and institutional use.? The Applicant further respectfully requests to amend classification by deleting Class 035 from its original application, and adopting Examining Attorney?s suggested services in Class 044, described as ?infection prevention consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of disease infection control.? Whether a likelihood of confusion exists is determined on a case-specific basis, applying the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.1973). Case law supports that even if the marks share common elements, letters and sound, that does not create a likelihood of confusion. Applicant submits that the most relevant du Pont factors in favor of the Applicant EVACLEAN mark in this case are, 1) the similarity of dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use and; 2) the similarity or dissimilarity of the marks in appearance, sound, connotation and commercial impression; 3) the similarity or dissimilarity in trade channels of the marks; 4) the conditions under which, and buyers to whom, sales are made (i.e., impulse v. careful, sophisticated purchasing); and lack of evidence of any actual confusion. In regard to Mark 1, consumers are unlikely to confuse or assume a unitary origin/source shared between all- purpose cleaner for general use, (Registered Mark 1) with an effervescent disinfectant tablet with the strength to kill Clostridium dificile spores for use in healthcare (Applicant EVACLEAN mark) because the goods and uses are distinct, the appearance, and commercial impression of the marks are dissimilar, and the customer base and channels of trade and use are dissimilar. One group is comprised of highly informed professional purchasers, Environmental Service Directors and Infection Preventionists Nurses, seeking hospital grade disinfection and the other includes those of individual users for all purpose cleaners which do not require EPA registration or fall under the purview of other federal regulation. Cleaners are categorized under Class 003. As an example, a detergent is a cleaner. A detergent bottle label will not have claims against pathogens as it does not kill them. The same applies to all-purpose cleaners. (Exhibit 1 ? All Purpose Cleaner Labels) The goods connected with Applicant EVACLEAN mark are for use in healthcare for high level disinfection, which must be EPA registered in order to provide the kill claims that are listed on product labels. (Exhibit 2 ? Product Label). The EPA requires registration of antimicrobial pesticides which is defined as those ?intended to disinfect, sanitize, reduce, or mitigate growth or development of microbiological organisms or protect inanimate objects, industrial processes or systems, surfaces?.? (Exhibit 3 -EPA Website) the Applicant?s EVACLEAN Mark disinfecting tablets are antimicrobial products that require EPA Registration. In its guidelines for healthcare disinfection, the CDC defines cleaning as ?removal of foreign material ? accomplished using water with detergents.? Further, ?thorough cleaning is required before high level disinfection.? (Exhibit 4 ? CDC Guidelines). Use of disinfectants, especially those with higher concentrations, require precautions for use which includes minimizing exposure. Applicant EVACLEAN mark are disinfectants for high level disinfection of healthcare facilities which require training housekeepers on proper concentrations, dilutions, application processes, and safety procedures In no instance is the Applicant EVACLEAN mark?s directed to a non-institutional or household user unfamiliar with high level disinfection protocols. The Applicant EVACLEAN mark is used in connection with removing infectious agents for purposes of infection prevention and reduction of multi-drug resistant organisms; ?super bugs.? One of its products holds the only EPA registered claim to kill bacteria in biofilm, in addition to kill claims for C.diff, Candida auris, MSRA, HIV, Hepatitis, Norovirus, Salmonella, Influenza, and others. It is not for household use and is not marketed to consumers or non-institutional users. The internet screenshots offered as evidence that Applicant EVACLEAN mark, and Registered Mark 1 operate in the same channels of trade is accurate, however, the classes of purchasers are completely different. The screenshots either show a manufacturer of chemicals (Brulin Holding Company, Inc.) or are distributors targeting only informed instutional or healthcare purchases. These websites are not targeting or marketing to consumers for household use. A quick Google search of ?household cleaners? (Exhibit 5 - Screenshot of Search) shows a variety of well known brands targeted directly to cosumers. Cleaners that are appropriate for both household and commercial use are those that you would typically find in the cleaning aisle of the grocery store, not through a chemical manufacturer or a distributor of janitorial and sanitation products to institutions. The differences are striking. In regard to Registered Mark 2, consumers are unlikely to confuse services of Registered Mark 2, health inspections of restaurants for the food services industry, with