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. 79276880 FENIX (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7927688 0/large) has been amended as follows:

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

This document is filed in response to the Examiner’s non-final Office Action issued March 24, 2020.

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I. REQUEST FOR WITHDRAWL OF 2(d) REFUSALS

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The Examining Attorney has refused registration of the FENIX and Design mark in both Classes 36 and 42 on the ground that the mark is likely to be confused with the mark shown in the following U.S. trademark registrations:

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• Nassau Life Insurance Company’s Reg. No 2399281 for PHOENIX for “administration of life insurance and annuities” in Class 36. Filed March 12, 1999, Registered October 31, 2000, Renewed October 31, 2020.

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• The University of Phoenix, Inc.’s Reg. No. 4650293 for PHOENIX for “financial services, namely, providing educational scholarships at the post-secondary level” in Class 36. Filed October 23, 2013, Registered December 2, 2014. Section 8 due Dec. 02, 2020.

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• Julian Gabriel Galvez Pourtale’s Reg. No. 5632615 for FENIX for “securities brokerage services and financial portfolio management” in Class 36. Filed May 4, 2018, Registered December 18, 2018.

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• Fenics Software, Inc.’s Reg. No. 6069629 in Classes 9, 36, 38 and 42. Filed July 30, 2015, Registered June 2, 2020 for the following long list of goods/services (no 2(d) refusals issued):

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(Class: 09) Computer financial software for processing of securities transactions, managing financial data, and creating financial reports; computer software for use in connection with capital investment services, securities brokerage services, namely, transacting and trading of financial instruments; computer software for financial trade execution, confirmation, clearing and settlement transactions; computer software for accessing an electronic marketplace for trading of financial instruments; computer software for accessing financial information, namely, information in the fields of futures, commodities, securities, currencies, financial instruments, brokerage, trading, investments and financial markets; computer software for electronically trading securities; customizable application programming interfaces, namely, software development tools for the creation of client interfaces; computer software that enables trading in financial instruments, provides trade execution, settlement and confirmation capabilities, and provides access to financial information and financial market information, real time and otherwise; computer software used to calculate the theoretical fair price of options on foreign exchange contracts and other financial instruments (Class: 36) Financial analysis, management and consulting; capital investments services; securities brokerage services; financial services, namely, transacting and trading of financial instruments; providing an electronic marketplace for trading of financial instruments; providing financial information; providing financial information, namely, information in the fields of futures, commodities, securities, currencies, financial instruments, brokerage, trading, investments and financial markets; financial, securities and commodities exchange services; financial trade execution, confirmation, clearing and settlement services; telecommunications brokerage services, namely, brokerage of telecommunications bandwidth; Investment brokerage; financial analysis and research services; providing information and links to other websites in the field of finance (Class: 38) Communication of financial information through an online global computer network; consultancy and provision of information relating to communication of financial information through an online global computer network; leasing of telecommunications equipment (Class: 42) Maintenance of computer software; computer software consulting; updating of computer software for others; customization of computer software; providing on-line non-downloadable software for accessing financial information and trading of financial instruments; customized software development services; application service provider featuring customizable application programming interfaces for use in building software applications; computer consulting services in connection with software for facilitating interactive communication and information sharing over a global computer network and other networks in the field of finance

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Whether a likelihood of confusion exists involves a two-part analysis. The marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The goods or services are also compared to determine whether they are similar or related or whether confusion as to origin is likely based on the activities surrounding their marketing, including considering the channels of trade and the conditions under which the respective marks are encountered in the marketplace. See Du Pont, 177 USPQ 563, 567 (C.C.P.A. 1973); In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

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The fundamental inquiry goes to the cumulative effect of the differences in the marks and the goods or services at issue. Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (C.C.P.A. 1976). It is quite possible for no likelihood of confusion to exist even between marks which may appear identical in the abstract, where the respective goods or services to which the marks are applied are such that the prospective customers are not likely to assume that those goods or services share a common source.

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For the reasons set forth below, Applicant respectfully requests withdrawal of the 2(d) refusals.

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1. THE MARKS ARE NOT IDENTICAL AND THE GOODS/SERVICES TARGET DIFFERENT MARKETS

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• Nassau Life Insurance Company’s Reg. No 2399281 for PHOENIX for “administration of life insurance and annuities” in Class 36.

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Regarding the first refusal, the registrant provides life insurance under the name PHOENIX, as evidenced by the registrant’s February 2020 specimen of use. Not only are the marks different in appearance and commercial impression – PHOENIX vs. FENIX (where PHOENIX already peacefully coexists in Class 36 with another PHOENIX, as well as FENICS and FENIX) – but the registrant and applicant are in quite different fields. HCL is an information technology services and consulting company, whose FENIX framework helps enterprises articulate digital transformation objectives. For the sake of clarity, and in an effort to overcome this citation, Applicant has specifically excluded “administration of life insurance and annuities” from its Class 36 ID with this response.

