TEAS Request Reconsideration after FOA

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88286577 RIDECHECK(Standard Characters, see http://uspto.report/TM/88286577/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 009 for Software; computer software for detecting trip delays, vehicle location, and trip anomalies; computer software for safety and incident detection; computer software for emergency assistance; computer software that enables customers to communicate with others; computer software that monitors and analyzes data to detect trip irregularities; emergency notification system software; emergency notification system software for providing alerts, push-notifications, and other remote notifications to users and emergency response entities; emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; computer software for accessing GPS and motion sensor data for safety and emergency response purposes
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: Software; Downloadable computer software for detecting trip delays, vehicle location, and trip anomalies; computer software for detecting trip delays, vehicle location, and trip anomalies; downloadable computer software for safety and incident detection; computer software for safety and incident detection; downloadable computer software for requesting and managing emergency assistance; computer software for emergency assistance; downloadable computer software for providing access to global communication networks, the internet, and wireless networks that enables customers to communicate with others; computer software that enables customers to communicate with others; downloadable computer software that monitors and analyzes data to detect trip irregularities; computer software that monitors and analyzes data to detect trip irregularities; downloadable emergency notification system software; emergency notification system software; downloadable emergency notification system software for providing alerts, push-notifications, and other remote notifications to users and emergency response entities; emergency notification system software for providing alerts, push-notifications, and other remote notifications to users and emergency response entities; downloadable emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; downloadable computer software for accessing GPS and motion sensor data for safety and emergency response purposes; computer software for accessing GPS and motion sensor data for safety and emergency response purposesClass 009 for Downloadable computer software for detecting trip delays, vehicle location, and trip anomalies; downloadable computer software for safety and incident detection; downloadable computer software for requesting and managing emergency assistance; downloadable computer software for providing access to global communication networks, the internet, and wireless networks that enables customers to communicate with others; downloadable computer software that monitors and analyzes data to detect trip irregularities; downloadable emergency notification system software; downloadable emergency notification system software for providing alerts, push-notifications, and other remote notifications to users and emergency response entities; downloadable emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; downloadable computer software for accessing GPS and motion sensor data for safety and emergency response purposes
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 038 for Telecommunications; telecommunication services, namely, providing electronic message alerts via the internet; telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of the detection of anomalies in vehicle and trip activity; telecommunications services, namely, routing calls, SMS messages, text messages, and push-notifications to customers; telecommunications services, namely, routing calls, SMS messages, text messages, and push-notifications to local third-party motorized vehicle operators, couriers, messengers, and passengers using mobile phones; telecommunication services, namely, providing electronic message alerts; telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of a changed status or condition in vehicle trip activity
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; Telecommunication services, namely, providing electronic message alerts via the internet; telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of the detection of anomalies in vehicle and trip activity; telecommunications services, namely, routing calls, SMS messages, text messages, and push-notifications to customers; telecommunications services, namely, routing calls, SMS messages, text messages, and push-notifications to local third-party motorized vehicle operators, couriers, messengers, and passengers using mobile phones; telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of a changed status or condition in vehicle trip activity; telecommunication services, namely, providing electronic message alertsClass 038 for Telecommunication services, namely, providing electronic message alerts via the internet; telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of the detection of anomalies in vehicle and trip activity; telecommunications services, namely, routing calls, SMS messages, text messages, and push-notifications to customers; telecommunications services, namely, routing calls, SMS messages, text messages, and push-notifications to local third-party motorized vehicle operators, couriers, messengers, and passengers using mobile phones; telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of a changed status or condition in vehicle trip activity
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; travel arrangement; travel assistance services, namely, providing information about emergency services for people in transit
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; Transport of persons and goods; travel arrangement; travel arrangement, namely, coordinating travel arrangements for individuals and for groups; travel assistance services, namely, providing information about emergency services for people in transitClass 039 for Transport of persons and goods; travel arrangement, namely, coordinating travel arrangements for individuals and for groups
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 042 for Electronic monitoring and reporting of data related to trip delays, vehicle location, and trip anomalies, using computers or sensors; providing a website with information about safety and emergency 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.