services of Applicant mark for ?infection prevention consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of disease infection control,? because the services and uses are distinct, the appearance, and commercial impression of the marks are dissimilar, and the customer base and channels of trade and use are dissimilar. Dissimilarity in Appearance and Sound of Marks The TTAB held previously that a one letter difference and similar sound did not cause a likelihoold of confusion. Safeway Stotres, Inc. v. Bel Canto Fancy Foods Ltd., 5 U.S.P.Q2d 1980, 1982 (TTAB 1987) (holding that in terms of pronunciation, BEL AIR and BEL ARIA ?are only slightly similar? and, therefore, there is no likelihood of confusion between the marks. Where two marks have shared a common word and common streams of commerce and industry, which is not the case here, the Federal Circuit held there was no likelihood of confusion, In re Bed & Breakfast Registry, 791 F.2d 157 (Fed. Cir. 1986) (holding no likelihood of confusion between the mark BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes and the mark BED & BREAKFAST INTERNATIONAL for room booking agency services). In the instance of the Applicant, EVACLEAN mark, and the marks (Applicant EVACLEAN mark and both Registered EVERCLEAN Mark 1 and Mark 2) do not share an identical name. EVACLEAN is different from EVERCLEAN in appearance and sound. The ?r? in Registered EVERCLEAR Marks make the mark sound phonetically different from Applicant EVACLEAN mark. Comparing the marks, they are comprised of different spellings. Whereas, other marks exist on the register with the exact same spelling and are sold in the same channels of trade and categories of services- the food industry, i.e., Finlandia for vodka and cheese, Dove for beauty bars and chocolate. These identical marks have not been found to confuse consumers. In the Applicant EVACLEAN mark application, the marks are not identical and are sold to different customers for different uses and services. Applicant requests that, ?The proper test is not a side-by-side comparison of the marks, but instead ?whether the marks are sufficiently similar in terms of their commercial impression? such that persons who encounter the marks would be likely to assume a connection between the parties.? Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Below, the Applicant EVACLEAN assesses commercial impression. Goods and Uses are Distinct Regarding commercial impression, Applicant EVACLEAN mark and Registered EVERCLEAN MARKS are not in the same Class, 005, 003, 42 respectively. While classes 003 and 005 are considered coordinated classes as many applicants file together in both classes. In this instance, Registered EVERCLEAN Mark 1 did not include a broader category in a coordinated class for its mark. Applicant EVACLEAN mark, on the other hand narrowed its selection of Class 005 to a specific good and use. The Registered EVERCLEAN Mark 1 describes use of its products in a broad area within Class 003, ? all purpose cleaning preparations for commercial and household applications.? Applicant EVACLEAN mark claims Class 005; all purpose disinfectants, ?sporicidal tablet form effervescent disinfectants for healthcare and commercial use.? Applicant respectfully requests to amend the description of goods and services to further narrow its description from its class in its application as, ?sporicidal tablet form effervescent disinfectant for healthcare and institutional use? to further differentiate its use and customer base from Registrant EVERCLEAN Mark 1. No claim is made for household use. All materials refer to hard surface disinfection to kill dangerous bacteria and viruses that cause illnesses. These goods and uses are very different from those whose customers are seeking a cleaning product for their house or office. In regard to Registered Mark 2, it describes its services for restaurants in the food services industry under Class 042. Applicant EVACLEAN mark requests to amend its application to services under Class 044 as ?infection prevention consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of disease infection control.? Unrelatedness of the Goods The Registered Mark 1?s customer is unlikely to look to purchase these different marks? goods in the same place or from the same source. There exists a strong difference between sales all purpose cleaners for household and commercial use, (Registered EVERCLEAN Mark 1) and sporicidal disinfectants for surfaces in hospital rooms, and institutions, (Applicant EVACLEAN mark). These are unlikely to be a cause of customer confusion as to source because is unlikely that the same customers would look for or find these distinct products and channels of trade to emanate from a common source since there is no similar marketing nor customer base. Evidence of Unrelatedness of Goods can be found through a quick search of ?all purpose cleaners for home example? compared to ?sporicidal grade disinfectant example.? In the former, known brands to lay consumers that can be found in any grocery store show up on the search, and in the latter, concentrated products sold by