UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 87029995
MARK: LUX
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Lux Capital Management, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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REQUEST FOR RECONSIDERATION DENIED
ISSUE/MAILING DATE: 8/28/2017
The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a). The Section 2(d) refusals made final in the Office action dated February 23, 2017 are maintained and continue to be final. See TMEP §§715.03(a)(ii)(B), 715.04(a).
In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues. Accordingly, the request is denied.
Specifically, applicant’s Request for Reconsideration seeks registration of the applied-for mark, because applicant is “hopeful” that that a consent agreement with the registrants can be signed and submitted “in due course.” See applicant’s Request for Reconsideration.
First, no such consent agreement was provided. Second, applicant is advised that consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on a likelihood of confusion determination. In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); In re E. I. du Pont, 476 F.2d at 1361, 177 USPQ at 567; TMEP §1207.01(d)(viii); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016) (“[T]here is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined.”).
Factors to be considered in weighing a consent agreement include the following:
(1) Whether the consent shows an agreement between both parties;
(2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;
(3) Whether the parties agree to restrict their fields of use;
(4) Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
(5) Whether the marks have been used for a period of time without evidence of actual confusion.
See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993); In re Mastic, 829 F.2d at 1117-18, 4 USPQ2d at 1295-96; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987).
Given that no actual consent agreement was provided, none of the above-referenced factors can be assessed and the Section 2(d) refusals remain appropriate.
The applied-for mark is Applicant’s mark is LUX (stylized) for, as amended, Financial services, namely, investment advisory and investment management services for investment funds and investments, financial sponsorship of the formation of investment funds, and financial portfolio management of investment funds and investments for others, not including financial project management, investment tracking, or support of investment tracking in International Class 36.
Registrant’s marks are LUX TRANSCEND (standard characters) for (among other things) Financial management services, namely, financial project management, investment tracking in International Class 36 and LUX FTS (standard characters) for (among other things) Financial management services, namely, financial project management and support of investment tracking in International Class 36.
If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c).
/Brittney L. Cogan/
Examining Attorney
Law Office 114
571-272-7973
brittney.cogan@uspto.gov
