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 |
88117295 |
LAW OFFICE ASSIGNED |
LAW OFFICE 103 |
MARK SECTION |
MARK |
http://uspto.report/TM/88117295/mark.png |
LITERAL ELEMENT |
PARKPOCKET |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
The Office objects to the priority claim because the EU registration certificate does not show ownership in the name of Applicant. Attached is a copy of a
current printout of the EUIPO database showing (a) that the Applicant is listed as the current owner, and (b) recordation of a transfer acknowledged by the EUIPO on March 16, 2018, which is prior to
the application date of the subject US application, listing the Applicant as the “Neuer Inhaber” (which translates to “New owner”).
The Office asserts a lack of clarity as to the standard characters claim because the U.S. application contains a standard character claim and the Office contends
the foreign registration does not. The same EUIPO printout attached hereto and referenced above also clearly indicates that the EU registration is a “Word mark.” Thus, applicant
respectfully submits that under the law of the country of origin, the foreign application or registration includes a claim that the mark is in standard characters (or the equivalent).
The Office refuses registration for alleged indefiniteness in the identification of goods and services. Applicant respectfully disagrees, but respectfully submits
that as amended to accept suggestions by the examiner attorney and/or to be consistent with acceptable entries in the USPTO ID Manual, the ID is now in condition for approved for publication.
Specifically, among the suggestions from the examiner in Class 9 was to limit “encoded cards” to “magnetically encoded key cards.” Applicant respectfully submits that encoded key cards
(Term ID 009-4492) is acceptable without further limitation. Similarly, the examiner suggested that “providing advertising space” should be limited to “providing advertising space on the
internet.” Applicant respectfully submits that the phrase “providing advertising space by electronic means and global computer information networks” should also be acceptable
(see Term ID 035-1421). Finally, in addition to accepting the Examiner’s suggestion in Class 41 regarding the service of providing electronic publications online, application has also added a term
using the format set forth in Term ID 041-1701.
For all of the foregoing reasons, Applicant respectfully requests withdrawal of the refusal to register.
|
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_216129152132-20190412141552977361_._Parkpocket_EUIPO_record.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\172\88117295\xml5\ROA0002.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\881\172\88117295\xml5\ROA0003.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\881\172\88117295\xml5\ROA0004.JPG |
DESCRIPTION OF EVIDENCE FILE |
current printout of the EUIPO database showing ownership in the name of Applicant |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, compact discs, DVDs and other digital
recording media; Data processing equipment, computers; Computer software; Computer programs and software for the recording, identification, locating, management, supplying and rental of parking
spaces and car parks; Computer programs and software for card readers; Navigation, orientation and mapping devices; Card reading equipment; Readers using electromagnetic waves for identification and
locating purposes; Encoded cards; Electronic publications (electronically downloadable) in connection with providers, renters, leasers and users of parking spaces, car parks, service stations and
charging stations for electric mobility and in connection with the business of providing information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management,
service stations and charging stations for electric mobility |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, compact discs, DVDs and other digital recording media; prerecorded magnetic data carriers, compact discs, DVDs, and other digital
prerecorded media devices, all featuring information about parking; Data processing equipment, computers; Computer software;
Computer software for enabling drivers to find and rent parking spaces; Computer programs and software for the recording, identification,
locating, management, supplying and rental of parking spaces and car parks; Computer programs and software for card readers; Computer programs and software for operating card readers; Navigation, orientation and mapping devices; Navigation, orientation and mapping devices, namely, GPS navigation devices; Card reading equipment; Readers using
electromagnetic waves for identification and locating purposes; optical readers using electromagnetic waves for identification and locating purposes;
Encoded cards; encoded key cards; Electronic publications (electronically downloadable)
in connection with providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility and in connection with the business of providing
information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric mobility; Electronic downloadable publications in the nature of booklets for providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for
electric mobility, featuring information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric
mobility |
FINAL DESCRIPTION |
Apparatus for recording, transmission or reproduction of sound or images; prerecorded magnetic data carriers, compact discs, DVDs, and
other digital prerecorded media devices, all featuring information about parking; Data processing equipment, computers; Computer software for enabling drivers to find and rent parking spaces;
Computer programs and software for the recording, identification, locating, management, supplying and rental of parking spaces and car parks; Computer programs and software for operating card