distributors to institutional buyers. (Exhibit 6) Unrelatedness of the Services The Registered Mark 2?s customer is unlikely to look to purchase these different marks? services in the same place or from the same source, as the services are completely distinct in industries and require experienced, credentialed and trained professionals for each one (food services vs healthcare). Where one consults for maintenance of food safety (Registered Mark 1), the Applicant mark consults for infection prevention in healthare. (Exhibit 7? Screen Shot HC Consulting) Different Customer Bases The Applicant EVACLEAN mark is only available for sale through business to business commerce. The product is only sold through distribution channels of janitorial or healthcare supplies. The Applicant EVACLEAN mark products are not available online, or in a store to retail purchasers or directly to an end user. The Registered Mark 1?s product pursuant to its class is sold to consumers or retail purchasers in conducting day to day in a non- regulated environment. Further evidence of NO LIKELIHOOD OF CONFUSION is demonstrated when examining the purchasers. With Registered EVERCLEAN Mark 1, the purchaser is a consumer, versus an institution. The purchaser for Applicant EVACLEAN mark is not a consumer user, but a highly educated, Infection Control, institutional purchaser. They usually are trained and certified in infection prevention and environmental services. They are licensed in their field, belong to national organizations and associations and are mandated with ensuring the protection of their employees and safety of patients or residents in a healthcare setting. Such customers are protecting their business and maintaining Medicare reimbursements for minimizing healthcare aquired infections in its facilities. These customers are very different from the individual Registered EVERCLEAN Mark 1 consumer of all purpose cleaner for household and commercial use. In regard to Registered Mark 2, the customer base of restaurants is completely distinct from a healthcare customer base consisting of acute care, long term care, medical office buildings, and urgent care facilities, requiring completely distinct and tailored consulting services. CONCLUSION Applicant respectfully requests to amend the description of goods and services to further narrow its description from class 005 in its application to, ?sporicidal tablet form effervescent disinfectant for healthcare and institutional use.? The Applicant further respectfully requests to amend services classification by requesting deletion of Class 035 from its original application, and to adopt Examining Attorney?s suggested services in Class 044, described as ?infection prevention consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of disease infection control? with corresponding specimen included. If the foregoing is not a sufficient response to this Office Action, please contact the undersigned at (781) 752-1212. Thank you for your assistance. Respectfully Submitted, Fl?via R. da Silva Benson, Esq. Attorney of record, MA bar member General Counsel EarthSafe Chemical Alternatives, LLC 145 Wood Rd. Braintree, MA 02184 fbenson@earthsafeca.com IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK EXAMINING DIVISION In the matter of Serial No. : 8841137 Mark : EVACLEAN Classes : 005, 033 Applicant : Earth Safe Chemical Alternatives, LLC Filed : May 1, 2019 Examining Attorney : Joshua Toy, Trademark Examining Attorney Law Office : 120 Commissioner for Trademarks P.O. Box, 1451 Alexandria, Virginia 22313-1451 DECLARATION OF FLAVIA R. DA SILVA-BENSON I, Fl?via R. da Silva-Benson, declare as follows: 1. I am General Counsel for EarthSafe Chemical Alternatives, LLC, and Counsel on Record for the Trademark matter for the Applicant, Earth Safe Chemical Alternatives, LLC (?Applicant?). I make this declaration in support of Applicant?s application to register its trademark EVACLEAN. 2. Attached as Exhibits are true and correct copies of Applicant?s products, healthcare brochure and consulting services specifications. 3. All statements made herein of my own knowledge are true and all statements made on information and belief are believed to be true, and these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of this application or any resulting registration. Dated: January 8, 2020 /s/ Fl?via R. da Silva-Benson _______________________________ Fl?via R. da Silva-Benson
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILE evi_2423391250-20200108122959136789_._EXHIBIT_1.pdf
       CONVERTED PDF FILE(S)
       (1 page)
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       ORIGINAL PDF FILE evi_2423391250-20200108122959136789_._EXHIBIT_2.pdf
       CONVERTED PDF FILE(S)
       (1 page)
\\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0003.JPG
       ORIGINAL PDF FILE evi_2423391250-20200108122959136789_._Exhibit_3.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
\\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0004.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0005.JPG
