To: | Social Bicycles Inc. (pctrademarks@perkinscoie.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87503611 - JUMP - 121957.US001 |
Sent: | 10/24/2017 11:46:46 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87503611
MARK: JUMP
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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: Social Bicycles Inc.
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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: 10/24/2017
APPLICATION STATUS
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s).
Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated September 21, 2017. The issue(s) raised in the previous September 21, 2017 Office action is/are as follow and is/are maintained: prior pending application cited and identification and classification of goods and services.
Applicant must respond to all issues raised in this Office action and the previous September 21, 2017 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SEARCH FOR CONFLICTING MARKS – PRIOR PENDING APPLICATION
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
The filing date of pending U.S. Application Serial No. 86898128 (“JUMP”) (previously attached) precedes applicant’s filing date. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
Portions of the identification of goods and services are indefinite and must be clarified and/or misclassified as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate:
Class 9 – “Computer software for computers, mobile phones, handheld devices, and personal electronic devices to facilitate bicycle rentals and the provision of bicycle sharing program services; computer software for computers, mobile phones, handheld devices, and personal electronic devices used to collect, analyze, and display distance, speed, health, environmental data, and social media feeds generated through bicycle rentals and the provision of bicycle sharing program services; computer software for computers, mobile phones, handheld devices, and personal electronic devices to create an online community for users of bicycle rental and bicycle sharing program services; interactive computer kiosks comprising computers, computer hardware, computer peripherals, computer operating software, digital screens, payment terminals, and signage to provide information, registration, and payment to users of bicycle rental and bicycle sharing program services; downloadable software in the nature of a mobile application featuring information in the field of bicycle transportation, bicycle sharing programs, and bicycle rental services, and alternative transportation services (language suggested based on “mobile application” language in Class 39)”;
Class 12 – “Bicycles; bicycles designed for bicycle sharing programs; bicycle accessories, namely, {specify generic name for goods}”;
Class 35 – “Marketing, advertising, and promoting bicycle rentals, bicycle rental memberships, and bicycle sharing
programs via social media, websites, sponsorships, events, posters, billboards, information panels, kiosks, bicycle racks, and bicycle accessories; business services, namely, providing an online
searchable database for bicycle rentals, bicycle sharing programs, and alternative transportation services (re-classified to Class 39); business services for implementing,
maintaining, and operating transportation systems, namely, bicycle rentals, bicycle sharing programs, and alternative transportation services; promoting customer awareness relating to the health and
environmental benefits of using bicycles”;
Class 39 – “Bicycle rentals; bicycle sharing program and alternative transportation services; providing temporary use
of bicycles; providing a website and mobile application (re-classified to Class 9) featuring information in the field of bicycle
transportation, bicycle sharing programs, and bicycle rental services, and alternative transportation services; business services, namely, providing an online
searchable database for bicycle rentals, bicycle sharing programs, and alternative transportation services”;
Class 41 – “Educational services, namely, conducting workshops, seminars, and programming
programs relating to bicycles, bicycle safety, bicycle commuting, and health and environmental benefits of bicycles; entertainment services in the nature of conducting social events and activities to encourage membership in bicycle sharing programs, promote transportation systems, and reward members of bicycle sharing programs”.
Class 42 (no change) – “Providing temporary use of online non-downloadable software to facilitate bicycle rentals and the provision of bicycle sharing program services; providing temporary use of online non-downloadable software to collect, analyze, and display distance, speed, health, and environmental data and social media feeds generated through bicycle rentals and the provision of bicycle sharing program services; computer services, namely, creating an online community for users of bicycle rental and bicycle sharing program services”.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
ASSISTANCE
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.
/Julie M. Guttadauro/
Julie M. Guttadauro
Law Office 106
(571) 272-5875
julie.guttadauro@uspto.gov
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.