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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88502736 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 117 |
| MARK SECTION |
| MARK FILE NAME |
http://uspto.report/TM/88502736/mark.png |
| LITERAL ELEMENT |
LX |
| STANDARD CHARACTERS |
NO |
| USPTO-GENERATED IMAGE |
NO |
| ARGUMENT(S) |
|
Applicant began using its LX mark in interstate commerce in connection with hotel services on August 5, 2019. It had been preparing to provide hotel services since at least as early as May 14,
2012, when it filed its first intent to use application to register LX, U.S. Ser. No. 85624043. A copy of the TESS record is submitted herewith. While that application was pending, LX, U.S.
Reg. No. 4880583, was registered for "restaurant and bar services." In addition, LX, U.S. Reg. No. 88502736, was registered by an unrelated third party for "travel agency services, namely, making
reservations and bookings for restaurants and meals." Copies of these TESS records are submitted herewith. These registrations establish the USPTO's recognition that consumers are accustomed to
seeing and are able to distinguish sources of related services in the hospitality industry that use the identical mark.
Applicant has amended its application to expressly exclude "restaurant and bar services" as it does not use LX in connection with these services.
|
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_833752-20191029075237491071_._lx.pdf |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\885\027\88502736\xml7\ROA0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\027\88502736\xml7\ROA0003.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\027\88502736\xml7\ROA0004.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\885\027\88502736\xml7\ROA0005.JPG |
| DESCRIPTION OF EVIDENCE FILE |
TESS records |
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
043 |
| DESCRIPTION |
Hotel services |
| FIRST USE ANYWHERE DATE |
At least as early as 08/05/2019 |
| FIRST USE IN COMMERCE DATE |
At least as early as 08/05/2019 |
| FILING BASIS |
Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
043 |
| TRACKED TEXT DESCRIPTION |
Hotel services; Hotel services, excluding restaurant and bar
services |
| FINAL DESCRIPTION |
Hotel services, excluding restaurant and bar services |
| FIRST USE ANYWHERE DATE |
At least as early as 08/05/2019 |
| FIRST USE IN COMMERCE DATE |
At least as early as 08/05/2019 |
| DELETED FILING BASIS |
1(b) |
| ATTORNEY SECTION (current) |
| NAME |
Sherry Flax |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
SAUL EWING ARNSTEIN & LEHR LLP |
| INTERNAL ADDRESS |
Suite 900 |
| STREET |
500 E PRATT ST |
| CITY |
BALTIMORE |
| STATE |
Maryland |
| POSTAL CODE |
21202-3133 |
| COUNTRY |
US |
| PHONE |
413-332-8784 |
| EMAIL |
sherry.flax@saul.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| ATTORNEY SECTION (proposed) |
| NAME |
Sherry Flax |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
SAUL EWING ARNSTEIN & LEHR LLP |
| INTERNAL ADDRESS |
Suite 900 |
| STREET |
500 E PRATT ST |
| CITY |
BALTIMORE |
| STATE |
Maryland |
| POSTAL CODE |
21202-3133 |
| COUNTRY |
United States |
| PHONE |
413-332-8784 |
| EMAIL |
sherry.flax@saul.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| CORRESPONDENCE SECTION (current) |
| NAME |
SHERRY FLAX |
| FIRM NAME |
SAUL EWING ARNSTEIN & LEHR LLP |
| INTERNAL ADDRESS |
Suite 900 |
| STREET |
500 E PRATT ST |
| CITY |
BALTIMORE |
| STATE |
Maryland |
| POSTAL CODE |
21202-3133 |
| COUNTRY |
US |
| PHONE |
413-332-8784 |
| EMAIL |
sherry.flax@saul.com; ipgroupmailbox@saul.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
Sherry Flax |
| FIRM NAME |
SAUL EWING ARNSTEIN & LEHR LLP |
| INTERNAL ADDRESS |
Suite 900 |
| STREET |
500 E PRATT ST |
| CITY |
BALTIMORE |
| STATE |
Maryland |
| POSTAL CODE |
21202-3133 |
| COUNTRY |
United States |
| PHONE |
413-332-8784 |
| EMAIL |
sherry.flax@saul.com; ipgroupmailbox@saul.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| SIGNATURE SECTION |
| DECLARATION SIGNATURE |
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark
Rules of Practice. |
| RESPONSE SIGNATURE |
/sherry flax/ |
| SIGNATORY'S NAME |
Sherry Flax |
| SIGNATORY'S POSITION |
Attorney of record, Maryland bar member |
| SIGNATORY'S PHONE NUMBER |
410-332-8784 |
| DATE SIGNED |
10/29/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Tue Oct 29 08:19:24 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-X.XX.XX.X-20191
029081924004429-88502736-
700e864c7a20ac33c4bfea1f3
6a45b494ed47cd9fa71b6b55d
56b0201992be-N/A-N/A-2019
1029075237491071 |
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.