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• The University of Phoenix, Inc.’s Reg. No. 4650293 for PHOENIX for “financial services, namely, providing educational scholarships at the post-secondary level” in Class 36.

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The University of Phoenix offers college courses and their registration covers scholarships in connection with such educational services. Not only are the marks different – again, PHOENIX vs. FENIX (where PHOENIX already peacefully coexists in Class 36 with another PHOENIX, as well as FENICS and FENIX) – but the services are quite different. Applicant is not a university and the subject application does not encompass the provision of educational scholarships.

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To the extent the Examiner is not persuaded to withdraw the refusal as to The University of Phoenix’s registration, then Applicant respectfully requests suspension of the subject application, pending whether Reg. No. 4650293 is maintained, as a Section 8 is coming due Dec. 02, 2020.

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• Julian Gabriel Galvez Pourtale’s Reg. No. 5632615 for FENIX for “securities brokerage services and financial portfolio management” in Class 36.

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Regarding Mr. Pourtale’s registration for FENIX, this entity is a broker-dealer that provides “clients with comprehensive, end-to-end trading solutions across major asset classes and global markets including direct access to all US equity and option markets.” See Exhibit 1 (screenshot from http://www.fenixsecurities.com/index.html#aboutUs). Applicant is not a broker-dealer for securities and the subject application does not encompass the provision of such services. It is clear that the registrant and applicant are in different fields. For the sake of clarity, and in an effort to overcome this citation, Applicant has specifically excluded “securities brokerage services and financial portfolio management” from its Class 36 ID with this response.

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• Fenics Software, Inc.’s Reg. No. 6069629 for FENICS in Classes 9, 36, 38 and 42, App. No. 88387917 for FENICS (Stylized) in Classes 35 and 36, and App. No. 88387933 for FENICS (Stylized) in Class 42.

As to the final cited registration in the name of Fenics Software, which also owns the cited prior pending App. Nos. 88387917 and 88387933, please note that the registrant, Fenics Softwar,e provides an electronic trading platform for US Treasuries. According to their website, “Fenics USTreasuries (‘Fenics UST’) is a fully electronic U.S. Government securities (‘USTs’) trading venue owned and operated by BGC Financial, L.P. (‘BGC’), a FINRA registered broker- dealer, and counterparty to all transactions. Fenics UST operates two electronic marketplaces: a Central Limit Order Book (‘CLOB’) and a ‘Block Book’. Subscribers to the platform are expected to be banks, broker-dealers, professional trading firms (‘PTFs’) and institutional investors.” See Exhibit 2 (screenshot from http://www.fenicsust.com/about-us/). Again, Applicant is not a broker-dealer. Indeed, FENICS SOFTWARE appears more closely related to the FENIX shown in Reg. No. 5632615, which covers the same services as FENICS SOFTWARE. As noted above, HCL is an information technology services and consulting company, whose FENIX framework helps enterprises articulate digital transformation objectives. HCL and FENICS SOFTWARE are not marketing their FENIX/FENICS products in the same channels of trade. Moreover, Applicant has specifically excluded “securities brokerage services and financial portfolio management” from its Class 36 ID with this response. There is simply not a likelihood of confusion in this case, and Applicant respectfully requests withdrawal of this refusal.

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Finally, Applicant maintains that its FENIX should be able to coexist with the prior PHOENIX and FENICS marks for financial services, considering that they already manage to coexist on the register and in the marketplace. Applicant is aware that each case must be examined on its own merit, but the fact that none of the cited registrations (or applications) received any 2(d) refusals, and they all manage to coexist, is entitled to at least some probative value. Applicant requests the same treatment in this case, even for the sake of consistency in examination. Should any of the PHOENIX/FENICS/FENIX registrants be concerned by the continued use and registration of FENIX by Applicant, they will have the opportunity to object upon publication.

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Applicant contends that its mark is capable of creating a separate and distinct commercial impression in the market when used in connection with Applicant’s services, and therefore acts as a valid trademark for HCL Technologies.

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E. Additional Prior Pending Applications

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As to the prior application, App, No. 87533584 for FEENIX PAYMENT SYSTEMS and Design has abandoned.

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Finally, with regard to prior pending App. No. 87833687 for FENIX GROUP INTERNATIONAL and Design in Classes 9, 35, 36 and 42, please note that each class in the cited application is clearly limited to the life sciences industry. Indeed, they describe themselves on their website as follows: “Fenix Group International, LLC is a global consulting firm delivering management consulting services to life science companies. By utilizing its extensive industry network and expertise in high-growth chronic and specialty disease states, FENIX provides therapeutic area thought leadership in CV/Metabolism, Endocrinology, Oncology, Neurology, and Infectious Disease.” See Exhibit 3 (screenshot from http://fenix.group/). Just as FENIX GROUP INTERNATIONAL, filed in March 2018, was not refused based on any prior applications/registrations, Applicant requests similar treatment, in particular where the parties’ respective services are not targeting the same consumers, nor travel in the same channels of trade. Confusion is not likely in this case.

