| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79239883 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/79239883/mark.png |
| LITERAL ELEMENT | AMAZE |
| 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. |
| OWNER SECTION (current) | |
| NAME | Akzo Nobel Chemicals International B.V. |
| INTERNAL ADDRESS | Velperweg 76 |
| STREET | NL-6824 BM Arnhem |
| COUNTRY | Netherlands |
| OWNER SECTION (proposed) | |
| NAME | Akzo Nobel Chemicals International B.V. |
| STREET | Velperweg 76 |
| CITY | Arnhem |
| ZIP/POSTAL CODE | NL-6824 BM |
| COUNTRY | Netherlands |
| LEGAL ENTITY SECTION (current) | |
| TYPE | APPLICANT ENTERED NO DATA |
| LEGAL ENTITY SECTION (proposed) | |
| TYPE | besloten vennootschap (b.v.) |
| STATE/COUNTRY WHERE LEGALLY ORGANIZED | Netherlands |
| ARGUMENT(S) | |
|
Response to refusal under 2(d) Likelihood of confusion
The present application for the mark AMAZE is filed in the name of Akzo Nobel Chemicals International B.V. The Office has cited Reg. No. 2736146 for the mark AMAZE in the name of Akzo Nobel Surface Chemistry LLC.
Applicant hereby states that the entities Akzo Nobel Chemicals International B.V. and Akzo Nobel Surface Chemistry LLC are related companies as defined in 15 U.S.C. §1127, in that Akzo Nobel Chemicals International B.V. controls the use of the mark and the quality of the goods with which the mark is used by Akzo Nobel Surface Chemistry LLC, such that use of the mark AMAZE by Akzo Nobel Surface Chemistry LLC as set forth in Reg. No. 2736146 inures to the benefit of the present applicant, Akzo Nobel Chemicals International B.V., under 15 U.S.C. §1055.
Further in support of this application, applicant submits herewith a Consent Agreement signed by Registrant Akzo Nobel Surface Chemistry LLC and Akzo Nobel Chemicals International B.V., in which the parties agree that Applicant and Registrant have been part of the same group of entities in the chemicals industry operating under the name Akzo Nobel, and generally known to the public by that brand. In October 2018, this group of entities was sold as a unit and now operates under the brand “Nouryon.” Applicant and Registrant have both sold chemical products under the Akzo Nobel brand, and now sell these same products under the Nouryon brand. Under this entity structure which was in place under the Akzo Nobel brand and which continues as of this time under the Nouryon brand, Applicant Akzo Nobel Chemicals International B.V. controls the trademark activities of Registrant Akzo Nobel Surface Chemistry LLC, including the selection, adoption and use of trademarks. In particular, control of the use of the AMAZE mark with respect to starches and other polymers used in the personal care industry, including hairstyling aids, has resided and still resides in a single source, namely, Akzo Nobel Chemicals International B.V. It is the common desire and intent of both Applicant and Registrant that the market should recognize the chemicals products of both entities, including starches and other polymers sold for use in personal care products under the AMAZE trademark, as emanating from a single source, namely, the group of entities in the chemicals industry operating under the Nouryon brand.
It is respectfully submitted that under the facts herein the ground of rejection under Section 2(d) has been overcome.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1652256060-20190531101944649077_._Consent_Agreement.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\792\398\79239883\xml7\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\792\398\79239883\xml7\ROA0003.JPG | |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 001 |
| DESCRIPTION | Polymers for use in the personal care industry |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 001 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Polymers for use in the personal care industry, namely, polymer compositions used in the manufacture of commercial, industrial, and domestic goods | |
| NEW ATTORNEY SECTION | |
| NAME | Matthew D. Kellam |
| FIRM NAME | Nouryon Chemicals LLC |
| INDIVIDUAL ATTORNEY DOCKET/REFERENCE NUMBER |
26330-US-W2 |
| OTHER APPOINTED ATTORNEY | Matthew J. DeRuyter |
| STREET | 525 W. Van Buren |
| CITY | Chicago |
| STATE | Illinois |
| ZIP/POSTAL CODE | 60607 |
| COUNTRY | United States |
| PHONE | 312-544-7000 |
| sc-ipani@nouryon.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| NEW CORRESPONDENCE SECTION | |
| NAME | Matthew D. Kellam |
| FIRM NAME | Nouryon Chemicals LLC |
| DOCKET/REFERENCE NUMBER | 26330-US-W2 |
| STREET | 525 W. Van Buren |
| CITY | Chicago |
| STATE | Illinois |
| ZIP/POSTAL CODE | 60607 |
| COUNTRY | United States |
| PHONE | 312-544-7000 |
| sc-ipani@nouryon.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Sandra B. Weiss/ |
| SIGNATORY'S NAME | Sandra B. Weiss |
| SIGNATORY'S POSITION | Attorney, Illinois State Bar |
| SIGNATORY'S PHONE NUMBER | 312-544-7324 |
| DATE SIGNED | 05/31/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri May 31 12:07:29 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XX-2 0190531120729513768-79239 883-620da70f12c1e4abf61c6 4388cc4b88afba1e33751e1c6 6b256bd2e7e4aefc3aca6-N/A -N/A-20190531101944649077 |
| 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 refusal under 2(d) Likelihood of confusion
The present application for the mark AMAZE is filed in the name of Akzo Nobel Chemicals International B.V.
The Office has cited Reg. No. 2736146 for the mark AMAZE in the name of Akzo Nobel Surface Chemistry LLC.
Applicant hereby states that the entities Akzo Nobel Chemicals International B.V. and Akzo Nobel Surface Chemistry LLC are related companies as defined in 15 U.S.C. §1127, in that Akzo Nobel Chemicals International B.V. controls the use of the mark and the quality of the goods with which the mark is used by Akzo Nobel Surface Chemistry LLC, such that use of the mark AMAZE by Akzo Nobel Surface Chemistry LLC as set forth in Reg. No. 2736146 inures to the benefit of the present applicant, Akzo Nobel Chemicals International B.V., under 15 U.S.C. §1055.
Further in support of this application, applicant submits herewith a Consent Agreement signed by Registrant Akzo Nobel Surface Chemistry LLC and Akzo Nobel Chemicals International B.V., in which the parties agree that Applicant and Registrant have been part of the same group of entities in the chemicals industry operating under the name Akzo Nobel, and generally known to the public by that brand. In October 2018, this group of entities was sold as a unit and now operates under the brand “Nouryon.” Applicant and Registrant have both sold chemical products under the Akzo Nobel brand, and now sell these same products under the Nouryon brand. Under this entity structure which was in place under the Akzo Nobel brand and which continues as of this time under the Nouryon brand, Applicant Akzo Nobel Chemicals International B.V. controls the trademark activities of Registrant Akzo Nobel Surface Chemistry LLC, including the selection, adoption and use of trademarks. In particular, control of the use of the AMAZE mark with respect to starches and other polymers used in the personal care industry, including hairstyling aids, has resided and still resides in a single source, namely, Akzo Nobel Chemicals International B.V. It is the common desire and intent of both Applicant and Registrant that the market should recognize the chemicals products of both entities, including starches and other polymers sold for use in personal care products under the AMAZE trademark, as emanating from a single source, namely, the group of entities in the chemicals industry operating under the Nouryon brand.
It is respectfully submitted that under the facts herein the ground of rejection under Section 2(d) has been overcome.
