To: | NEUTRON HOLDINGS, INC. (trademarks@wsgr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88014232 - 54525-TM1002 |
Sent: | 10/10/2018 12:53:12 PM |
Sent As: | ECOM119@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88014232
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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: NEUTRON HOLDINGS, 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: 10/10/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
COLOR DESCRIPTION OF MARK REQUIRED
If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
The following mark description is suggested, if accurate:
The mark consists of design of a cross section of a lime showing six segments, with pith and peel, the segments appearing in lime green, the peel and center circle in green, and the pith in white.
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services is indefinite as specified further below and must be clarified. See TMEP §1402.01. 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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
The following recitation are NOT acceptable for the reasons annotated:
The function of software in ‘transportation’ fields is varied in actuality, ranging from spreadsheet functions to e-commerce advertising, and the recitation is thus vague.
In addition, software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software. For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual.
As in Class 9, the SaaS software functions must be stated for Class 42; the field of use is insufficient.
The wording is “vehicle sharing” is indefinite and unclassifiable, and must be limited to the provision of vehicle reservations, rental or transport of freight or passengers in Class 39. Other services may be in other Classes. See, in the Manual, e.g., 039 Motor vehicle sharing services, namely, providing temporary use of motor vehicles vs. 035 Providing an online directory information service featuring information regarding vehicles in the nature of classified advertisements, or, 035 Tracking, locating and monitoring of vehicles, maritime vessels and aircraft services for commercial purposes
The identification of goods and/or services in the application includes unacceptably broad wording from the class heading of one or more international classes that must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.02(a), 1401.08. The USPTO considers class headings, whose sole purpose is to indicate the subject matter and general scope of each international class of goods and/or services, to be too broadly worded to identify goods and/or services in a U.S. application. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298-99 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.02(a), 1401.08, 1402.01 et seq., 1402.07(a). In this case, the wording could identify goods and/or services in multiple classes; that is, this wording could encompass, e.g., “035 Freight logistics management” or “035 Transportation logistics services, namely, arranging the transportation of goods for others.”
For amendments to identifications consisting of class headings, the scope of the identification is limited to the ordinary meaning of the words in the heading. See In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1598 (TTAB 2014); TMEP §§1402.06(a), (b), 1402.07(a). Accordingly, applicant must amend the class heading(s) to identify specific goods and/or services that fall within the ordinary meaning of the words specified in the class heading(s). See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06(a), (b), 1402.07(a).
Applicant may adopt the following identification, if accurate:
Downloadable computer software for ordering a passenger ride in the field of vehicle sharing and use of vehicles; downloadable software for ordering a passenger ride in the fields of transportation and delivery, in INT. CLASS 009;
Rental of advertising space; in INT. CLASS 035;
Telecommunications services for delivery of passengers, namely, routing electronic messages and calls to local third-party drivers in the vicinity of the caller, in INT. CLASS 038;
Vehicle sharing services, namely, providing temporary use of motor vehicles; rental of bicycles, scooters, and electric and motor vehicles; providing a website featuring transportation information; transportation consulting services; transportation reservation services; transportation and delivery services, namely, providing temporary use of motor vehicles in the nature of taxi transport services; in INT. CLASS 039
Software as a Service (SaaS) services, namely, providing non-downloadable software for ordering a passenger ride in the field of vehicle sharing and use of vehicles; Software as a Service (SaaS) services, namely, providing non-downloadable software for ordering a passenger ride in the fields of transportation and delivery, in INT. CLASS 042.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
MULTIPLE CLASSES -- INSUFFICIENT FEES
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
Therefore, applicant must either (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Hanno Rittner/
Trademark Examining Attorney
Law Office 119
(571) 272-7188
hanno.rittner@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.