       ORIGINAL PDF FILE evi_2423391250-20200108122959136789_._Exhibit_4.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
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        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0007.JPG
       ORIGINAL PDF FILE evi_2423391250-20200108122959136789_._EXHIBIT_5.pdf
       CONVERTED PDF FILE(S)
       (1 page)
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       ORIGINAL PDF FILE evi_2423391250-20200108122959136789_._EXHIBIT_6.pdf
       CONVERTED PDF FILE(S)
       (1 page)
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       ORIGINAL PDF FILE evi_2423391250-20200108122959136789_._EXHIBIT_7.pdf
       CONVERTED PDF FILE(S)
       (1 page)
\\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0010.JPG
DESCRIPTION OF EVIDENCE FILE Comparison of labels for cleaners vs disinfectants, definition of EPA anti-microbial, CDC guidelines, evidence of B to B vs B to Consumer sales.
GOODS AND/OR SERVICES SECTION (005)(current)
INTERNATIONAL CLASS 005
DESCRIPTION
Sporicidal tablet form effervescent disinfectants for healthcare and commercial use
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 04/26/2016
        FIRST USE IN COMMERCE DATE At least as early as 07/15/2017
GOODS AND/OR SERVICES SECTION (005)(proposed)
INTERNATIONAL CLASS 005
TRACKED TEXT DESCRIPTION
Sporicidal tablet form effervescent disinfectants for healthcare and commercial use; Sporicidal tablet form effervescent disinfectant for healthcare and institutional use
FINAL DESCRIPTION
Sporicidal tablet form effervescent disinfectant for healthcare and institutional use
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 04/26/2016
       FIRST USE IN COMMERCE DATE At least as early as 07/15/2017
GOODS AND/OR SERVICES SECTION (035)(class deleted)
GOODS AND/OR SERVICES SECTION (044)(class added)Original Class (035)
INTERNATIONAL CLASS 044
DESCRIPTION
Infection prevention institutional consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of infection control
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 04/26/2016
        FIRST USE IN COMMERCE DATE At least as early as 07/15/2017
       STATEMENT TYPE "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
       SPECIMEN FILE NAME(S)
       ORIGINAL PDF FILE SPU1-2423391250-20200108122959136789_._Evaclean_Environmental_Monitoring_Program_-_Specimen.pdf
       CONVERTED PDF FILE(S)
       (6 pages)
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        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0012.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0013.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0014.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0015.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0016.JPG
       ORIGINAL PDF FILE SPU1-2423391250-20200108122959136789_._Evaclean_Healthcare_brochure.pdf
       CONVERTED PDF FILE(S)
       (6 pages)
\\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0017.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0018.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0019.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0020.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0021.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\884\113\88411377\xml6\ROA0022.JPG
       SPECIMEN DESCRIPTION Services for microbiological monitoring and full system.
ATTORNEY SECTION (current)
NAME Flavia R da Silva Benson
ATTORNEY BAR MEMBERSHIP NUMBER NOT SPECIFIED
YEAR OF ADMISSION NOT SPECIFIED
U.S. STATE/ COMMONWEALTH/ TERRITORY NOT SPECIFIED
STREET 145 WOOD ROAD
CITY BRAINTREE
STATE Massachusetts
POSTAL CODE 02184
COUNTRY US
PHONE 781-752-1212
EMAIL fbenson@earthsafeca.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
ATTORNEY SECTION (proposed)
NAME Flavia R da Silva Benson
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
STREET 145 WOOD ROAD
CITY BRAINTREE
STATE Massachusetts
POSTAL CODE 02184
COUNTRY United States
PHONE 781-752-1212
EMAIL fbenson@earthsafeca.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
CORRESPONDENCE SECTION (current)
NAME FLAVIA R DA SILVA BENSON
STREET 145 WOOD ROAD
CITY BRAINTREE
STATE Massachusetts
POSTAL CODE 02184
COUNTRY US
PHONE 781-752-1212
EMAIL fbenson@earthsafeca.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
CORRESPONDENCE SECTION (proposed)
NAME Flavia R da Silva Benson
STREET 145 WOOD ROAD
CITY BRAINTREE
STATE Massachusetts
POSTAL CODE 02184
COUNTRY United States
PHONE 781-752-1212
EMAIL fbenson@earthsafeca.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
SIGNATURE SECTION
DECLARATION SIGNATURE /Flavia R da Silva-Benson/
SIGNATORY'S NAME Flavia R. da Silva-Benson
SIGNATORY'S POSITION Attorney of Record
SIGNATORY'S PHONE NUMBER 781-752-1212
DATE SIGNED 01/08/2020
RESPONSE SIGNATURE /Flavia R. da Silva-Benson/
SIGNATORY'S NAME Flavia R. da Silva-Benson
SIGNATORY'S POSITION Attorney of Record
SIGNATORY'S PHONE NUMBER 781-752-1212
DATE SIGNED 01/08/2020
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Jan 08 12:53:01 EST 2020
TEAS STAMP USPTO/ROA-XX.XXX.XX.XXX-2
0200108125301126405-88411
377-700ea883d5522e9852f9d
b7daddfd06ed9744e57f9bc08
2d6bce06fd3155ed-N/A-N/A-
20200108122959136789



