Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79277769 ANTEX (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7927776 9/large) has been amended as follows:

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

The Examining Attorney has issued a likelihood of confusion refusal of applicant’s mark “antex” (and design) in connection with “Natural and synthetic dyes, namely, shoe dyes and textile dyes, textile printing inks, metals in foil and powder form for painters, binders for textile printing ink and paste, repositionable paint patches, printers' pastes [ink], unprocessed natural resins for use in the manufacture of adhesives, pigments for use in the preparation of inks,” in class 002.

The Examining Attorney has cited registration no. 3179063 for the mark ANTEX in connection with “Manufacture, finishing, dying and flame retarding fabrics to the order and/or specification of others,” in class 040.

The Examining Attorney argues that the marks are similar and that the applicant’s goods are related to registrant’s services based on the following evidence:

1. U.S. Trademark Registration no. 3277673 for “Printing inks, coatings, pigments and dispersions for use in the graphic arts industry,” in class 002, and “Custom manufacture of inks, pigments, and coatings,” in class 040.

2. U.S. Trademark Registration no. 3450734 for “Printing inks; news inks; flexographic inks; printing varnish; color printing pigments; colorants for use in the manufacture of printing inks and lacquers for printing purposes; printers' ink and ink jet printers ink; ink for use with digital printers and toner cartridges for use with digital printers; printing inks for use by commercial and industrial printers in the graphic arts industry,” in class 002 and “Printing; offset printing; custom manufacture of ink and ink related products; consultation services, namely, advice relating to the manufacture of ink and ink related products; consultation services relating to digital printing; providing information in the field of printing via the Internet,” in class 040.

3. The DUPONT website which shows that this company sells fibers and develops fibers, as well as sells digital inks.

4. The EPSON website shows that this company provides digital fabric printing solutions, as well as sells direct-to-garment printer ink.

5. The JACQUARD website shows that it sells dyes for fabrics and textiles for dyeing and painting, and through a sister company, sells steamers.

As a preliminary amendment, applicant amends its identification as follows: “textile printing inks and binders for textile printing ink in the nature of printers’ pastes; all for sale to clothing manufacturers.”

Applicant’s Goods and Registrant’s Services are not Related

The Examining Attorney’s evidence does not show that the goods and services are related because none of them reference the registrant’s services of “Manufacture, finishing, dying and flame retarding fabrics to the order and/or specification of others.”

Third-Party Registration no. 3277673 refers to the custom manufacture of “inks, pigments, and coatings,” not the custom manufacture of “fabrics.” The same is true for registration no. 3450734 which refers to the custom manufacture of “ink and ink related products.” These two registrations only show that a company that sells inks also custom manufactures inks. Indeed, the absence of any reference to the custom manufacture of “fabrics” in these registrations suggests that it is not common for companies that custom manufacture inks to also custom manufacture fabrics.

The Dupont website shows that this company sells inks, sells fibers, and develops fibers. However, there is no mention that it does so “to the order and/or specification of others.” Instead, this website proves only that Dupont sells inks and fabrics, and that it develops its own fabrics.

The Epson website shows that this company sells printer ink, as well as provides “digital fabric printing solutions.” This does not identify registrant’s services, which does not include “digital fabric printing” (i.e., manufacture, finishing, dying and flame retarding fabrics to the order and/or specification of others). That is, there is no mention in registrant’s identification that is digitally prints fabrics. Moreover, based on the Epson website, pages 26 and 27, Epson appears to print images on fabrics. The USPTO Identification Manual identifies such services as “digital printing.” Such services are absent from the recited registration, and there is no other mention that Epson provides registrant’s services.

Finally, the JACQUARD website shows that this company sells dyes for fabrics and textiles for dyeing and painting, and through a sister company, sells steamers. Firstly, that this company sells through a sister company does not mean that the goods and services originate from the same source. See TMEP section 1201.03(d) (The fact that two sister corporations are controlled by a single parent corporation does not mean that they are related companies. Where two corporations are wholly owned subsidiaries of a common parent, use by one sister corporation is not considered to inure to the benefit of the other, unless the applicant sister corporation exercises appropriate control over the nature and quality of the goods or services on or in connection with which the mark is used.). Secondly, there is again no mention of registrant’s services of “Manufacture, finishing, dying and flame retarding fabrics to the order and/or specification of others.”

