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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`87297154
`
`LAW OFFICE 120
`
`https://tmng-al.uspto.gov/resting2/api/img/87297154/large
`
`AQUAPRASE
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
` Applicant respectfully requests reconsideration of the Examining Attorney’s Final refusal to register Applicant’s mark SN 87297154
`AQUAPRASE for “Gems; Jewelry” in International Class 14 under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1) on the
`grounds that the applied-for mark merely describes a feature or characteristic of Applicant’s goods. Applicant contests the Examining
`Attorney’s Section 2(e)(1) refusal and presents further arguments herein in support of registration of its mark.
`
`History, Marketplace, Industry Use and Generic Advisory
`
`In 2015, thanks to a keen eye and dogged determination co-Applicant and veteran gem explorer Yianni Melas discovered a brand new
`           
`blue-green gem in Africa.    Over the years people had stumbled on this stone out in the bush and everyone seemed to have different thoughts
`on what it was -- some thought Opal, others thought Chrysoprase and some thought Chrysocolla.   No one had really seen any worth in it, but
`Melas took a pebble with him and was determined to find out where it came from and what it was.   Seeking to get a final, conclusive word on
`what he held, Melas sent a sample to the Gemological Institute of America (GIA).  Eventually, he received a phone call that said he had found
`“something incredible.”   It was not a chrysoprase or a chrysocolla. It was a chalcedony that has never been discovered before.  Applicant
`submitted into evidence as Exhibit A of its response filed October 12, 2017 the GIA Identification Reports dated May 17, 2017, June 1, 2017,
`and June 5, 2017, that identify the “species” or type of mineral discovered by Applicant as “chalcedony”.
`
`Understanding the uniqueness of the find, Applicant funded and was one of the directors of the mine that was established to extract
`           
`this raw chalcedony stone (see Exhibit A), and distribution and marketing of the stones was tightly controlled by Applicant – the exact
`location of the mine still remains a closely held secret.  Moreover, and more importantly, as part of the efforts to market the find and ensure
`that consumers could be confident that the blue-green chalcedony they were purchasing was guaranteed to be natural and untreated, as has
`been advised in Applicant’s earlier Response, after discovery of the stone Applicant coined the mark AQUAPRASE, because it was
`suggestive of the variety of blue colors found in the stone while giving a nod to the waters of the Aegean Sea and its lush green vegetation
`surrounding Greece, Melas’ homeland.   Applicant also secured trademark registrations for the AQUAPRASE mark in the EU and India (see
`Exhibits B and C) which is further confirmed in a letter from the gem testing laboratory GJEPC India (see Exhibit D).  Moreover, all
`gemological labs belong to a lab group that streamlines all the names and laws for the good of the industry.   Because of the existing trademarks
`
`in Europe and India, no lab anywhere in the world would be allowed to use the term AQUAPRASE without permission from Applicant.            
`
`Because of Applicant’s control of the mine and the rough stones that come out of it, any “ AQUAPRASE” that is currently in the
`
`