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. 88411377 EVACLEAN(Standard Characters, see http://uspto.report/TM/88411377/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK EXAMINING DIVISION Applicant: Serial No. : 88411377 Mark : EVACLEAN Applicant : Earth Safe Chemical Alternatives, LLC Filed : May 1, 2019 Examining Attorney : Joshua Toy, Trademark Examining Attorney Law Office : 120 Applicant submits the following in response to the Office Action dated July 15, 2019, for the above-reference application. I. NO LIKELIHOOD OF CONFUSION The Examining Attorney has identified the following Registered EVERCLEAN mark (registration no. 2943405) (Hereinafter ?Mark 1?) and EVERCLEAN mark (registration no. 5276640) (Hereinafter ?Mark 2?) (Collectively ?EVERCLEAN Marks?) as in conflict with the Applicant EVACLEAN mark, under Section 2 (d) of the Trademark Act, 15 U.S.C. ? 1052(d): Citing Registration Nos. 2943405 and 5276640 for likelihood of confusion, the Applicant respectfully requests consideration in light of the below argument to overcome the refusal to Class 005 by revising the Applicant mark?s description from its class in its application to, ?sporicidal tablet form effervescent disinfectant for healthcare and institutional use.? The Applicant further respectfully requests to amend classification by deleting Class 035 from its original application, and adopting Examining Attorney?s suggested services in Class 044, described as ?infection prevention consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of disease infection control.? Whether a likelihood of confusion exists is determined on a case-specific basis, applying the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.1973). Case law supports that even if the marks share common elements, letters and sound, that does not create a likelihood of confusion. Applicant submits that the most relevant du Pont factors in favor of the Applicant EVACLEAN mark in this case are, 1) the similarity of dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use and; 2) the similarity or dissimilarity of the marks in appearance, sound, connotation and commercial impression; 3) the similarity or dissimilarity in trade channels of the marks; 4) the conditions under which, and buyers to whom, sales are made (i.e., impulse v. careful, sophisticated purchasing); and lack of evidence of any actual confusion. In regard to Mark 1, consumers are unlikely to confuse or assume a unitary origin/source shared between all- purpose cleaner for general use, (Registered Mark 1) with an effervescent disinfectant tablet with the strength to kill Clostridium dificile spores for use in healthcare (Applicant EVACLEAN mark) because the goods and uses are distinct, the appearance, and commercial impression of the marks are dissimilar, and the customer base and channels of trade and use are dissimilar. One group is comprised of highly informed professional purchasers, Environmental Service Directors and Infection Preventionists Nurses, seeking hospital grade disinfection and the other includes those of individual users for all purpose cleaners which do not require EPA registration or fall under the purview of other federal regulation. Cleaners are categorized under Class 003. As an example, a detergent is a cleaner. A detergent bottle label will not have claims against pathogens as it does not kill them. The same applies to all-purpose cleaners. (Exhibit 1 ? All Purpose Cleaner Labels) The goods connected with Applicant EVACLEAN mark are for use in healthcare for high level disinfection, which must be EPA registered in order to provide the kill claims that are listed on product labels. (Exhibit 2 ? Product Label). The EPA requires registration of antimicrobial pesticides which is defined as those ?intended to disinfect, sanitize, reduce, or mitigate growth or development of microbiological organisms or protect inanimate objects, industrial processes or systems, surfaces?.? (Exhibit 3 -EPA Website) the Applicant?s EVACLEAN Mark disinfecting tablets are antimicrobial products that require EPA Registration. In its guidelines for healthcare disinfection, the CDC defines cleaning as ?removal of foreign material ? accomplished using water with detergents.? Further, ?thorough cleaning is required before high level disinfection.? (Exhibit 4 ? CDC Guidelines). Use of disinfectants, especially those with higher concentrations, require precautions for use which includes minimizing exposure. Applicant EVACLEAN mark are disinfectants for high level disinfection of healthcare facilities which require training housekeepers on proper concentrations, dilutions, application processes, and safety procedures In no instance is the Applicant EVACLEAN mark?s directed to a non-institutional or household user unfamiliar with high level disinfection protocols. The Applicant EVACLEAN mark is used in connection with removing infectious agents for purposes of infection prevention and reduction of multi-drug resistant organisms; ?super bugs.? One of its products holds the only EPA registered claim to kill bacteria in biofilm, in addition to kill claims for C.diff, Candida auris, MSRA, HIV, Hepatitis, Norovirus, Salmonella, Influenza, and others. It is not for household use and is not marketed to consumers or non-institutional users. The internet screenshots offered as evidence that Applicant EVACLEAN mark, and Registered Mark 1 operate in the same channels of trade is accurate, however, the classes of purchasers are completely different. The screenshots either show a manufacturer of chemicals (Brulin Holding Company, Inc.) or are distributors targeting only informed instutional or healthcare purchases. These websites are not targeting or marketing to consumers for household use. A quick Google search of ?household cleaners? (Exhibit 5 - Screenshot of Search) shows a variety of well known brands targeted directly to cosumers. Cleaners that are appropriate for both household and commercial use are those that you would typically find in the cleaning aisle of the grocery store, not through a chemical manufacturer or a distributor of janitorial and sanitation products to institutions. The differences are striking. In regard to Registered Mark 2, consumers are unlikely to confuse services of Registered Mark 2, health inspections of restaurants for the food services industry, with services of Applicant mark for ?infection prevention consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of disease infection control,? because the services and uses are distinct, the appearance, and commercial impression of the marks are dissimilar, and the customer base and channels of trade and use are dissimilar. Dissimilarity in Appearance and Sound of Marks The TTAB held previously that a one letter difference and similar sound did not cause a likelihoold of confusion. Safeway Stotres, Inc. v. Bel Canto Fancy Foods Ltd., 5 U.S.P.Q2d 1980, 1982 (TTAB 1987) (holding that in terms of pronunciation, BEL AIR and BEL ARIA ?are only slightly similar? and, therefore, there is no likelihood of confusion between the marks. Where two marks have shared a common word and common streams of commerce and industry, which is not the case here, the Federal Circuit held there was no likelihood of confusion, In re Bed & Breakfast Registry, 791 F.2d 157 (Fed. Cir. 1986) (holding no likelihood of confusion between the mark BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes and the mark BED & BREAKFAST INTERNATIONAL for room booking agency services). In the instance of the Applicant, EVACLEAN mark, and the marks (Applicant EVACLEAN mark and both Registered EVERCLEAN Mark 1 and Mark 2) do not share an identical name. EVACLEAN is different from EVERCLEAN in appearance and sound. The ?r? in Registered EVERCLEAR Marks make the mark sound phonetically different from Applicant EVACLEAN mark. Comparing the marks, they are comprised of different spellings. Whereas, other marks exist on the register with the exact same spelling and are sold in the same channels of trade and categories of services- the food industry, i.e., Finlandia for vodka and cheese, Dove for beauty bars and chocolate. These identical marks have not been found to confuse consumers. In the Applicant EVACLEAN mark application, the marks are not identical and are sold to different customers for different uses and services. Applicant requests that, ?The proper test is not a side-by-side comparison of the marks, but instead ?whether the marks are sufficiently similar in terms of their commercial impression? such that persons who encounter the marks would be likely to assume a connection between the parties.? Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Below, the Applicant EVACLEAN assesses commercial impression. Goods and Uses are Distinct Regarding commercial impression, Applicant EVACLEAN mark and Registered EVERCLEAN MARKS are not in the same Class, 005, 003, 42 respectively. While classes 003 and 005 are considered coordinated classes as many applicants file together in both classes. In this instance, Registered EVERCLEAN Mark 1 did not include a broader category in a coordinated class for its mark. Applicant EVACLEAN mark, on the other hand narrowed its selection of Class 005 to a specific good and use. The Registered EVERCLEAN Mark 1 describes use of its products in a broad area within Class 003, ? all purpose cleaning preparations for commercial and household applications.? Applicant EVACLEAN mark claims Class 005; all purpose disinfectants, ?sporicidal tablet form effervescent disinfectants for healthcare and commercial use.? Applicant respectfully requests to amend the description of goods and services to further narrow its description from its class in its application as, ?sporicidal tablet form effervescent disinfectant for healthcare and institutional use? to further differentiate its use and customer base from Registrant EVERCLEAN Mark 1. No claim is made for household use. All materials refer to hard surface disinfection to kill dangerous bacteria and viruses that cause illnesses. These goods and uses are very different from those whose customers are seeking a cleaning product for their house or office. In regard to Registered Mark 2, it describes its services for restaurants in the food services industry under Class 042. Applicant EVACLEAN mark requests to amend its application to services under Class 044 as ?infection prevention consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of disease infection control.? Unrelatedness of the Goods The Registered Mark 1?s customer is unlikely to look to purchase these different marks? goods in the same place or from the same source. There exists a strong difference between sales all purpose cleaners for household and commercial use, (Registered EVERCLEAN Mark 1) and sporicidal disinfectants for surfaces in hospital rooms, and institutions, (Applicant EVACLEAN mark). These are unlikely to be a cause of customer confusion as to source because is unlikely that the same customers would look for or find these distinct products and channels of trade to emanate from a common source since there is no similar marketing nor customer base. Evidence of Unrelatedness of Goods can be found through a quick search of ?all purpose cleaners for home example? compared to ?sporicidal grade disinfectant example.? In the former, known brands to lay consumers that can be found in any grocery store show up on the search, and in the latter, concentrated products sold by distributors to institutional buyers. (Exhibit 6) Unrelatedness of the Services The Registered Mark 2?s customer is unlikely to look to purchase these different marks? services in the same place or from the same source, as the services are completely distinct in industries and require experienced, credentialed and trained professionals for each one (food services vs healthcare). Where one consults for maintenance of food safety (Registered Mark 1), the Applicant mark consults for infection prevention in healthare. (Exhibit 7? Screen Shot HC Consulting) Different Customer Bases The Applicant EVACLEAN mark is only available for sale through business to business commerce. The product is only sold through distribution channels of janitorial or healthcare supplies. The Applicant EVACLEAN mark products are not available online, or in a store to retail purchasers or directly to an end user. The Registered Mark 1?s product pursuant to its class is sold to consumers or retail purchasers in conducting day to day in a non- regulated environment. Further evidence of NO LIKELIHOOD OF CONFUSION is demonstrated when examining the purchasers. With Registered EVERCLEAN Mark 1, the purchaser is a consumer, versus an institution. The purchaser for Applicant EVACLEAN mark is not a consumer user, but a highly educated, Infection Control, institutional purchaser. They usually are trained and certified in infection prevention and environmental services. They are licensed in their field, belong to national organizations and associations and are mandated with ensuring the protection of their employees and safety of patients or residents in a healthcare setting. Such customers are protecting their business and maintaining Medicare reimbursements for minimizing healthcare aquired infections in its facilities. These customers are very different from the individual Registered EVERCLEAN Mark 1 consumer of all purpose cleaner for household and commercial use. In regard to Registered Mark 2, the customer base of restaurants is completely distinct from a healthcare customer base consisting of acute care, long term care, medical office buildings, and urgent care facilities, requiring completely distinct and tailored consulting services. CONCLUSION Applicant respectfully requests to amend the description of goods and services to further narrow its description from class 005 in its application to, ?sporicidal tablet form effervescent disinfectant for healthcare and institutional use.? The Applicant further respectfully requests to amend services classification by requesting deletion of Class 035 from its original application, and to adopt Examining Attorney?s suggested services in Class 044, described as ?infection prevention consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of disease infection control? with corresponding specimen included. If the foregoing is not a sufficient response to this Office Action, please contact the undersigned at (781) 752-1212. Thank you for your assistance. Respectfully Submitted, Fl?via R. da Silva Benson, Esq. Attorney of record, MA bar member General Counsel EarthSafe Chemical Alternatives, LLC 145 Wood Rd. Braintree, MA 02184 fbenson@earthsafeca.com IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK EXAMINING DIVISION In the matter of Serial No. : 8841137 Mark : EVACLEAN Classes : 005, 033 Applicant : Earth Safe Chemical Alternatives, LLC Filed : May 1, 2019 Examining Attorney : Joshua Toy, Trademark Examining Attorney Law Office : 120 Commissioner for Trademarks P.O. Box, 1451 Alexandria, Virginia 22313-1451 DECLARATION OF FLAVIA R. DA SILVA-BENSON I, Fl?via R. da Silva-Benson, declare as follows: 1. I am General Counsel for EarthSafe Chemical Alternatives, LLC, and Counsel on Record for the Trademark matter for the Applicant, Earth Safe Chemical Alternatives, LLC (?Applicant?). I make this declaration in support of Applicant?s application to register its trademark EVACLEAN. 2. Attached as Exhibits are true and correct copies of Applicant?s products, healthcare brochure and consulting services specifications. 3. All statements made herein of my own knowledge are true and all statements made on information and belief are believed to be true, and these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of this application or any resulting registration. Dated: January 8, 2020 /s/ Fl?via R. da Silva-Benson _______________________________ Fl?via R. da Silva-Benson

