Response to Office Action

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)

---

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. 88028680 SPOTLIGHT(Standard Characters, see http://uspto.report/TM/88028680/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Telecommunications, namely, information transmission via electronic communications and digital networks; providing electronic message alerts via the internet and global communications networks
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.

Proposed:
Tracked Text Description: Telecommunications, namely, information transmission via electronic communications and digital networks; Telecommunications services, namely, information transmission via electronic communications and digital networks; providing electronic message alerts via the internet and global communications networks; telecommunications services, namely, providing electronic message alerts via the internet and global communications networksClass 038 for Telecommunications services, namely, information transmission via electronic communications and digital networks; telecommunications services, namely, providing electronic message alerts via the internet and global communications networks
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Transport, namely, providing information about transportation via a website; travel arrangement, namely, providing information about travel arrangement via a website; travel arrangement, namely, assisting rideshare riders to locate rideshare drivers and assisting rideshare drivers to locate rideshare riders
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.

Proposed:
Tracked Text Description: Transport, namely, providing information about transportation via a website; travel arrangement, namely, providing information about travel arrangement via a website; travel arrangement, namely, providing information about travel arrangement in the nature of arranging transport for travelers via a website; travel arrangement, namely, assisting rideshare riders to locate rideshare drivers and assisting rideshare drivers to locate rideshare riders; travel arrangement in the nature of transportation services that match drivers of motor vehicles with individuals needing rides, namely, assisting rideshare riders to locate rideshare drivers and assisting rideshare drivers to locate rideshare ridersClass 039 for Transport, namely, providing information about transportation via a website; travel arrangement, namely, providing information about travel arrangement in the nature of arranging transport for travelers via a website; travel arrangement in the nature of transportation services that match drivers of motor vehicles with individuals needing rides, namely, assisting rideshare riders to locate rideshare drivers and assisting rideshare drivers to locate rideshare riders
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.

The applicant's current attorney information: Stephen Garcia. Stephen Garcia, is located at

      1455 MARKET STREET, 4TH FLOOR
      SAN FRANCISCO, California 94103
      US

The applicants proposed attorney information: Stephen Garcia. Other appointed attorneys are Raphael A. Gutierrez. Stephen Garcia, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1455 Market Street, 4th Floor
      San Francisco, California 94103
      United States

The email address is tmprosecution@uber.com

Stephen Garcia 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: RAPHAEL A. GUTIERREZ. RAPHAEL A. GUTIERREZ, is located at

      1455 MARKET STREET, 4TH FLOOR
      SAN FRANCISCO, California 94103
      US

The email address is tmprosecution@uber.com; trademarks@fenwick.com

The applicants proposed correspondence information: Stephen Garcia. Stephen Garcia, is located at

      1455 Market Street, 4th Floor
      San Francisco, California 94103
      United States

The email address is tmprosecution@uber.com; ubertrademarkdocketing@fenwick.com

SIGNATURE(S)
Response Signature
Signature: /Stephen Garcia/     Date: 10/03/2019
Signatory's Name: Stephen Garcia
Signatory's Position: Counsel, IP

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:    RAPHAEL A. GUTIERREZ
   
   
   1455 MARKET STREET, 4TH FLOOR
   SAN FRANCISCO, California 94103
Mailing Address:    Stephen Garcia
   1455 Market Street, 4th Floor
   San Francisco, California 94103
        
Serial Number: 88028680
Internet Transmission Date: Thu Oct 03 17:54:19 EDT 2019
TEAS Stamp: USPTO/ROA-XX.X.XX.XXX-201910031754191717
81-88028680-610f8108ccd1375b47bb9bad53a8
195ff3b509a8f46cd673de4fb9dc29fdfdcd445-
N/A-N/A-20191003173037499176