`

`marketplace necessarily comes from Applicant – otherwise it is merely generic blue-green chalcedony not originating from Applicant and is
`infringing on Applicant’s rights by suggesting a false designation of source of the stones.   The Examiner notes that there are two major
`reasons for not protecting descriptive marks: (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace
`and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  Applicant contends that given its
`explanations about the source of its goods, reasoning for coming up with a brand name for its particular version of the goods, and its existing
`registrations of the mark in the EU and India, this is a clear evidence that the mark is exclusive to Applicant and should be allowed to be
`protected as a trademark in the United States, as well.  Applicant is not seeking to prevent others from marketing an “aqua chalcedony” as
`many of the Exhibits the Examiner has attached refer to, or “blue-green chalcedony,” but its particular version of a blue-green chalcedony
`mined, distributed, and marketed by Applicant as AQUAPRASE.  This is the literal definition of a “source”.
`
`Furthermore, the International Colored Gemstone Association, the not-for profit trade association representing the international natural
`colored gemstone industry, explains in a letter submitted herewith as Exhibit E that “the gem trade calls gem materials by their mineralogical
`and gemological scientific names…. Individuals who market this material may call it what they believe will help sell the gem.  Hence the term
`“Aquaprase” by Yianni Melas is one such name.”
`
`Applicant is also submitting herewith as Exhibit F an email received from Mr. Nathan Renfrow of GIA confirming that the material
`known as “aquaprase” in the gem trade should be gemologically classified as “blue-green chalcedony”.
`  Established in 1931, GIA is the
`world’s foremost authority on diamonds, colored stones, and pearls. A public benefit, nonprofit institute, GIA is the leading source of
`knowledge, standards, and education in gems and jewelry. GIA's mission is to ensure the public trust in gems and jewelry by upholding the
`highest standards of integrity, academics, science, and professionalism through education, research, laboratory services, and instrument
`development. (See Exhibit G)
`
`Applicant also points out that in order for a gemstone to be given a standard name or birthstone month it has to be first legalized by the
`World Jewellry Confederation (CIBJO), and that the name “aquaprase” is not listed in the CIBJO Blue Books (see Exhibit H).  
`
`Applicant is also providing information from the Jewelers Vigilance Committee (JVC) Central Bank of Descriptive and Generic
`Terms.  As is explained at the top of the webpage, this list was created at the request of the USPTO to help educate trademark Examiners on
`what terms are considered descriptive and generic and should not be approved for trademark protection for gems and jewelry without a
`disclaimer.  The term AQUAPRASE does not reside on this list (see Exhibit I).   The list does, however, contain “chrysoprase”, which refutes
`the Examiner’s argument that “[a]s with chrysoprase, “aquaprase” is likely to be perceived by consumers of gemstones and jewelry
`containing gemstones as another common name for chalcedony that merely indicates the blueish green color range of the underlying stone”
`(see Exhibit J).   The JVC list also contains the term “chalcedony” (see Exhibit J). 
`
`Based on all the information, arguments and evidence submitted herein and contrary to the Examiner’s assertions, it is clear that
`AQUPRASE is not a common term for gemstones and competitors do not need to use this term to describe a type of chalcedony gemstone
`and jewelry using such gems.  Because of the existing international trademark registrations they already cannot do so without permission from
`Applicant.  Additionally, those who represent the jewelry industry in general have been clear that AQUAPRASE is a mark that designates
`Applicant’s goods and cannot be “generic,” because the generic name for the gemstone is “blue-green chalcedony.”  
`
`The Examining Attorney bears the burden of showing that a term is merely descriptive of the relevant goods, and Applicant
`respectfully argues that in this case this burden has clearly not been met.  Accordingly, Applicant requests that the Section 2(d) refusal and
`generic advisory in relation to the mark being a common term for the underlying gemstones be withdrawn. 
`
`Combined Terms are Not Merely Descriptive
`
`Applicant also maintains that its mark AQUAPRASE is not merely the combination of two descriptive terms commonly used to
`describe and/or identify the gemstone chalcedony, and jewelry using such stones.   As Applicant notes above, argued in its earlier response, and
`as well as is evidenced in the Examiner’s Attachment 1 to the current action, the word “aqua” has multiple meanings, i.e. water, an aqueous
`solution, a light bluish green to a light greenish blue. The definition provided of “prase” (OA at page 16/162) states it is a light green or light
`grayish-green variety of translucent chalcedony, but the Examiner’s evidence from mindat.org   (OA at page 41/162) states in relation to the
`
`

