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 |
88645881 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 121 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88645881/mark.png |
| LITERAL ELEMENT |
AQUABARRIER |
| 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) |
|
AQUABARRIER for flooring materials is not more likely than not to be confused with AQUABARRIER for concrete wall waterproofing membranes. Although the marks are identical, the goods, channels of
trade, price, and circumstances of purchase mandate that consumers are not likely to confuse the source of the products. Applicant's AQUABARRIER flooring is purchased by flooring professionals and
installers. The product is relatively expensive and is not sold to retail consumers. Registrant's AQUABARRIER is similarly a relatively expensive, highly specialized product that is sold to
waterproofing contractors, not to retail consumers. The circumstances of ordering and purchasing these products further renders it unlikely that the relevant consumers will not be aware of the source
of the products to distinguish them. Finally, the marks have coexisted in the marketplace, along with other AQUA BARRIER marks, for more than 13 years without evidence of consumer
confusion.
AQUABARRIER is not merely descriptive for flooring materials, as evidenced by the registration of AQUABARRIER for waterproofing wall membranes. The term "aqua" is not English and its
combination with "barrier" is entirely random. Moreover, the combined term could have several meaning, even as applied to Applicant's goods, resulting in the modicum of inquiry required to
remove it from the realm of mere descriptiveness. It could be interpreted as spill proof or resistant, water proof or resistant, or washable with water or water-based cleaner. For these
reasons, the mark should be approved for publication.
|
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/sherry flax/ |
| SIGNATORY'S NAME |
Sherry Flax |
| SIGNATORY'S POSITION |
Attorney of record, Maryland bar member |
| SIGNATORY'S PHONE NUMBER |
410-332-8784 |
| DATE SIGNED |
01/13/2020 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Mon Jan 13 16:11:12 EST 2020 |
| TEAS STAMP |
USPTO/ROA-X.XX.XX.X-20200
113161112167098-88645881-
700802492c0119c85b1f5da26
63dca5584f9e55da2e22c3cf1
7cb5d72a85fb23ac-N/A-N/A-
20200113155822785550 |
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.
88645881 AQUABARRIER(Standard Characters, see http://uspto.report/TM/88645881/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
AQUABARRIER for flooring materials is not more likely than not to be confused with AQUABARRIER for concrete wall waterproofing membranes. Although the marks are identical, the goods, channels of
trade, price, and circumstances of purchase mandate that consumers are not likely to confuse the source of the products. Applicant's AQUABARRIER flooring is purchased by flooring professionals and
installers. The product is relatively expensive and is not sold to retail consumers. Registrant's AQUABARRIER is similarly a relatively expensive, highly specialized product that is sold to
waterproofing contractors, not to retail consumers. The circumstances of ordering and purchasing these products further renders it unlikely that the relevant consumers will not be aware of the source
of the products to distinguish them. Finally, the marks have coexisted in the marketplace, along with other AQUA BARRIER marks, for more than 13 years without evidence of consumer
confusion.
AQUABARRIER is not merely descriptive for flooring materials, as evidenced by the registration of AQUABARRIER for waterproofing wall membranes. The term "aqua" is not English and its
combination with "barrier" is entirely random. Moreover, the combined term could have several meaning, even as applied to Applicant's goods, resulting in the modicum of inquiry required to
remove it from the realm of mere descriptiveness. It could be interpreted as spill proof or resistant, water proof or resistant, or washable with water or water-based cleaner. For these
reasons, the mark should be approved for publication.
SIGNATURE(S)
Response Signature
Signature: /sherry flax/ Date: 01/13/2020
Signatory's Name: Sherry Flax
Signatory's Position: Attorney of record, Maryland bar member
Signatory's Phone Number: 410-332-8784
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.
Serial Number: 88645881
Internet Transmission Date: Mon Jan 13 16:11:12 EST 2020
TEAS Stamp: USPTO/ROA-X.XX.XX.X-20200113161112167098
-88645881-700802492c0119c85b1f5da2663dca
5584f9e55da2e22c3cf17cb5d72a85fb23ac-N/A
-N/A-20200113155822785550