readers; Navigation, orientation and mapping devices, namely, GPS navigation devices; Card reading equipment; optical readers using electromagnetic waves for identification and locating purposes;
encoded key cards; Electronic downloadable publications in the nature of booklets for providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for
electric mobility, featuring information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric
mobility |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Advertising; Marketing and promotion services; On line advertising on a computer network; Providing advertising space, advertising
sites and advertising media; Collating, systematising and verification of electronic data in computer databases; Loyalty, incentive and bonus program services; Consumer consultancy by means of
telecommunications networks for advertising and sales purposes; Providing of names and addresses for advertising purposes |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
TRACKED TEXT DESCRIPTION |
Advertising; Marketing and promotion services; On line
advertising on a computer network; Providing advertising space, advertising sites and advertising media; Providing
advertising space by electronic means and global information networks, providing advertising sites in the nature of provision of space on websites for advertising goods and services, and distribution
of advertising media in the nature of advertising materials; Collating, systematising and verification of electronic data in computer databases;
Collating, systematizing and maintenance of electronic data in computer databases; Loyalty, incentive and bonus program
services; Loyalty, incentive and bonus program services, namely, administration of a consumer loyalty program to promote rental of parking spaces by
others; Consumer consultancy by means of telecommunications networks for advertising and sales purposes; Consumer
consultancy by means of telecommunications networks for advertising and sales purposes, namely, providing commercial advice for consumers in the choice of products and services; Providing of names and addresses for advertising purposes; providing business information regarding the names and addresses of others for
advertising purposes; Providing website portals on the internet featuring customer reviews in connection with providers, renters, leasers and users of parking
spaces and car parks for commercial purposes; Arranging of commercial rental and leasing contracts with regard to parking spaces and places to park |
FINAL DESCRIPTION |
Advertising; Marketing and promotion services; On line advertising on a computer network; Providing advertising space by electronic
means and global information networks, providing advertising sites in the nature of provision of space on websites for advertising goods and services, and distribution of advertising media in the
nature of advertising materials; Collating, systematizing and maintenance of electronic data in computer databases; Loyalty, incentive and bonus program services, namely, administration of a consumer
loyalty program to promote rental of parking spaces by others; Consumer consultancy by means of telecommunications networks for advertising and sales purposes, namely, providing commercial advice for
consumers in the choice of products and services; providing business information regarding the names and addresses of others for advertising purposes; Providing website portals on the internet
featuring customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks for commercial purposes; Arranging of commercial rental and leasing contracts with
regard to parking spaces and places to park |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (038)(current) |
INTERNATIONAL CLASS |
038 |
DESCRIPTION |
Telecommunications; Internet based telecommunication services; Telecommunication gateway services; Access to content, websites and
portals; Communication by hertzian wave; Transmission of information on-line; Providing online forums and portals; Providing portals on the internet for the purpose of customer reviews in connection
with providers, renters, leasers and users of parking spaces and car parks |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (038)(proposed) |
INTERNATIONAL CLASS |
038 |
TRACKED TEXT DESCRIPTION |
Telecommunications; Telecommunications services, namely, providing
telecommunications connections to a global computer network; Internet based telecommunication services; Internet based
telecommunication services, namely, providing telecommunications connections to the internet; Telecommunication gateway services; Access to content, websites and portals; Telecommunication access services to content, websites and internet website portals; Communication by hertzian wave; Transmission of information on-line; Providing online forums and portals; Providing online forums for transmission of messages among computer users and providing telecommunication access services to internet website portals; Providing portals on the internet for the purpose of customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks; Providing telecommunication access services to website portals on the internet for the purpose of accessing customer reviews in connection with providers, renters, leasers and users of
parking spaces and car parks |
FINAL DESCRIPTION |
Telecommunications services, namely, providing telecommunications connections to a global computer network; Internet based
telecommunication services, namely, providing telecommunications connections to the internet; Telecommunication gateway services; Telecommunication access services to content, websites and internet
website portals; Communication by hertzian wave; Transmission of information on-line; Providing online forums for transmission of messages among computer users and providing telecommunication access