`

`term “prase” that “Originally, the varietal name “prase” was applied to a dull leek-green colored quartzite (a rock, not a mineral); but over
`the years it has been applied to other materials, particularly a green colored jasper of a similar color…. Basically, the term no longer has any
`scientific rigor – it has become a general term; it can’t even truly be called a varietal name any longer – since it covers more than one
`material”.   Applicant also notes that the term ‘prase” is not listed as a descriptive or generic term in the JVC directory (see Exhibit K).
`
`It is a general and well-established principle that “a mark comprising a combination of merely descriptive components is registrable if
`the combination of terms creates a unitary mark with a unique, nondescriptive meaning….” T.M.E.P. §1209.03(d)(October 2015 ed.). The
`Ninth Circuit, in California Cooler, Inc. v. Loretto Winery, Ltd., 227 U.S.P.Q. 808, 774 F.2d 1451 (9th Cir. 1985), recognized that “words
`which could not individually become a trademark may become one when taken together…. It is the likely reaction of customers to the total
`mark that is at issue….Thus, the composite may become a distinguishable mark even though its individual components individually cannot.”
`Id. at 1455.
`
`Ultimately, the dissection of a mark, or portion of a mark, into its component parts, as the Examining Attorney does with the terms
`“AQUA” and “PRASE”, stands against the clear weight of case law and the Trademark Office’s own rules of examination. See Coca-Cola
`Co. v. Seven-Up Co., 497 F.2d 1351 (C.C.P.A.1974)(“We have said, so often as not to require citation of authority, that marks must be viewed
`as the public sees them, i.e., in their entireties.”) It is therefore well-settled that the validity of a mark is not judged by an examination of its
`individual parts, but rather by ultimately viewing the trademark as a whole. See California Cooler, Inc., 774 F. 2d at 1455.   In the present case,
`the Examining Attorney has improperly dissected Applicant’s mark AQUAPRASE into its component parts and ignores the fact that the
`terms individually have multiple meanings, and thus connotations.  The parts, when taken as a whole as they must be, does create a unique,
`unitary phrase that is suggestive, not merely descriptive.  There is no such thing as “aquaprase,” other than Applicant’s coined, unitary and
`suggestive mark for gemstones and jewelry which has no specific meaning other than to hint to Applicant’s consumers that its goods may in
`someway relate to water (are the stones found there?  Do they contain water?) or does “aqua” relate instead to the coloring? And does
`“prase” refer to a type of stone, and if so, which one?   Or does this also or instead relate to the coloring? Or is it a phonetic equivalent of the
`word “praise”?   All of these are viable and possible options for interpretation of the meaning of the term as it relates to gemstones and
`jewelry.  As esteemed trademark commentator J. Thomas McCarthy states, “[I]f the mental leap between the word and the product’s
`attributes is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness.”   McCarthy on Trademarks and Unfair
`Competition, Vol. 2, § 11:67, p. 11-12.  In this case, it takes imagination and thought on the part of the consumer to determine the meaning of
`Applicant’s mark as a whole in relation to the goods.   Because it conveys no immediate, singular explanation of the goods, as a mark
`AQUAPRASE is suggestive, not merely descriptive, and is entitled to registration on the Principal Register.  
`
`The Trademark Trial and Appeal Board has noted on a number of prior occasions that there is a thin line of demarcation between a
`suggestive and a merely descriptive designation. To the extent that any of the Examining Attorney’s arguments and evidence raise doubts
`about the merely descriptive character of Applicant’s mark, such doubts are to be resolved in Applicant’s favor and the mark should be
`published, thus allowing a third party to file an opposition and develop a more comprehensive record. See e.g., In re Atavio, 25 USPQ2d 1361
`(TTAB 1992); In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981); and In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB
`1972).
`
`In view of the arguments and evidence presented herein and incorporated by reference from previous responses, the subject mark
`cannot realistically be considered “merely” descriptive and Applicant respectfully requests that the Section 2(e) refusal be withdrawn and its
`mark be approved for prompt passage to publication.
`
`In the Alternative, Supplemental Registration Requested
`
`Although Applicant believes its mark is entitled to registration on the Principal Register, strongly stands by its arguments above and in
`           
`its prior response in favor of registration on the Principal Register, and respectfully requests the same, in the alternative, Applicant requests
`registration on the Supplemental Register.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       JPG FILE(S)
`
`\\TICRS\EXPORT17\IMAGEOUT 17\872\971\87297154\xml9\ RFR0002.JPG
`
`

