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. 88290232 UBER TRANSIT(Standard Characters, see http://uspto.report/TM/88290232/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; software for accessing and viewing transit information, schedules, routes, and prices; software for comparing transportation costs; ticketing software; software for booking travel
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 software for calculating and displaying transit routes; software for accessing and viewing transit information, schedules, routes, and prices; downloadable software for accessing and viewing transit information, schedules, routes, and prices; software for comparing transportation costs; downloadable software for comparing transportation costs; ticketing software; downloadable ticketing software; software for booking travel; downloadable software for booking travel; downloadable software for travel route planning; downloadable software for navigation; downloadable software for purchasing and storing digital transit tickets and passes; downloadable software for scanning and creating QR codes and sending and reading near field communication (NFC) and radio frequency identification (RFID) signals; downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, booking, and dispatching transportation servicesClass 009 for Downloadable software for calculating and displaying transit routes; 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; downloadable software for travel route planning; downloadable software for navigation; downloadable software for purchasing and storing digital transit tickets and passes; downloadable software for scanning and creating QR codes and sending and reading near field communication (NFC) and radio frequency identification (RFID) signals; downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, booking, and dispatching transportation 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Telecommunications; telecommunications services, namely, routing calls, SMS messages, and push-notifications to travelers using mobile devices
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; Telecommunications, namely, providing e-mail notification alerts via the internet; telecommunications services, namely, routing calls, SMS messages, and push-notifications to travelers using mobile devicesClass 038 for Telecommunications, namely, providing e-mail notification alerts via the internet; telecommunications services, namely, routing calls, SMS messages, and push-notifications to travelers using mobile devices
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 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
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: Providing a website featuring information about transit; providing a website featuring information about transit, namely, information about transit booking, coordination, arrangement, ticketing, ridership, delays, and location; 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 ticketsClass 039 for Providing a website featuring information about transit; providing a website featuring information about transit, namely, information about transit booking, coordination, arrangement, ticketing, ridership, delays, and location; 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
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 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
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: Providing temporary use of online non-downloadable software; Providing temporary use of on-line non-downloadable software for calculating and displaying transit routes; 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; providing temporary use of on-line non-downloadable software for travel route planning; providing temporary use of on-line non-downloadable software for navigation; providing temporary use of on-line non-downloadable software for purchasing and storing transit tickets and passes; providing temporary use of on-line non-downloadable software for scanning and creating QR codes and sending and reading near field communication (NFC) and radio frequency identification (RFID) signals; providing temporary use of online non-downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, booking, and dispatching transportation servicesClass 042 for Providing temporary use of on-line non-downloadable software for calculating and displaying transit routes; 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; providing temporary use of on-line non-downloadable software for travel route planning; providing temporary use of on-line non-downloadable software for navigation; providing temporary use of on-line non-downloadable software for purchasing and storing transit tickets and passes; providing temporary use of on-line non-downloadable software for scanning and creating QR codes and sending and reading near field communication (NFC) and radio frequency identification (RFID) signals; providing temporary use of online non-downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, booking, and dispatching transportation 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 ST., 4TH FLOOR
      SAN FRANCISCO, California 94103
      US

The email address is tmprosecution@uber.com

The applicants proposed attorney information: Raphael A. Gutierrez. Other appointed attorneys are Stephen Garcia. Raphael A. Gutierrez of Uber Technologies Inc., 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

Raphael A. Gutierrez 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 ST., 4TH FLOOR
      SAN FRANCISCO, California 94103
      US

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

The applicants proposed correspondence information: Raphael A. Gutierrez. Raphael A. Gutierrez of Uber Technologies Inc., is located at

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

The email address is tmprosecution@uber.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Stephen Garcia/     Date: 09/04/2019
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 not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    STEPHEN GARCIA
   
   
   1455 MARKET ST., 4TH FLOOR
   SAN FRANCISCO, California 94103
Mailing Address:    Raphael A. Gutierrez
   Uber Technologies Inc.
   1455 Market Street, 4th Floor
   San Francisco, California 94103
        
Serial Number: 88290232
Internet Transmission Date: Wed Sep 04 16:37:10 EDT 2019
TEAS Stamp: USPTO/RFR-X.XX.XXX.XXX-20190904163710661
856-88290232-610e71d79a0d6858d1b038a09e5
192b12b9a7da45ea2610f0cee5a3913a16f9ab-N
/A-N/A-20190904160729124575