To: | Uber Technologies, Inc. (tmprosecution@uber.com) |
Subject: | U.S. Trademark Application Serial No. 88290232 - UBER TRANSIT - N/A |
Sent: | August 08, 2019 09:32:16 PM |
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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Correspondence Address:
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Applicant: Uber Technologies, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: August 08, 2019
This Office action is in response to applicant’s communication filed on July 18, 2019.
In a previous Office action dated April 22, 2019, applicant was required to satisfy the following requirements: amend the identification of goods and services, meet all multiple-class application requirements.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
All arguments and evidence included in the April 22, 2019 Office action are incorporated herein by reference.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
IDENTIFICATION OF GOODS AND SERVICES – FINAL
International Class 9
The identification for software in International Class 9 is indefinite and must be clarified to specify the purpose or function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, applicant must also specify its content or field of use. See TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
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.
International Class 38
The wording “telecommunications” in the identification of goods for International Class 38 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 reseller services, namely, telecommunications air time brokerage services” in International Class 36, and “telecommunications, namely, telecommunications consultation” in International Class 38, and “telecommunications technology consultancy” in International Class 42.
International Class 42
The wording “providing temporary use of online non-downloadable software” 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
International Class 36:
Telecommunications reseller services, namely, telecommunications air time brokerage services
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 41:
Providing temporary use of non-downloadable game software
International Class 42:
Providing temporary use of online 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; telecommunications technology consultancy
International Class 39 is acceptable as written.
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 – FINAL
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.
ASSISTANCE
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Amanda Galbo/
Amanda Galbo
Trademark Examining Attorney
Law Office 125
(571) 272-5391
amanda.galbo@uspto.gov
RESPONSE GUIDANCE