services to internet website portals; Providing telecommunication access services to website portals on the internet for the purpose of accessing customer reviews in connection with providers,
renters, leasers and users of parking spaces and car parks |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (039)(current) |
INTERNATIONAL CLASS |
039 |
DESCRIPTION |
Car parking and Vehicle storage; Provision of car parks and car parking services; Rental of parking spaces and car parks; Navigation
services; Arranging of rental and leasing contracts with regard to parking spaces and places to park; Providing non-downloadable information online in connection with providers, renters, leasers and
users of parking spaces and car parks |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (039)(proposed) |
INTERNATIONAL CLASS |
039 |
TRACKED TEXT DESCRIPTION |
Car parking and Vehicle storage; Provision of car parks and car parking
services; Provision of car parks in the nature of car parking facilities and car parking services; Rental of parking
spaces and car parks; Rental of parking spaces and car parks in the nature of car parking facilities; Navigation
services; GPS navigation services; Arranging of rental and leasing contracts with regard to parking spaces and places to
park; Providing non-downloadable information online in the field of car parking as it relates to providers, renters, leasers and users of parking spaces and car
parks; Providing non-downloadable information online in connection with providers, renters, leasers and users of parking spaces and car parks |
FINAL DESCRIPTION |
Car parking and Vehicle storage; Provision of car parks in the nature of car parking facilities and car parking services; Rental of
parking spaces and car parks in the nature of car parking facilities; GPS navigation services; Providing non-downloadable information online in the field of car parking as it relates to providers,
renters, leasers and users of parking spaces and car parks |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (041)(current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Providing electronic publications online (not downloadable) in connection with providers, renters, leasers and users of parking spaces,
car parks, service stations and charging stations for electric mobility and in connection with the business of providing information regarding providers, renters, leasers and users of parking spaces,
car parks, traffic management, service stations and charging stations for electric mobility |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (041)(proposed) |
INTERNATIONAL CLASS |
041 |
TRACKED TEXT DESCRIPTION |
Providing electronic publications online (not downloadable) in connection with providers, renters,
leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility and in connection with the business of providing information regarding providers, renters,
leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric mobility; Providing electronic
non-downloadable publications online, namely, newsletters for providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility,
featuring information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric mobility; Providing electronic non-downloadable directory publications online in the field of car parking, featuring information regarding providers, renters, leasers and users of parking
spaces, car parks, service stations and charging stations for electric mobility |
FINAL DESCRIPTION |
Providing electronic non-downloadable publications online, namely, newsletters for providers, renters, leasers and users of parking
spaces, car parks, service stations and charging stations for electric mobility, featuring information regarding providers, renters, leasers and users of parking spaces, car parks, traffic
management, service stations and charging stations for electric mobility; Providing electronic non-downloadable directory publications online in the field of car parking, featuring information
regarding providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Design and development of computer hardware and software; Providing software as a service; Rental of software, Hiring out data
processing equipment |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Design and development of computer hardware and software; Providing software
as a service; Providing software as a service (SAAS) services, namely, software for use by others for enabling drivers to find and rent parking spaces;
Rental of software, Hiring out data processing equipment; Rental of software, Rental of data processing equipment |
FINAL DESCRIPTION |
Design and development of computer hardware and software; Providing software as a service (SAAS) services, namely, software for use by
others for enabling drivers to find and rent parking spaces; Rental of software, Rental of data processing equipment |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
013480215 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
04/21/2015 |
SIGNATURE SECTION |
ORIGINAL PDF FILE |
HS_216129152132-141552977_._PARKPOCKET_signed_dec.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\881\172\88117295\xml5\ROA0005.JPG |
SIGNATORY'S NAME |
Sibylle Vetter |
SIGNATORY'S POSITION |
Head of Trademarks - Automotive Group |
RESPONSE SIGNATURE |
/rexadonnelly/ |
SIGNATORY'S NAME |
Rex A. Donnelly |
SIGNATORY'S POSITION |
Attorney of Record, DE Bar Member |
SIGNATORY'S PHONE NUMBER |
(302) 778-3460 |
DATE SIGNED |
04/12/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Apr 12 15:06:48 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.XXX
-20190412150648636445-881
17295-62088ad5b5b32ddf7f5
72bb535254b2dedcf5e67cc5e
3912bc6523a71fffb62e61-N/
A-N/A-2019041214155297736
1 |
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.