`

`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0009.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0010.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0011.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0012.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0013.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0014.JPG
`
`evi_6911820860-20180503221537591172_._Exhibit_B.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0003.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0004.JPG
`
`evi_6911820860-20180503221537591172_._Exhibit_C.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0005.JPG
`
`evi_6911820860-20180503221537591172_._Exhibit_D.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0006.JPG
`
`evi_6911820860-20180503221537591172_._Exhibit_E.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0007.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\971\87297154\xml9\RFR0008.JPG
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (2 pages)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (1 page)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (1 page)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (2 pages)
`
`DESCRIPTION OF EVIDENCE FILE
`
`information referenced within the body of Applicant's argument
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`/RLD/
`
`Renée L. Duff
`
`Attorney of record, NY bar member
`
`914-262-9223
`
`05/03/2018
`
`YES
`
`YES
`
`Thu May 03 22:23:58 EDT 2018
`
`USPTO/RFR-XX.XXX.XXX.XX-2
`0180503222358655235-87297
`154-510df140c537dea329af3
`723157fe6955a9ed90a4fa3aa
`688e93a4dadfa3047-N/A-N/A
`-20180503221537591172
`
`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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 87297154 AQUAPRASE(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/87297154/large) has been
`amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
` Applicant respectfully requests reconsideration of the Examining Attorney’s Final refusal to register Applicant’s mark
`SN 87297154 AQUAPRASE for “Gems; Jewelry” in International Class 14 under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1)
`on the grounds that the applied-for mark merely describes a feature or characteristic of Applicant’s goods. Applicant contests the Examining
`Attorney’s Section 2(e)(1) refusal and presents further arguments herein in support of registration of its mark.
`
`History, Marketplace, Industry Use and Generic Advisory
`
`In 2015, thanks to a keen eye and dogged determination co-Applicant and veteran gem explorer Yianni Melas discovered a brand
`           
`new blue-green gem in Africa.    Over the years people had stumbled on this stone out in the bush and everyone seemed to have different
`thoughts on what it was -- some thought Opal, others thought Chrysoprase and some thought Chrysocolla.   No one had really seen any
`worth in it, but Melas took a pebble with him and was determined to find out where it came from and what it was.   Seeking to get a final,
`conclusive word on what he held, Melas sent a sample to the Gemological Institute of America (GIA).  Eventually, he received a phone call that
`said he had found “something incredible.”   It was not a chrysoprase or a chrysocolla. It was a chalcedony that has never been discovered before. 
`Applicant submitted into evidence as Exhibit A of its response filed October 12, 2017 the GIA Identification Reports dated May 17, 2017, June
`1, 2017, and June 5, 2017, that identify the “species” or type of mineral discovered by Applicant as “chalcedony”.
`
`Understanding the uniqueness of the find, Applicant funded and was one of the directors of the mine that was established to extract this
`           
`raw chalcedony stone (see Exhibit A), and distribution and marketing of the stones was tightly controlled by Applicant – the exact location of
`the mine still remains a closely held secret.  Moreover, and more importantly, as part of the efforts to market the find and ensure
`that consumers could be confident that the blue-green chalcedony they were purchasing was guaranteed to be natural and
`untreated, as has been advised in Applicant’s earlier Response, after discovery of the stone Applicant coined the mark AQUAPRASE, because
`it was suggestive of the variety of blue colors found in the stone while giving a nod to the waters of the Aegean Sea and its lush green vegetation
`surrounding Greece, Melas’ homeland.   Applicant also secured trademark registrations for the AQUAPRASE mark in the EU and India (see
`Exhibits B and C) which is further confirmed in a letter from the gem testing laboratory GJEPC India (see Exhibit D).  Moreover, all
`gemological labs belong to a lab group that streamlines all the names and laws for the good of the industry.   Because of the
`existing trademarks in Europe and India, no lab anywhere in the world would be allowed to use the term AQUAPRASE without permission
`
`from Applicant.            
`
`Because of Applicant’s control of the mine and the rough stones that come out of it, any “ AQUAPRASE” that is currently in the
`marketplace necessarily comes from Applicant – otherwise it is merely generic blue-green chalcedony not originating from Applicant and is
`infringing on Applicant’s rights by suggesting a false designation of source of the stones.   The Examiner notes that there are two major reasons
`for not protecting descriptive marks: (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to
`avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  Applicant contends that given its
`explanations about the source of its goods, reasoning for coming up with a brand name for its particular version of the goods, and its existing
`registrations of the mark in the EU and India, this is a clear evidence that the mark is exclusive to Applicant and should be allowed to
`be protected as a trademark in the United States, as well.  Applicant is not seeking to prevent others from marketing an “aqua
`chalcedony” as many of the Exhibits the Examiner has attached refer to, or “blue-green chalcedony,” but its particular version
`of a blue-green chalcedony mined, distributed, and marketed by Applicant as AQUAPRASE.  This is the literal definition of a “source”.
`
`Furthermore, the International Colored Gemstone Association, the not-for profit trade association representing the international natural
`colored gemstone industry, explains in a letter submitted herewith as Exhibit E that “the gem trade calls gem materials by their mineralogical
`
`