EVIDENCE
Evidence in the nature of Comparison of labels for cleaners vs disinfectants, definition of EPA anti-microbial, CDC guidelines, evidence of B to B vs B to Consumer sales. has been attached.
Original PDF file:
evi_2423391250-20200108122959136789_._EXHIBIT_1.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_2423391250-20200108122959136789_._EXHIBIT_2.pdf
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Evidence-1
Original PDF file:
evi_2423391250-20200108122959136789_._Exhibit_3.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_2423391250-20200108122959136789_._Exhibit_4.pdf
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Evidence-1
Evidence-2
Original PDF file:
evi_2423391250-20200108122959136789_._EXHIBIT_5.pdf
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Evidence-1
Original PDF file:
evi_2423391250-20200108122959136789_._EXHIBIT_6.pdf
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Evidence-1
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evi_2423391250-20200108122959136789_._EXHIBIT_7.pdf
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Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Infection prevention institutional consultancy for development of processes for analysis and implementation of optimized environmental services

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Sporicidal tablet form effervescent disinfectants for healthcare and commercial use
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/26/2016 and first used in commerce at least as early as 07/15/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Sporicidal tablet form effervescent disinfectants for healthcare and commercial use; Sporicidal tablet form effervescent disinfectant for healthcare and institutional useClass 005 for Sporicidal tablet form effervescent disinfectant for healthcare and institutional use
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/26/2016 and first used in commerce at least as early as 07/15/2017 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 044 (Original Class: 035 ) for Infection prevention institutional consultancy for development of processes for analysis and implementation of optimized environmental services all in the nature of medical/healthcare consulting services in the field of infection control
Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 04/26/2016 and first used in commerce at least as early as 07/15/2017 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 044 . The specimen(s) submitted consists of Services for microbiological monitoring and full system. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-2423391250-20200108122959136789_._Evaclean_Environmental_Monitoring_Program_-_Specimen.pdf
Converted PDF file(s) ( 6 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Original PDF file:
SPU1-2423391250-20200108122959136789_._Evaclean_Healthcare_brochure.pdf
Converted PDF file(s) ( 6 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