88117295 PARKPOCKET(Standard Characters, see http://uspto.report/TM/88117295/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Office objects to the priority claim because the EU registration certificate does not show ownership in the name of Applicant. Attached is a copy of a
current printout of the EUIPO database showing (a) that the Applicant is listed as the current owner, and (b) recordation of a transfer acknowledged by the EUIPO on March 16, 2018, which is prior to
the application date of the subject US application, listing the Applicant as the “Neuer Inhaber” (which translates to “New owner”).
The Office asserts a lack of clarity as to the standard characters claim because the U.S. application contains a standard character claim and the Office contends
the foreign registration does not. The same EUIPO printout attached hereto and referenced above also clearly indicates that the EU registration is a “Word mark.” Thus, applicant
respectfully submits that under the law of the country of origin, the foreign application or registration includes a claim that the mark is in standard characters (or the equivalent).
The Office refuses registration for alleged indefiniteness in the identification of goods and services. Applicant respectfully disagrees, but respectfully submits
that as amended to accept suggestions by the examiner attorney and/or to be consistent with acceptable entries in the USPTO ID Manual, the ID is now in condition for approved for publication.
Specifically, among the suggestions from the examiner in Class 9 was to limit “encoded cards” to “magnetically encoded key cards.” Applicant respectfully submits that encoded key cards
(Term ID 009-4492) is acceptable without further limitation. Similarly, the examiner suggested that “providing advertising space” should be limited to “providing advertising space on the
internet.” Applicant respectfully submits that the phrase “providing advertising space by electronic means and global computer information networks” should also be acceptable
(see Term ID 035-1421). Finally, in addition to accepting the Examiner’s suggestion in Class 41 regarding the service of providing electronic publications online, application has also added a term
using the format set forth in Term ID 041-1701.
For all of the foregoing reasons, Applicant respectfully requests withdrawal of the refusal to register.
EVIDENCE
Evidence in the nature of current printout of the EUIPO database showing ownership in the name of Applicant has been attached.
Original PDF file:
evi_216129152132-20190412141552977361_._Parkpocket_EUIPO_record.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, compact discs, DVDs and other digital recording media; Data processing
equipment, computers; Computer software; Computer programs and software for the recording, identification, locating, management, supplying and rental of parking spaces and car parks; Computer
programs and software for card readers; Navigation, orientation and mapping devices; Card reading equipment; Readers using electromagnetic waves for identification and locating purposes; Encoded
cards; Electronic publications (electronically downloadable) in connection with providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric
mobility and in connection with the business of providing information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management, service stations and charging
stations for electric mobility
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Apparatus for recording, transmission or reproduction of sound or images;
Magnetic data carriers, compact
discs, DVDs and other digital recording media;
prerecorded magnetic data carriers, compact discs, DVDs, and other digital prerecorded media devices, all
featuring information about parking;
Data processing equipment, computers;
Computer software;
Computer software for enabling drivers to find and rent parking spaces;
Computer programs and software for the recording, identification, locating, management,
supplying and rental of parking spaces and car parks;
Computer programs and software for card readers;
Computer programs
and software for operating card readers;
Navigation, orientation and mapping devices;
Navigation, orientation and mapping
devices, namely, GPS navigation devices;
Card reading equipment;
Readers using electromagnetic waves for identification and locating
purposes;
optical readers using electromagnetic waves for identification and locating purposes;
Encoded cards;
encoded key cards;
Electronic publications (electronically downloadable) in connection with providers, renters, leasers and
users of parking spaces, car parks, service stations and charging stations for electric mobility and in connection with the business of providing information regarding providers, renters, leasers and
users of parking spaces, car parks, traffic management, service stations and charging stations for electric mobility;
Electronic downloadable publications in
the nature of booklets for providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility, featuring information regarding providers,
renters, leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric mobilityClass 009 for Apparatus for recording, transmission or
reproduction of sound or images; prerecorded magnetic data carriers, compact discs, DVDs, and other digital prerecorded media devices, all featuring information about parking; Data processing
equipment, computers; Computer software for enabling drivers to find and rent parking spaces; Computer programs and software for the recording, identification, locating, management, supplying and
rental of parking spaces and car parks; Computer programs and software for operating card readers; Navigation, orientation and mapping devices, namely, GPS navigation devices; Card reading equipment;