`

`and gemological scientific names…. Individuals who market this material may call it what they believe will help sell the gem.  Hence the term
`“Aquaprase” by Yianni Melas is one such name.”
`
`Applicant is also submitting herewith as Exhibit F an email received from Mr. Nathan Renfrow of GIA confirming that the material
`known as “aquaprase” in the gem trade should be gemologically classified as “blue-green chalcedony”.
`  Established in 1931, GIA is the
`world’s foremost authority on diamonds, colored stones, and pearls. A public benefit, nonprofit institute, GIA is the leading source of
`knowledge, standards, and education in gems and jewelry. GIA's mission is to ensure the public trust in gems and jewelry by upholding the
`highest standards of integrity, academics, science, and professionalism through education, research, laboratory services, and instrument
`development. (See Exhibit G)
`
`Applicant also points out that in order for a gemstone to be given a standard name or birthstone month it has to be first legalized by the
`World Jewellry Confederation (CIBJO), and that the name “aquaprase” is not listed in the CIBJO Blue Books (see Exhibit H).  
`
`Applicant is also providing information from the Jewelers Vigilance Committee (JVC) Central Bank of Descriptive and Generic Terms. 
`As is explained at the top of the webpage, this list was created at the request of the USPTO to help educate trademark Examiners on what terms
`are considered descriptive and generic and should not be approved for trademark protection for gems and jewelry without a disclaimer.  The term
`AQUAPRASE does not reside on this list (see Exhibit I).   The list does, however, contain “chrysoprase”, which refutes the Examiner’s
`argument that “[a]s with chrysoprase, “aquaprase” is likely to be perceived by consumers of gemstones and jewelry containing gemstones as
`another common name for chalcedony that merely indicates the blueish green color range of the underlying stone” (see Exhibit J).   The JVC list
`also contains the term “chalcedony” (see Exhibit J). 
`
`Based on all the information, arguments and evidence submitted herein and contrary to the Examiner’s assertions, it is
`clear that AQUPRASE is not a common term for gemstones and competitors do not need to use this term to describe a type of chalcedony
`gemstone and jewelry using such gems.  Because of the existing international trademark registrations they already cannot do so without
`permission from Applicant.  Additionally, those who represent the jewelry industry in general have been clear that AQUAPRASE is a mark that
`designates Applicant’s goods and cannot be “generic,” because the generic name for the gemstone is “blue-green chalcedony.”  
`
`The Examining Attorney bears the burden of showing that a term is merely descriptive of the relevant goods, and Applicant respectfully
`argues that in this case this burden has clearly not been met.  Accordingly, Applicant requests that the Section 2(d) refusal and generic advisory
`in relation to the mark being a common term for the underlying gemstones be withdrawn. 
`
`Combined Terms are Not Merely Descriptive
`
`Applicant also maintains that its mark AQUAPRASE is not merely the combination of two descriptive terms commonly used to
`describe and/or identify the gemstone chalcedony, and jewelry using such stones.   As Applicant notes above, argued in its earlier response,
`and as well as is evidenced in the Examiner’s Attachment 1 to the current action, the word “aqua” has multiple meanings, i.e. water, an
`aqueous solution, a light bluish green to a light greenish blue. The definition provided of “prase” (OA at page 16/162) states it is a light
`green or light grayish-green variety of translucent chalcedony, but the Examiner’s evidence from mindat.org   (OA at page 41/162)
`states in relation to the term “prase” that “Originally, the varietal name “prase” was applied to a dull leek-green colored quartzite (a
`rock, not a mineral); but over the years it has been applied to other materials, particularly a green colored jasper of a similar color….
`Basically, the term no longer has any scientific rigor – it has become a general term; it can’t even truly be called a varietal name any
`longer – since it covers more than one material”.   Applicant also notes that the term ‘prase” is not listed as a descriptive or generic term in the
`JVC directory (see Exhibit K).
`
`It is a general and well-established principle that “a mark comprising a combination of merely descriptive components is registrable if the
`combination of terms creates a unitary mark with a unique, nondescriptive meaning….” T.M.E.P. §1209.03(d)(October 2015 ed.). The Ninth
`Circuit, in California Cooler, Inc. v. Loretto Winery, Ltd., 227 U.S.P.Q. 808, 774 F.2d 1451 (9th Cir. 1985), recognized that “words which could
`not individually become a trademark may become one when taken together…. It is the likely reaction of customers to the total mark that is at
`issue….Thus, the composite may become a distinguishable mark even though its individual components individually cannot.” Id. at 1455.
`
`

