UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88347853
MARK: LOUX
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Smart Lighting Holding Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/11/2019
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
- Section 2(d) Refusal – Likelihood of Confusion
- Section 2(e)(4) Refusal – Primarily Merely a Surname
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
The Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
The applicant has applied to register the mark LOUX for “Bicycle lights; Diving lights; Electric torches for lighting; Fairy lights for festive decoration; Head torches; Lamps; Lanterns for lighting; LED (light emitting diode) lighting fixtures; Light bulbs; Lighting apparatus for vehicles; Lighting apparatus, namely, lighting installations; Outdoor portable lighting products, namely, headlamps; Street lamps; Ultraviolet ray lamps, not for medical purposes; Lights, electric, for Christmas trees.”
The registered mark is LOOX for “Lighting installations and lighting appliances for lighting and illuminating public and private buildings, namely, LED lighting systems comprised of namely LED module, power supplies and wiring, lamps, lamps for furniture, electric lighting, namely, LED luminaires, under cabinet lights, recessed lights, strip lights, spot lights, surface mounted lights, drawer lights, gooseneck lights, down lights, display lights, lamps being furnishings, light radiating units, namely, under cabinet lights, recessed lights, strip lights, spot lights, surface mounted lights, drawer lights, gooseneck lights, down lights, display lights, interior lighting, namely, under cabinet lights, recessed lights, strip lights, spot lights, surface mounted lights, drawer lights, gooseneck lights, down lights, display lights, electric lighting fixtures in the nature of recessed lights for furniture, exterior lights, namely, spot lights, electric lighting fixtures in the nature of recessed lights, ceiling-mounted lights, wall lamps, workplace lighting, namely, LED lamps, lights for living spaces, namely, under cabinet lights, recessed lights, strip lights, spot lights, surface mounted lights, drawer lights, gooseneck lights, down lights, display lights; computer-controlled lighting, namely, under cabinet lights, ceiling lights, accent lights, display lights.”
In the instant case, the marks create the same mental reaction, sound, and overall commercial impression. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
The Goods
In the instant case, the parties have highly related, identical in part, lighting installations, lamps, and a variety of lights, lanterns, and LED lights such that the goods would be marketed in the same channels of trade.
LAMPS PLUS – indoor and outdoor lighting fixtures, lights, lamps, lanterns, bulbs, LED lights http://www.lampsplus.com/
LAMPS USA - indoor and outdoor lighting fixtures, lights, lamps, lanterns, bulbs, LED lights http://www.lampsusa.com/
WILSON LIGHTING - indoor and outdoor lighting fixtures, lights, lamps, lanterns, bulbs, LED lights http://wilsonlighting.com/categories
Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
The marks are highly similar. The lights, lamps, lanterns, fixtures, bulbs and LED lights for various uses are very highly related. The similarities among the marks and the goods are so great as to be marketed in the same channels of trade and create a likelihood of confusion among consumers.
Accordingly, registration is refused under Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
Registration is refused because the applied-for mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211.
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods and/or services, “‘is the primary significance of the mark as a whole to the purchasing public.’” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.
The following five inquiries are often used to determine the public’s perception of a term’s primary significance:
(1) Whether the surname is rare;
(2) Whether anyone connected with applicant uses the term as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the term has the structure and pronunciation of a surname; and
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985).
These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination. In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01. For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.
Please see the attached evidence from WHITEPAGES.COM and LEXISNEXIS®, establishing the surname significance of LOUX. This evidence shows the applied-for mark appearing 2,360,221 times as a surname in a nationwide phone directory of names and over 1,350 times in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers.
RENEE LOUX CLEAN FOOD + SMART LIVING - http://www.reneeloux.com/143/about-ren%C3%A9e-loux
WIKIPEDIA - http://en.wikipedia.org/wiki/Loux
HOUSE OF NAMES - http://www.houseofnames.com/loux-family-crest
There is nothing on record to indicate that anyone connected with applicant uses the term as a surname, however, the surname significance of the term is demonstrated by the attached evidence and by the lack of any recognized meaning of the term other than as a surname.