optical readers using electromagnetic waves for identification and locating purposes; encoded key cards; Electronic downloadable publications in the nature of booklets for providers, renters, leasers
and users of parking spaces, car parks, service stations and charging stations for electric mobility, featuring information regarding providers, renters, leasers and users of parking spaces, car
parks, traffic management, service stations and charging stations for electric mobility
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising; Marketing and promotion services; On line advertising on a computer network; Providing advertising space, advertising sites and advertising media;
Collating, systematising and verification of electronic data in computer databases; Loyalty, incentive and bonus program services; Consumer consultancy by means of telecommunications networks for
advertising and sales purposes; Providing of names and addresses for advertising purposes
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Advertising;
Marketing and promotion services;
On line advertising on a computer network;
Providing advertising space, advertising sites and advertising media;
Providing advertising space by electronic means and global
information networks, providing advertising sites in the nature of provision of space on websites for advertising goods and services, and distribution of advertising media in the nature of
advertising materials;
Collating, systematising and verification of electronic data in computer databases;
Collating,
systematizing and maintenance of electronic data in computer databases;
Loyalty, incentive and bonus program services;
Loyalty, incentive and bonus program services, namely, administration of a consumer loyalty program to promote rental of parking spaces by others;
Consumer consultancy by means of telecommunications networks for advertising and sales purposes;
Consumer consultancy by means of telecommunications
networks for advertising and sales purposes, namely, providing commercial advice for consumers in the choice of products and services;
Providing of names and
addresses for advertising purposes;
providing business information regarding the names and addresses of others for advertising purposes;
Providing website portals on the internet featuring customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks for commercial
purposes;
Arranging of commercial rental and leasing contracts with regard to parking spaces and places to parkClass 035 for Advertising; Marketing and
promotion services; On line advertising on a computer network; Providing advertising space by electronic means and global information networks, providing advertising sites in the nature of provision
of space on websites for advertising goods and services, and distribution of advertising media in the nature of advertising materials; Collating, systematizing and maintenance of electronic data in
computer databases; Loyalty, incentive and bonus program services, namely, administration of a consumer loyalty program to promote rental of parking spaces by others; Consumer consultancy by means of
telecommunications networks for advertising and sales purposes, namely, providing commercial advice for consumers in the choice of products and services; providing business information regarding the
names and addresses of others for advertising purposes; Providing website portals on the internet featuring customer reviews in connection with providers, renters, leasers and users of parking spaces
and car parks for commercial purposes; Arranging of commercial rental and leasing contracts with regard to parking spaces and places to park
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Telecommunications; Internet based telecommunication services; Telecommunication gateway services; Access to content, websites and portals; Communication by hertzian
wave; Transmission of information on-line; Providing online forums and portals; Providing portals on the internet for the purpose of customer reviews in connection with providers, renters, leasers
and users of parking spaces and car parks
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Telecommunications;
Telecommunications services, namely, providing telecommunications connections
to a global computer network;
Internet based telecommunication services;
Internet based telecommunication services,
namely, providing telecommunications connections to the internet;
Telecommunication gateway services;
Access to content, websites and
portals;
Telecommunication access services to content, websites and internet website portals;
Communication by hertzian wave;
Transmission of information on-line;
Providing online forums and portals;
Providing online forums
for transmission of messages among computer users and providing telecommunication access services to internet website portals;
Providing portals on the internet
for the purpose of customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks;
Providing telecommunication access
services to website portals on the internet for the purpose of accessing customer reviews in connection with providers, renters, leasers and users of parking spaces and car parksClass 038 for
Telecommunications services, namely, providing telecommunications connections to a global computer network; Internet based telecommunication services, namely, providing telecommunications connections
to the internet; Telecommunication gateway services; Telecommunication access services to content, websites and internet website portals; Communication by hertzian wave; Transmission of information
on-line; Providing online forums for transmission of messages among computer users and providing telecommunication access services to internet website portals; Providing telecommunication access
services to website portals on the internet for the purpose of accessing customer reviews in connection with providers, renters, leasers and users of parking spaces and car parks