On the contrary, a search of the USPTO TESS database shows there are 167 use-based registrations that identify registrant’s services. See attached. Of this amount, only 1 registration identifies applicant’s goods. In that registration, class 002 has been cancelled and its class 040 services do not mention the custom manufacture of “fabrics.” See attached. Applicant provides 10 examples of registrations that identify registrant’s services, but that make no mention of applicant’s goods. See attached. It should be noted that these registrations show that companies that provide registrant’s services tend to sell fabrics, in class 024, but not textile printing inks in class 002.

Thus, the absence of any registration identifying applicant’s goods and registrant’s services suggests that the goods and services are not related. See In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1063-1064 (Fed. Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (C.C.P.A. 1982)) (the very small number of such dual use registrations does nothing to counter Coors’ showing that only a very small percentage of restaurants actually brew their own beer or sell house brands of beer; instead, the small number of such registrations suggests that it is quite uncommon for restaurants and beer to share the same trademark).

Since there is no evidence to show a common channel of trade for applicant’s goods and registrant’s services, the goods and services are not related.

EVIDENCE
Evidence has been attached: TESS search results and third-party registrations
Original PDF file:
evi_11918019-202007200441 00126978_._Antex_evid1.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_11918019-202007200441 00126978_._Antex_evid2.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5
Original PDF file:
evi_11918019-202007200441 00126978_._Antex_evid3.pdf
Converted PDF file(s) ( 20 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 002 for Natural and synthetic dyes, namely, shoe dyes and textile dyes, textile printing inks, metals in foil and powder form for painters, binders for textile printing ink and paste, repositionable paint patches, printers' pastes [ink], unprocessed natural resins for use in the manufacture of adhesives, pigments for use in the preparation of inks
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Natural and synthetic dyes, namely, shoe dyes and textile dyes, textile printing inks, metals in foil and powder form for painters, binders for textile printing ink and paste, repositionable paint patches, printers' pastes [ink], unprocessed natural resins for use in the manufacture of adhesives, pigments for use in the preparation of inks; textile printing inks and binders for textile printing ink in the nature of printers' pastes; all for sale to clothing manufacturersClass 002 for textile printing inks and binders for textile printing ink in the nature of printers' pastes; all for sale to clothing manufacturers

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: ANADOLU KIMYA SAN VE TIC.LTD.STI. a(n) LIMITED COMPANY legally organized under the laws of Turkey
Proposed: ANADOLU KIMYA SAN VE TIC.LTD.STI., LIMITED COMPANY legally organized under the laws of Turkey
      Email Address: XXXX

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the wording "ANTEX" in stylized form, with one of the diagonal lines forming the letter "X" resembling a paintbrush stroke. All of the lettering is in black, except that the diagonal line in the "X" that resembles a paintbrush stroke is in red.

The owner's/holder's proposed attorney information: John Alumit. John Alumit of ALUMIT IP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      135 S. Jackson Street, Suite 200
      Glendale, California 91205
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
      The phone number is 8182444861.
      The email address is john@alumitip.com

John Alumit 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.Correspondence Information (current):
      HATICE KUTLUCAN
Correspondence Information (proposed):
      John Alumit
      PRIMARY EMAIL FOR CORRESPONDENCE: john@alumitip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /john alumit/     Date: 07/20/2020
Signatory's Name: John Alumit
Signatory's Position: Attorney of Record, California Bar member

Signatory's Phone Number: 8182444861

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:    HATICE KUTLUCAN
   
   Fahrettin Kerim Gökay Is Hani No 11/306
   Ankara Caddesi,
   Cagaloglu / Istanbul,
Mailing Address:    John Alumit
   ALUMIT IP
   135 S. Jackson Street, Suite 200
   Glendale, California 91205
        
Serial Number: 79277769
Internet Transmission Date: Mon Jul 20 04:45:04 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.X.XX-202007200445045188
50-79277769-7402bfbc370bbc29623e8a456913
4ca11ba0557658be945cd1d35264ae53194dd-N/
A-N/A-20200720044100126978