The applicant's current attorney information: Flavia R da Silva Benson. Flavia R da Silva Benson, is located at

      145 WOOD ROAD
      BRAINTREE, Massachusetts 02184
      US

The phone number is 781-752-1212.

The email address is fbenson@earthsafeca.com

The applicants proposed attorney information: Flavia R da Silva Benson. Flavia R da Silva Benson, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      145 WOOD ROAD
      BRAINTREE, Massachusetts 02184
      United States

The phone number is 781-752-1212.

The email address is fbenson@earthsafeca.com

Flavia R da Silva Benson 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: FLAVIA R DA SILVA BENSON. FLAVIA R DA SILVA BENSON, is located at

      145 WOOD ROAD
      BRAINTREE, Massachusetts 02184
      US

The phone number is 781-752-1212.

The email address is fbenson@earthsafeca.com

The applicants proposed correspondence information: Flavia R da Silva Benson. Flavia R da Silva Benson, is located at

      145 WOOD ROAD
      BRAINTREE, Massachusetts 02184
      United States

The phone number is 781-752-1212.

The email address is fbenson@earthsafeca.com

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.



Signature: /Flavia R da Silva-Benson/      Date: 01/08/2020
Signatory's Name: Flavia R. da Silva-Benson
Signatory's Position: Attorney of Record
Signatory's Phone Number: 781-752-1212


Response Signature
Signature: /Flavia R. da Silva-Benson/     Date: 01/08/2020
Signatory's Name: Flavia R. da Silva-Benson
Signatory's Position: Attorney of Record

Signatory's Phone Number: 781-752-1212

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:    FLAVIA R DA SILVA BENSON
   
   
   145 WOOD ROAD
   BRAINTREE, Massachusetts 02184
Mailing Address:    Flavia R da Silva Benson
   145 WOOD ROAD
   BRAINTREE, Massachusetts 02184
        
Serial Number: 88411377
Internet Transmission Date: Wed Jan 08 12:53:01 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020010812530112
6405-88411377-700ea883d5522e9852f9db7dad
dfd06ed9744e57f9bc082d6bce06fd3155ed-N/A
-N/A-20200108122959136789


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