To: | Uber Technologies, Inc. (tmprosecution@uber.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88290232 - UBER TRANSIT - N/A |
Sent: | 4/22/2019 7:45:09 AM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88290232
MARK: UBER TRANSIT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Uber Technologies, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/22/2019
A review of the merits of the application and a search of the Office’s database of registered and pending marks for potentially conflicting marksare both deferred until applicant responds to the issues raised in this Office action. TMEP §704.02.
IDENTIFICATION OF GOODS AND SERVICES
In addition, software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software. For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual.
The wording “telecommunications” in the identification of goods for International Class 9 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass “telecommunications cables” in International Class 9 and “telecommunications, namely, telecommunications consultation” in International Class 38.
The wording “telecommunications services, namely, routing calls, SMS messages, and push-notifications to travelers using mobile devices” is classified incorrectly. Applicant must amend the application to classify the services in International Class 38. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
The wording “providing a website featuring information about transit,” “providing a website featuring information about transit schedules, routes, and prices,” and “providing a website featuring information about transportation costs; providing a website featuring information about transit tickets” is classified incorrectly. Applicant must amend the application to classify the services in International Class 39. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
The wording “providing temporary use of online non-downloadable software for accessing and viewing transit information, schedules, routes, and prices,” “providing temporary use of online non-downloadable software for comparing transportation costs,” “providing temporary use of online non-downloadable software for ticketing,” and “providing temporary use of online non-downloadable software for booking travel” is classified incorrectly. Applicant must amend the application to classify the services in International Class 42. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
The wording “providing temporary use of online non-downloadable software” is classified incorrectly. Applicant must amend the application to classify the services in International Class 42. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Further, the wording is indefinite and must be clarified because the specific nature of the services is unclear on the basis of the wording provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
International Class 9:
Downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for
word processing, etc. and, if software is content or field-specific, the content or field of use}; downloadable software for accessing and viewing transit information,
schedules, routes, and prices; downloadable software for comparing transportation costs; downloadable ticketing software; downloadable
software for booking travel; telecommunications {applicant to specify nature of goods, e.g., cables, exchangers, etc.}; telecommunications services, namely, routing calls, SMS
messages, and push-notifications to travelers using mobile devices; Providing a website featuring information about transit; providing a website featuring information about transit schedules, routes,
and prices; providing a website featuring information about transportation costs; providing a website featuring information about transit tickets; Providing temporary use of online non-downloadable
software; providing temporary use of online non-downloadable software for accessing and viewing transit information, schedules, routes, and prices; providing temporary use of online non-downloadable
software for comparing transportation costs; providing temporary use of online non-downloadable software for ticketing; providing temporary use of online non-downloadable software for booking
travel
International Class 38:
Telecommunications, namely, {applicant to specify nature of services, e.g., telecommunications consultation, transfer of data by telecommunications, etc.}; telecommunications services, namely, routing calls, SMS messages, and push-notifications to travelers using mobile devices
International Class 39:
Providing a website featuring information about transit; providing a website featuring information about transit schedules, routes, and prices; providing a website featuring information about transportation costs; providing a website featuring information about transit tickets
International Class 41:
Providing temporary use of non-downloadable game software
International Class 42:
Providing temporary use of on-line non-downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content or field-specific, the content or field of use}; providing temporary use of online non-downloadable software for accessing and viewing transit information, schedules, routes, and prices; providing temporary use of online non-downloadable software for comparing transportation costs; providing temporary use of online non-downloadable software for ticketing; providing temporary use of online non-downloadable software for booking travel
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Amanda Galbo/
Amanda Galbo
Trademark Examining Attorney
Law Office 125
(571) 272-5391
amanda.galbo@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.