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. 88103362 DYNEX(Standard Characters, see http://uspto.report/TM/88103362/mark.png) has been amended as follows:

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

The Office Action refused registration of the applied-for mark (“Applicant’s Mark”) under Section 2(d) with respect to certain goods based on a likelihood of confusion with the marks in U.S. Registration Nos. 2536921 (DYNEX) and 2289432 (DYNEX SD) (the foregoing registrations are referred to as the “Cited Marks”).  The Cited Marks both identify the same goods, namely, “fiber used as a component of carpet,” in Class 27.  This refusal under Section 2(d) applies only to the follow goods identified by Applicant’s Mark:

“high strength polyethylene fibers sold as an integral component of outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, including parkas, shells and pants; high strength polyethylene fibers sold as an integral component of footwear; high strength polyethylene fibers sold as an integral component of mountaineering and climbing equipment, namely, slings, harnesses, cams, and other safety equipment; high strength polyethylene fibers sold as an integral component of backpacks and bags specially adapted for skiing, climbing and mountaineering; high strength polyethylene fibers sold as an integral component of tents, straps for trekking poles, and sleeping bags.”

Applicant respectfully submits that because there is no relevant connection between the goods identified by the Cited Marks and the goods identified by Applicant’s Mark, a likelihood of confusion is avoided.

The goods identified by the Cited Marks are “fiber used as a component of carpet.”  In practice, this means that the Cited Marks are placed on or used in connection with carpets, even if the mark is focused on a fiber component of the carpet.  Thus, the Cited Marks are presented to purchasers of Registrant’s carpets.  This is confirmed by (i) the specimen of use submitted by the Registrant to the USPTO on December 28, 2018 in support of Registrant’s Section 8 & 9 Declaration with respect to U.S. Registration No. 2289432 (attached as Exhibit 1) and (i) the specimen of use submitted by the Registrant to the USPTO on February 6, 2012 in support of Registrant’s Section 8 & 9 Declaration with respect to U.S. Registration No. 2536921 (attached as Exhibit 2).   Indeed, the fact that the Cited Marks identify carpets is confirmed by the classification of the Registrant’s goods in Class 27, which covers carpets.

By contrast, the refused goods in Applicant’s Mark are sold as an integral component of outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, and a wide range of equipment used for skiing, climbing, mountaineering, and camping.  Applicant currently uses its mark DYNEX on some of these refused goods, and going forward intends to use DYNEX on the other refused goods in the application, solely to identify a feature of Applicant’s clothing and equipment for skiing, climbing, mountaineering, camping and other outdoor sports.  Applicant does not intend to use Applicant’s Mark to identify high strength polyethylene fibers sold on a stand-alone basis.  To underscore this point, Applicant has amended its description of goods to clarify that Applicant’s mark identifies a component feature of the Applicant’s clothing and equipment for skiing, climbing, mountaineering, camping and other outdoor sports.  For this reason, Applicant has not classified its goods in Class 17.  Instead, Applicant respectfully submits that the goods should be classified in the class in which the end product with which the mark is used belong.   Thus, for example, because Applicant intends to use its mark DYNEX to identify a feature of its tents, and thus DYNEX will be used in connection with tents, the goods “component feature of tents, namely, high strength polyethylene fibers sold as an integral component of tents” is properly classified in Class 22.

Applicant’s argument is best established through Applicant’s current use of DYNEX.  For example, Applicant  currently uses DYNEX (i) to identify a component feature of backpacks, and (ii) to identify a component feature of climber webbing.  Evidence comprised of Applicant’s e-commerce pages, showing both of these current uses of DYNEX, is attached as Exhibit 3. These examples show that Applicant is using its mark DYNEX as part of a display associated with the underlying goods (i.e., backpacks and climber webbing), not in connection with sales of stand-alone fibers of any kind.

 With this understanding, it is clear that the carpets (specifically, the component of carpets) with which the Cited Marks are used on the one hand, and Applicant's clothing and equipment for skiing, climbing, mountaineering, camping and other outdoor sports (specifically, the component of these goods for skiing, climbing, mountaineering, camping and other outdoor sports) with which Applicant’s Mark is used on the other hand, have absolutely no connection.   They are not substitutes for each other, not complementary, not competitive, and not sold through the same channels of trade.  In other words, a purchaser of Registrant’s carpets is not likely to be confused into thinking that Applicant’s Mark as used with Applicant’s goods has a connection to Registrant’s carpets.  Thus, Applicant respectfully submits that a likelihood of confusion is avoided.

