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 07/31/2017)

---

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 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87029995 LUX (Stylized and/or with Design, see http://uspto.report/TM/87029995/mark.png) has been amended as follows:

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

In the United States Patent and Trademark Office

Serial No.:       87/029,995 Mark:               LUX (Stylized) Int’l Class:       036 Atty. Docket:   LUX-603

I.                   Introduction

This response is submitted by Lux Capital Management, LLC (“Applicant”), through its undersigned counsel, in response to the Office Action dated August 24, 2016 (“the Office Action”) for the above-referenced U.S. Trademark Application for the LUX design mark (“Applicant’s Mark”).

The Office Action refuses registration of Applicant’s Mark because of an alleged likelihood of confusion with U.S. Registration No. 5,009,388 (“Cited Mark 1”) and U.S. Registration No. 4,999,946 (“Cited Mark 2”) (collectively, the “Cited Marks”).  However, as set forth below, Applicant submits that there is no likelihood of confusion between Applicant’s Mark and the Cited Marks.  Thus, Applicant respectfully requests that the pending rejection be withdrawn and that Applicant’s Mark proceed to registration.

II.                SECTION 2(D) REFUSALS – LIKELIHOOD OF CONFUSION

The Office Action cites three du Pont factors as a basis to reject Applicant’s Mark over the Cited Marks: the similarity and nature of the services; the similarities of the channels of trade of the services; and the similarity of the marks themselves.  However, Applicant submits that there is no similarity in the nature of the services offered by the parties (or the trade channels of those services), or between Applicant’s Mark and the Cited Marks.

A.                Dissimilarity of the Services and Channels of Trade

As amended, Applicant’s description of services specifically carves out the allegedly conflicting services of the Cited Marks:

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.

Moreover, each of the positively recited services are distinguishable from the services covered by the Cited Marks.  Applicant’s core business relates to venture capital and investing in technology startups.  In contrast, Lux FTS specializes in customizing implementation and application of GENEVA® software owned by Advent Software, Inc.  Specifically, Lux FTS provides specialized accounting software and business assistance, project management services, and GENEVA® accounting software upgrade services to businesses that use GENEVA® software.  Printouts of the Lux FTS website, www.luxfts.com, are attached as Exhibits 1-5 (pages are shown as accessed on February 16, 2017.)  As is evident from the website, Lux FTS is not in the business of venture capital or investing in technology startups.  In addition, the clients and customers of the two respective companies consist of smart, well-educated, savvy business people who are able to discern the differences between the two companies and the products and services that they offer.  For these reasons, there is no likelihood of consumer confusion.

B.                 Dissimilarity of the Marks

Applicant’s Mark covers a stylized design containing a specific combination of graphical depictions and literal elements.  In spite of the stylized nature of the mark, the Office Action alleges that “a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.”  However, each of the Cited marks contains additional terminology to distinguish them from Applicant’s mark.  This extra terminology is material because it contains at least as many letters (or in the case of LUX TRANSCEND, three times as many letters) as the LUX component of the mark.  In spite of the Office Action’s allegations that “[c]onsumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark,” in this case, the significant additional lettering for each obstacle mark is not likely to be neglected by sophisticated consumers.  Rather, it is likely to distinguish the brands.  Under these circumstances, using Applicant’s applied-for design by itself does not create a likelihood of confusion with either of the longer, distinguishable Cited Marks.

III.             Conclusion

For the foregoing reasons, Applicant respectfully submits that all issues raised in the Office Action have been addressed and overcome.  Accordingly, Applicant requests that the pending application proceed to registration.  The Examiner is invited to contact the undersigned attorney to discuss the application.

EVIDENCE

Original PDF file:
evi_20721016351-20170216112429558873_._LUX_FTS_website_-_Exhibit_1.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_20721016351-20170216112429558873_._LUX_FTS_website_-_Exhibit_2.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_20721016351-20170216112429558873_._LUX_FTS_website_-_Exhibit_3.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_20721016351-20170216112429558873_._LUX_FTS_website_-_Exhibit_4.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_20721016351-20170216112429558873_._LUX_FTS_website_-_Exhibit_5.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 036 for 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/05/2016 and first used in commerce at least as early as 05/05/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: 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; 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 trackingClass 036 for 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
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/05/2016 and first used in commerce at least as early as 05/05/2016 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /S. James Boumil III/     Date: 02/16/2017
Signatory's Name: S. James Boumil III
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 617-526-9618

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.

        
Serial Number: 87029995
Internet Transmission Date: Thu Feb 16 11:42:10 EST 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201702161142105
03184-87029995-580c7beb59735c386bb6484dc
938b7127e9c3b24b5cb7d22b4f4e0f2a3365d9bf
d-N/A-N/A-20170216112429558873