`

`Ultimately, the dissection of a mark, or portion of a mark, into its component parts, as the Examining Attorney does with the terms
`“AQUA” and “PRASE”, stands against the clear weight of case law and the Trademark Office’s own rules of examination. See Coca-Cola
`Co. v. Seven-Up Co., 497 F.2d 1351 (C.C.P.A.1974)(“We have said, so often as not to require citation of authority, that marks must be viewed
`as the public sees them, i.e., in their entireties.”) It is therefore well-settled that the validity of a mark is not judged by an examination of its
`individual parts, but rather by ultimately viewing the trademark as a whole. See California Cooler, Inc., 774 F. 2d at 1455.   In the
`present case, the Examining Attorney has improperly dissected Applicant’s mark AQUAPRASE into its component parts and ignores the fact
`that the terms individually have multiple meanings, and thus connotations.  The parts, when taken as a whole as they must be, does create a
`unique, unitary phrase that is suggestive, not merely descriptive.  There is no such thing as “aquaprase,” other than Applicant’s coined, unitary
`and suggestive mark for gemstones and jewelry which has no specific meaning other than to hint to Applicant’s consumers that its goods may in
`someway relate to water (are the stones found there?  Do they contain water?) or does “aqua” relate instead to the coloring? And does “prase”
`refer to a type of stone, and if so, which one?  Or does this also or instead relate to the coloring? Or is it a phonetic equivalent of the word
`“praise”?   All of these are viable and possible options for interpretation of the meaning of the term as it relates to gemstones and jewelry. 
`As esteemed trademark commentator J. Thomas McCarthy states, “[I]f the mental leap between the word and the product’s attributes
`is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness.”   McCarthy on Trademarks and Unfair
`Competition, Vol. 2, § 11:67, p. 11-12.  In this case, it takes imagination and thought on the part of the consumer to determine the
`meaning of Applicant’s mark as a whole in relation to the goods.   Because it conveys no immediate, singular explanation of the
`goods, as a mark AQUAPRASE is suggestive, not merely descriptive, and is entitled to registration on the Principal Register.  
`
`The Trademark Trial and Appeal Board has noted on a number of prior occasions that there is a thin line of demarcation between a
`suggestive and a merely descriptive designation. To the extent that any of the Examining Attorney’s arguments and evidence raise doubts about
`the merely descriptive character of Applicant’s mark, such doubts are to be resolved in Applicant’s favor and the mark should be published,
`thus allowing a third party to file an opposition and develop a more comprehensive record. See e.g., In re Atavio, 25 USPQ2d 1361 (TTAB
`1992); In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981); and In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
`
`In view of the arguments and evidence presented herein and incorporated by reference from previous responses, the subject mark cannot
`realistically be considered “merely” descriptive and Applicant respectfully requests that the Section 2(e) refusal be withdrawn and its mark be
`approved for prompt passage to publication.
`
`In the Alternative, Supplemental Registration Requested
`
`Although Applicant believes its mark is entitled to registration on the Principal Register, strongly stands by its arguments above and in its
`           
`prior response in favor of registration on the Principal Register, and respectfully requests the same, in the alternative, Applicant requests
`registration on the Supplemental Register.
`
`EVIDENCE
`Evidence in the nature of information referenced within the body of Applicant's argument has been attached.
`JPG file(s):
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Original PDF file:
`evi_6911820860-20180503221537591172_._Exhibit_B.pdf
`Converted PDF file(s) ( 2 pages)
`Evidence-1
`Evidence-2
`Original PDF file:
`evi_6911820860-20180503221537591172_._Exhibit_C.pdf
`
`

`

`Converted PDF file(s) ( 1 page)
`Evidence-1
`Original PDF file:
`evi_6911820860-20180503221537591172_._Exhibit_D.pdf
`Converted PDF file(s) ( 1 page)
`Evidence-1
`Original PDF file:
`evi_6911820860-20180503221537591172_._Exhibit_E.pdf
`Converted PDF file(s) ( 2 pages)
`Evidence-1
`Evidence-2
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /RLD/     Date: 05/03/2018
`Signatory's Name: Renée L. Duff
`Signatory's Position: Attorney of record, NY bar member
`
`Signatory's Phone Number: 914-262-9223
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is
`concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
`representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's
`appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 87297154
`Internet Transmission Date: Thu May 03 22:23:58 EDT 2018
`TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XX-2018050322235865
`5235-87297154-510df140c537dea329af372315
`7fe6955a9ed90a4fa3aa688e93a4dadfa3047-N/
`A-N/A-20180503221537591172
`
`        
`

`

`

`

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`* Q ‘ EU IPO
`t
`iNTELLECTUAL PROPERTY OFFICE
`* *
`* *
`EUROPEAN UNION
`
`EUROPEAN UNION INTELLECTUAL PROPERTY
`OFFICE
`CERTIFICATE OF REGISTRATION
`
`This Certificate of Registration is hereby