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In short, it is clear that Applicant’s services and those identified in the cited application/registrations would not be expected to emanate from the same source. There is no risk of confusion between the applied-for mark and the marks identified in the cited application/registrations.

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Applicant contends that its mark is capable of creating a separate and distinct commercial impression in the market when used in connection with Applicant’s services, and therefore acts as a valid trademark for HCL Technologies.

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II. CONCLUSION

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In light of the foregoing arguments, Applicant respectfully requests the Examiner to reverse the refusal to register and pass the application to publication.

EVIDENCE
Evidence has been attached: Exhibit 1 (screenshot from http://www.fenixsecurities.com/index.html#aboutUs); Exhibit 2 (screenshot from http://www.fenicsust.com/about-us/); Exhibit 3 (screenshot from http://fenix.group/).
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 036 for Financial planning, consultancy and management services specializing in banking, insurance and related business sectors; digital financial services; digital financial transaction services; digital banking services; digital insurance services
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: Financial planning, consultancy and management services specializing in banking, insurance and related business sectors; digital financial services, namely, digital transformation in the field of finance; digital financial services; digital financial transaction services; digital financial services, namely, digital transformation in the fields if banking and insurance; digital banking services; digital insurance services; all of the foregoing excluding administration of life insurance and annuities, securities brokerage services and financial portfolio managementClass 036 for Financial planning, consultancy and management services specializing in banking, insurance and related business sectors; digital financial services, namely, digital transformation in the field of finance; digital financial services; digital financial transaction services; digital financial services, namely, digital transformation in the fields if banking and insurance; digital banking services; digital insurance services; all of the foregoing excluding administration of life insurance and annuities, securities brokerage services and financial portfolio management

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.

Applicant proposes to amend the following:

Current:
Class 042 for Setting up of and management of information technology (IT) infrastructure for financial services including banking and insurance services; computer software consultancy; consulting services in the field of software as a service for the financial sector; internet consulting services and dedicated information technology (IT) consulting services for the financial sector
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: Setting up of and management of information technology (IT) infrastructure for financial services including banking and insurance services; Technical support services, namely, installation of and management of information technology (IT) infrastructure for financial services including banking and insurance services; computer software consultancy; consulting services in the field of software as a service for the financial sector; internet consulting services and dedicated information technology (IT) consulting services for the financial sector; dedicated information technology (IT) consulting services for the financial sector; consulting services relating to software as a service [saas] for the financial sectorClass 042 for Technical support services, namely, installation of and management of information technology (IT) infrastructure for financial services including banking and insurance services; computer software consultancy; consulting services in the field of software as a service for the financial sector; dedicated information technology (IT) consulting services for the financial sector; consulting services relating to software as a service [saas] for the financial sector

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: HCL TECHNOLOGIES LIMITED a(n) A company organized and existing under the Companies Act, 1956 legally organized under the laws of India
Proposed: HCL TECHNOLOGIES LIMITED, A company organized and existing under the Companies Act, 1956 legally organized under the laws of India
      Email Address: XXXX

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a design of a phoenix bird with wings outstretched and the body and wings forming the stylized term "FENIX".

The owner's/holder's proposed attorney information: Hope V. Shovein. Hope V. Shovein of Brooks Kushman P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1000 Town Center, 22nd Floor
      Southfield, Michigan 48075
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is HCL0322TUS.
      The email address is trademarks@brookskushman.com

Hope V. Shovein 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):
      HCL TECHNOLOGIES LIMITED
Correspondence Information (proposed):
      Hope V. Shovein
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@brookskushman.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): hshovein@brookskushman.com

The docket/reference number is HCL0322TUS.

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: /hope v shovein/     Date: 09/24/2020
Signatory's Name: Hope V. Shovein
Signatory's Position: Attorney of record, Michigan bar member

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:    HCL TECHNOLOGIES LIMITED
   
   
   a-9, sector-3
   noida (u.p) 201301,
Mailing Address:    Hope V. Shovein
   Brooks Kushman P.C.
   1000 Town Center, 22nd Floor
   Southfield, Michigan 48075
        
Serial Number: 79276880
Internet Transmission Date: Thu Sep 24 23:54:54 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200924235454
771994-79276880-750b98910d8a2969ee83ae22
d994948616cd7c3d1dfd924616181856e0711b64
25-N/A-N/A-20200924234309678452