EVIDENCE
Evidence in the nature of Exhibits 1-3 to Arguments has been attached.
Original PDF file:
evi_44911274-20190619111845363216_._Exhibit_1_to_Response.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Original PDF file:
evi_44911274-20190619111845363216_._Exhibit_2_to_Response.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_44911274-20190619111845363216_._Exhibit_3_to_Response.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, including parkas, shells and pants; footwear; high strength polyethylene fibers sold as an integral component of outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, including parkas, shells and pants; high strength polyethylene fibers sold as an integral component of footwear
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, including parkas, shells and pants; Outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, in particular parkas, shells and pants; component feature of outdoor clothing, namely, high strength polyethylene fibers sold as an integral component of outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, in particular parkas, shells and pants; high strength polyethylene fibers sold as an integral component of outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, including parkas, shells and pants; footwear; high strength polyethylene fibers sold as an integral component of footwear; component feature of high strength polyethylene fibers sold as an integral component of footwearClass 025 for Outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, in particular parkas, shells and pants; component feature of outdoor clothing, namely, high strength polyethylene fibers sold as an integral component of outdoor clothing intended for skiing, climbing, mountaineering, and other outdoor sports, in particular parkas, shells and pants; footwear; component feature of high strength polyethylene fibers sold as an integral component of footwear
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Mountaineering and climbing equipment, namely, slings, harnesses, cams, and other safety equipment; backpacks and bags specially adapted for skiing, climbing and mountaineering; tents; sleeping bags; straps for trekking poles; high strength polyethylene fibers sold as an integral component of mountaineering and climbing equipment, namely, slings, harnesses, cams, and other safety equipment; high strength polyethylene fibers sold as an integral component of backpacks and bags specially adapted for skiing, climbing and mountaineering; high strength polyethylene fibers sold as an integral component of tents, straps for trekking poles, and sleeping bags
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Mountaineering and climbing equipment, namely, slings, harnesses, cams, and other safety equipment; Mountaineering and climbing equipment, namely, climber slings, climber harnesses, climber webbing, and cams in the nature of spring loaded camming devices; component feature of mountaineering and climbing equipment, namely, high strength polyethylene fibers sold as an integral component of mountaineering and climbing equipment, namely, climber slings, climber harnesses, climber webbing and cams in the nature of spring loaded camming devices; tents; backpacks and bags specially adapted for skiing, climbing and mountaineering; sleeping bags; component feature of backpacks and bags specially adapted for skiing, climbing and mountaineering, namely, high strength polyethylene fibers sold as an integral component of backpacks and bags specially adapted for skiing, climbing and mountaineering; straps for trekking poles; high strength polyethylene fibers sold as an integral component of mountaineering and climbing equipment, namely, slings, harnesses, cams, and other safety equipment; high strength polyethylene fibers sold as an integral component of backpacks and bags specially adapted for skiing, climbing and mountaineering; high strength polyethylene fibers sold as an integral component of tents, straps for trekking poles, and sleeping bagsClass 028 for Mountaineering and climbing equipment, namely, climber slings, climber harnesses, climber webbing, and cams in the nature of spring loaded camming devices; component feature of mountaineering and climbing equipment, namely, high strength polyethylene fibers sold as an integral component of mountaineering and climbing equipment, namely, climber slings, climber harnesses, climber webbing and cams in the nature of spring loaded camming devices; backpacks and bags specially adapted for skiing, climbing and mountaineering; component feature of backpacks and bags specially adapted for skiing, climbing and mountaineering, namely, high strength polyethylene fibers sold as an integral component of backpacks and bags specially adapted for skiing, climbing and mountaineering
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 006 for Mountaineering and climbing safety equipment, namely, crampons; component feature of mountaineering and climbing safety equipment, namely, crampons, in the nature of high strength polyethylene fibers sold as an integral component of crampons
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Mountaineering and climbing safety equipment, namely, climbing helmets; component feature of mountaineering and climbing safety equipment, namely, climbing helmets, in the nature of high strength polyethylene fibers sold as an integral component of climbing helmets
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 018 for Straps for trekking poles; component feature of straps for trekking poles, namely, high strength polyethylene fibers sold as an integral component of straps for trekking poles
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 022 for Tents; component feature of tents, namely, high strength polyethylene fibers sold as an integral component of tents; mountaineering and climbing safety equipment, namely, ropes; component feature of mountaineering and climbing safety equipment, namely, ropes, in the nature of high strength polyethylene fibers sold as an integral component of ropes
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 024 for Sleeping bags; component feature of sleeping bags, namely, high strength polyethylene fibers sold as an integral component of sleeping bags
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
DYNEX appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) DYNEX has no meaning in a foreign language.


FEE(S)
Fee(s) in the amount of $1375 is being submitted.

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: /Peter Kunin/      Date: 06/19/2019
Signatory's Name: Peter Kunin
Signatory's Position: Attorney of record, VT bar member
Signatory's Phone Number: 802-846-8342


Response Signature
Signature: /Peter Kunin/     Date: 06/19/2019
Signatory's Name: Peter Kunin
Signatory's Position: Attorney of Record, VT Bar Member

Signatory's Phone Number: 802-846-8342

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.

        
RAM Sale Number: 88103362
RAM Accounting Date: 06/19/2019
        
Serial Number: 88103362
Internet Transmission Date: Wed Jun 19 13:35:32 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.XX-201906191335323887
20-88103362-62022cba2d81f46a2d7a23603eb6
6b931ba69c29791f165f31e933b8586491a7-CC-
12220-20190619111845363216