88502736 LX (Stylized and/or with Design, see http://uspto.report/TM/88502736/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Applicant began using its LX mark in interstate commerce in connection with hotel services on August 5, 2019. It had been preparing to provide hotel services since at least as early as May 14,
2012, when it filed its first intent to use application to register LX, U.S. Ser. No. 85624043. A copy of the TESS record is submitted herewith. While that application was pending, LX, U.S.
Reg. No. 4880583, was registered for "restaurant and bar services." In addition, LX, U.S. Reg. No. 88502736, was registered by an unrelated third party for "travel agency services, namely, making
reservations and bookings for restaurants and meals." Copies of these TESS records are submitted herewith. These registrations establish the USPTO's recognition that consumers are accustomed to
seeing and are able to distinguish sources of related services in the hospitality industry that use the identical mark.
Applicant has amended its application to expressly exclude "restaurant and bar services" as it does not use LX in connection with these services.
EVIDENCE
Evidence in the nature of TESS records has been attached.
Original PDF file:
evi_833752-20191029075237491071_._lx.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for Hotel services
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.
In International Class 043, the mark was first used at least as early as 08/05/2019 and first used in commerce at least as early as 08/05/2019 .
Proposed:
Tracked Text Description: Hotel services;
Hotel services, excluding restaurant and bar servicesClass 043 for Hotel
services, excluding restaurant and bar services
Deleted Filing Basis: 1(b)
In International Class 043, the mark was first used at least as early as 08/05/2019 . and first used in commerce at least as early as 08/05/2019 .
The applicant's current attorney information: Sherry Flax. Sherry Flax of SAUL EWING ARNSTEIN & LEHR LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is
located at
Suite 900
500 E PRATT ST
BALTIMORE, Maryland 21202-3133
US
The phone number is 413-332-8784.
The email address is sherry.flax@saul.com
The applicants proposed attorney information: Sherry Flax. Sherry Flax of SAUL EWING ARNSTEIN & LEHR LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is
located at
Suite 900
500 E PRATT ST
BALTIMORE, Maryland 21202-3133
United States
The phone number is 413-332-8784.
The email address is sherry.flax@saul.com
Sherry Flax 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.
The applicant's current correspondence information: SHERRY FLAX. SHERRY FLAX of SAUL EWING ARNSTEIN & LEHR LLP, is located at
Suite 900
500 E PRATT ST
BALTIMORE, Maryland 21202-3133
US
The phone number is 413-332-8784.
The email address is sherry.flax@saul.com; ipgroupmailbox@saul.com
The applicants proposed correspondence information: Sherry Flax. Sherry Flax of SAUL EWING ARNSTEIN & LEHR LLP, is located at
Suite 900
500 E PRATT ST
BALTIMORE, Maryland 21202-3133
United States
The phone number is 413-332-8784.
The email address is sherry.flax@saul.com; ipgroupmailbox@saul.com
SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the
Trademark Rules of Practice.
Response Signature
Signature: /sherry flax/ Date: 10/29/2019
Signatory's Name: Sherry Flax
Signatory's Position: Attorney of record, Maryland bar member
Signatory's Phone Number: 410-332-8784
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: SHERRY FLAX
SAUL EWING ARNSTEIN & LEHR LLP
Suite 900
500 E PRATT ST
BALTIMORE, Maryland 21202-3133
Mailing Address: Sherry Flax
SAUL EWING ARNSTEIN & LEHR LLP
Suite 900
500 E PRATT ST
BALTIMORE, Maryland 21202-3133
Serial Number: 88502736
Internet Transmission Date: Tue Oct 29 08:19:24 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XX.X-20191029081924004429
-88502736-700e864c7a20ac33c4bfea1f36a45b
494ed47cd9fa71b6b55d56b0201992be-N/A-N/A
-20191029075237491071