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or 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 Car parking and Vehicle storage; Provision of car parks and car parking services; Rental of parking spaces and car parks; Navigation services; Arranging of rental and
leasing contracts with regard to parking spaces and places to park; Providing non-downloadable information online in connection with providers, renters, leasers and users of parking spaces and car
parks
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Car parking and Vehicle storage;
Provision of car parks and car parking services;
Provision of car parks in the nature of car parking facilities and car parking services;
Rental of parking spaces and car parks;
Rental of parking spaces and car parks in the nature of car parking facilities;
Navigation services;
GPS navigation services;
Arranging of rental and leasing contracts with regard to parking spaces and places to park;
Providing non-downloadable information online in the field of car parking as it relates to providers, renters, leasers and users of parking spaces and car parks;
Providing non-downloadable information online in connection with providers, renters, leasers and users of parking spaces and car parksClass 039 for Car parking and Vehicle
storage; Provision of car parks in the nature of car parking facilities and car parking services; Rental of parking spaces and car parks in the nature of car parking facilities; GPS navigation
services; Providing non-downloadable information online in the field of car parking as it relates to providers, renters, leasers and users of parking spaces and car parks
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing electronic publications online (not downloadable) in connection with providers, renters, leasers and users of parking spaces, car parks, service stations and
charging stations for electric mobility and in connection with the business of providing information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management,
service stations and charging stations for electric mobility
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Providing electronic publications online (not downloadable) in connection with providers, renters, leasers and users of parking spaces,
car parks, service stations and charging stations for electric mobility and in connection with the business of providing information regarding providers, renters, leasers and users of parking spaces,
car parks, traffic management, service stations and charging stations for electric mobility;
Providing electronic non-downloadable publications online, namely,
newsletters for providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility, featuring information regarding providers, renters,
leasers and users of parking spaces, car parks, traffic management, service stations and charging stations for electric mobility;
Providing electronic
non-downloadable directory publications online in the field of car parking, featuring information regarding providers, renters, leasers and users of parking spaces, car parks, service stations and
charging stations for electric mobilityClass 041 for Providing electronic non-downloadable publications online, namely, newsletters for providers, renters, leasers and users of parking spaces,
car parks, service stations and charging stations for electric mobility, featuring information regarding providers, renters, leasers and users of parking spaces, car parks, traffic management,
service stations and charging stations for electric mobility; Providing electronic non-downloadable directory publications online in the field of car parking, featuring information regarding
providers, renters, leasers and users of parking spaces, car parks, service stations and charging stations for electric mobility
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design and development of computer hardware and software; Providing software as a service; Rental of software, Hiring out data processing equipment
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Proposed:
Tracked Text Description: Design and development of computer hardware and software;
Providing software as a service;
Providing software as a service (SAAS) services, namely, software for use by others for enabling drivers to find and rent parking spaces;
Rental of software, Hiring out data processing equipment;
Rental of software, Rental of data processing equipmentClass 042 for Design and
development of computer hardware and software; Providing software as a service (SAAS) services, namely, software for use by others for enabling drivers to find and rent parking spaces; Rental of
software, Rental of data processing equipment
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 013480215
registered 04/21/2015 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
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 on or 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 or services that meet the certification standards of the applicant.
SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_216129152132-141552977_._PARKPOCKET_signed_dec.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Sibylle Vetter
Signatory's Position: Head of Trademarks - Automotive Group
Response Signature
Signature: /rexadonnelly/ Date: 04/12/2019
Signatory's Name: Rex A. Donnelly
Signatory's Position: Attorney of Record, DE Bar Member
Signatory's Phone Number: (302) 778-3460
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently
filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in
this matter.
Serial Number: 88117295
Internet Transmission Date: Fri Apr 12 15:06:48 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190412150648
636445-88117295-62088ad5b5b32ddf7f572bb5
35254b2dedcf5e67cc5e3912bc6523a71fffb62e
61-N/A-N/A-20190412141552977361