Proposed:
Tracked Text Description: Electronic monitoring and reporting of data related to trip delays, vehicle location, and trip anomalies, using computers or sensors; providing a website with information about safety and emergency services; providing temporary use of on-line non-downloadable computer software for detecting trip delays, vehicle location, and trip anomalies; providing temporary use of on-line non-downloadable computer software for safety and incident detection; providing temporary use of on-line non-downloadable computer software for emergency assistance; providing temporary use of on-line non-downloadable computer software that enables customers to communicate with others; providing temporary use of on-line non-downloadable computer software that monitors and analyzes data to detect trip irregularities; providing temporary use of on-line non-downloadable emergency notification system software; providing temporary use of on-line non-downloadable emergency notification system software for providing alerts, push-notifications, and other remote notifications to users and emergency response entities; providing temporary use of on-line non-downloadable emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; providing temporary use of on-line non-downloadable computer software for accessing GPS and motion sensor data for safety and emergency response purposesClass 042 for Electronic monitoring and reporting of data related to trip delays, vehicle location, and trip anomalies, using computers or sensors; providing temporary use of on-line non-downloadable computer software for detecting trip delays, vehicle location, and trip anomalies; providing temporary use of on-line non-downloadable computer software for safety and incident detection; providing temporary use of on-line non-downloadable computer software for emergency assistance; providing temporary use of on-line non-downloadable computer software that enables customers to communicate with others; providing temporary use of on-line non-downloadable computer software that monitors and analyzes data to detect trip irregularities; providing temporary use of on-line non-downloadable emergency notification system software; providing temporary use of on-line non-downloadable emergency notification system software for providing alerts, push-notifications, and other remote notifications to users and emergency response entities; providing temporary use of on-line non-downloadable emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; providing temporary use of on-line non-downloadable computer software for accessing GPS and motion sensor data for safety and emergency response purposes
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 045 for Security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals; monitoring trip activity, vehicle location, and other data for safety and emergency response purposes; providing a website featuring information about options to maintain personal safety in the event of a detected trip irregularity; monitoring of mobile devices by a remote monitoring center for assisting in the dispatch of emergency public health and security services and notification to third parties; monitoring of mobile devices by a remote monitoring center to provide urgent personal support services to others
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: Security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals; personal and social services rendered by others to meet the needs of individuals, namely, emergency response services in the field of deploying emergency assistance and facilitating communication between users and emergency support responders; monitoring trip activity, vehicle location, and other data for safety and emergency response purposes; monitoring trip activity and vehicle location for personal safety and emergency response purposes; providing a website featuring information about options to maintain personal safety in the event of a detected trip irregularity; monitoring of mobile devices by a remote monitoring center for assisting in the dispatch of emergency public health and security services and notification to third parties; emergency response monitoring assistance services, namely, monitoring of mobile devices by a remote monitoring center for assisting in the dispatch of emergency public health and security services and notification to third parties; monitoring of mobile devices by a remote monitoring center to provide urgent personal support services to others; monitoring of mobile devices by a remote monitoring center to provide urgent personal security and safety support services to others; travel assistance services, namely, providing information about emergency response services for people in transit; providing a website with information about personal safety and emergency response servicesClass 045 for Security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals, namely, emergency response services in the field of deploying emergency assistance and facilitating communication between users and emergency support responders; monitoring trip activity and vehicle location for personal safety and emergency response purposes; providing a website featuring information about options to maintain personal safety in the event of a detected trip irregularity; emergency response monitoring assistance services, namely, monitoring of mobile devices by a remote monitoring center for assisting in the dispatch of emergency public health and security services and notification to third parties; monitoring of mobile devices by a remote monitoring center to provide urgent personal security and safety support services to others; travel assistance services, namely, providing information about emergency response services for people in transit; providing a website with information about personal safety and emergency response services
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 email address is tmprosecution@uber.com

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: STEPHEN GARCIA. STEPHEN GARCIA, is located at

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

The email address is tmprosecution@uber.com; ubertrademarkdocketing@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)
Request for Reconsideration 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.

The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    STEPHEN GARCIA
   
   
   1455 MARKET STREET, 4TH FLOOR
   SAN FRANCISCO, California 94103
Mailing Address:    Stephen Garcia
   1455 Market Street, 4th Floor
   San Francisco, California 94103
        
Serial Number: 88286577
Internet Transmission Date: Thu Oct 03 17:12:52 EDT 2019
TEAS Stamp: USPTO/RFR-XX.X.XX.XXX-201910031712521670
12-88286577-610be30b246a0b492926d837c3d0
b5cbf34ce41f335f9f4aa3e669c120298cb54b-N
/A-N/A-20191003161651876090