Evidence that a term has no recognized meaning or significance other than as a surname is relevant to determining whether the term would be perceived as primarily merely a surname. See In re Weiss Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); TMEP §1211.02(b)(vi). The attached evidence from Wikipedia, Wordnik, Rhymezone and LookWAYup Translating dictionary/Thesaurus shows that LOUX does not appear in the dictionary. Thus, this term appears to have no recognized meaning or significance other than as a surname.
In addition, the applied-for mark has the structure and pronunciation of a surname. Please note that the attached evidence from LEXISNEXIS® and Whitepages.Com demonstrating surnames similar in structure and pronunciation to the applied-for mark. See LAUX, LAUCK, LOUCK. Evidence that a term has the structure and pronunciation of a surname may contribute to a finding that the primary significance of the term is that of a surname. In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); see In re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); TMEP §1211.01(a)(vi).
Lastly, the applied-for mark is not sufficiently stylized to remove its primary significance from that of a surname.
Accordingly, registration is refused under Section 2(e)(4) of the Trademark Act.
RESPONSE OPTION TO SECTION 2(e)(4) REFUSAL
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.
ADVISORY
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
ASSISTANCE
/AKhan/
Asmat Khan
Trademark Examining Attorney
Law Office 114
(571)-272-9453
asmat.khan@uspto.gov
Total number found: 1370 |
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No. |
Name |
Address |
Phone |
1. |
LOUX, A |
1103 N 15TH APT 109 |
602-373-6984 |
2. |
LOUX, A |
872 BUENA VISTA APT 5 |
513-264-1977 |
3. |
LOUX, A |
PO BOX 143 |
310-977-4425 |
4. |
LOUX, A |
1491 SPENCER AVE |
616-667-2667 |
5. |
LOUX, A |
124 VALENTINE |
908-850-3322 |
6. |
LOUX, A |
3364 E WHITESIDE |
916-267-4838 |
7. |
LOUX, A |
KALAMAZOO, MI 49006 |
269-599-2656 |
8. |
LOUX, AARON S |
145 HALSEY APT 2 |
206-619-8300 |
9. |
LOUX, AARON M |
PO BOX 602 |
831-207-1588 |
10. |
LOUX, AARON |
12 THAYER CORNER |
413-230-8607 |
Total number found: 6793 |
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No. |
Name |
Address |
Phone |
1. |
LAUX, A |
3535 APOLLO |
504-875-4541 |
2. |
LAUX, A |
5012 COLFAX AVE S |
612-823-2838 |
3. |
LAUX, A |
216-331-8501 |
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4. |
LAUX, A |
ALISO VIEJO, CA 92656 |
949-600-5318 |
5. |
LAUX, A |
AUDUBON, PA 19403 |
267-441-9036 |
6. |
LAUX, A |
PALMDALE, CA 93552 |
661-992-0004 |
7. |
LAUX, A |
ST PETERSBURG, FL 33703 |
727-528-7121 |
8. |
LAUX, AARON M |
2055 BIGGS NE |
616-897-4990 |
9. |
LAUX, AARON |
3182 CAMINO ARROYO |
760-470-3510 |
10. |
LAUX, AARON M |
309 CHATHAM |
616-897-4990 |
Total number found: 1779 |
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No. |
Name |
Address |
Phone |
1. |
LAUCK, A LESLIE |
30 HEATH |
317-846-1510 |
2. |
LAUCK, A |
YORK, PA 17404 |
717-779-9498 |
3. |
LAUCK, AARON M |
205 GOODRICH |
816-776-2464 |
4. |
LAUCK, AARON M |
205 GOODRICH |
816-776-2464 |
5. |
LAUCK, AARON |
8877 SHAFFER |
419-647-6359 |
6. |
LAUCK, AARON |
8877 SHAFFER |
419-647-6359 |
7. |
LAUCK, AARON |
URBANA, OH 43078 |
937-652-1747 |
8. |
LAUCK, ABBY |
1324 WATER WILLOW |
303-619-7308 |
9. |
LAUCK, ABBY |
DENVER, CO 80202 |
303-809-1140 |
10. |
LAUCK, ABBY |
DIAMONDHEAD, MS 39525 |
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.