Offc Action Outgoing

UBER

Uber Technologies, Inc.

U.S. TRADEMARK APPLICATION NO. 88328871 - UBER - N/A

To: Uber Technologies, Inc. (tmprosecution@uber.com)
Subject: U.S. TRADEMARK APPLICATION NO. 88328871 - UBER - N/A
Sent: 4/22/2019 7:43:36 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.  88328871

 

MARK: UBER

 

 

        

*88328871*

CORRESPONDENT ADDRESS:

       STEPHEN GARCIA

       1455 MARKET ST., 4TH FLOOR

       SAN FRANCISCO, CA 94103

       

       

 

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.gov.uspto.report/trademarks/teas/response_forms.jsp

 

VIEW YOUR APPLICATION FILE

 

APPLICANT: Uber Technologies, Inc.

 

 

 

CORRESPONDENT’S REFERENCE/DOCKET NO:  

       N/A

CORRESPONDENT E-MAIL ADDRESS: 

       tmprosecution@uber.com

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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

 

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.

 

The wording “downloadable publications, namely, tech reports and research papers in the field of machine learning” in the identification of International Class 9 goods is indefinite and must be clarified because the specific nature of the goods is unclear on the basis of the wording provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

International Class 12

 

The wording “apparatus for locomotion by land, air or water” in the identification of International Class 12 goods is indefinite and must be clarified because the specific nature of the goods is unclear on the basis of the wording provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “vehicles” in the identification of goods for International Class 16 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “land vehicles” in International Class 12 and “toy vehicles” in International Class 28.

 

International Class 16

 

The wording “printed matter; photographs,” “stationery and office requisites, except furniture,” and “instructional and teaching materials” in the identification of International Class 16 goods is indefinite and must be clarified because the specific nature of the goods is unclear on the basis of the wording provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “drawing materials and materials for artists” in the identification of goods for International Class 16 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “materials for artists in the nature of paints for arts and crafts” in International Class 2 and “drawing materials in the nature of drawing materials for blackboards, drawing templates, and drawing pens and materials for artists in the nature of art pads, canvas for painting, and easels” in International Class 16.

 

International Class 35

 

The wording “arranging and conducting incentive rewards programs; arranging and providing discount programs to customers,” “discount programs,” “issuance and processing of loyalty points; job postings; loyalty programs; membership rewards programs,” “monitoring, managing, and tracking of transportation of persons and delivery of goods and packages in transit, for business purposes,” “monitoring, managing, and tracking of conveyances in transit, for business purposes,” “office functions,” “providing a website featuring information about fuel tax and fuel reporting,” “providing an incentive reward program for customers, namely, a discount program that enables participants to obtain discounts on the cost of goods and services or receive improved goods and services through use of a membership card,” “providing an incentive reward program for freight carriers, namely, a discount program that enables participants to obtain discounts on the cost of goods and services or receive improved goods and services through use of a membership card,” “providing consumer information,” “providing rewards programs for customers,” “providing, arranging, and conducting discount programs,” and “staffing, recruiting, matching, and placement services” in the identification of International Class 35 services 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. 

 

The wording “providing a website featuring information about transportation management services, namely, peer-to-peer vehicle sharing and rental services and about planning, coordinating, and tracking the transportation of people and conveyances,” “transportation management services for others, namely, planning, coordinating, and tracking the transportation of people and conveyances” and “transportation management services, namely, planning, coordinating, and tracking the transportation of people and conveyances” 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 “business services” in the identification of services for International Class 35 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 “business risk assessment services” in International Class 35, “business finance procurement” in International Class 36, and “business training consultancy services” in International Class 41.  

 

The wording “providing a website” in the identification of services for International Class 35 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 “providing a website featuring recommendations, ratings and reviews posted by consumers about local service providers in the field of transportation for commercial purposes” in International Class 35, “providing a website featuring information in the field of transportation” in International Class 39, “providing a website featuring non-downloadable articles in the field of travel” in International Class 41, and “providing a website featuring on-line non-downloadable software that enables users to request transportation” in International Class 42.

 

The wording “providing information” in the identification of services for International Class 35 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 “providing career information” in International Class 35, “providing financial information” in International Class 36, and “providing information about travel, via the Internet” in International Class 39.

 

International Class 36

 

The wording “insurance,” “financial affairs,” “real estate affairs,” “financial services,” “monetary affairs,” “monetary services,” “financial processing services,” “monetary processing services,” “payment services,” “transaction services,” “funds transfer services,” and “redeeming the vouchers of others for payment” in the identification of International Class 36 services 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. 

 

The wording “accounts services” in the identification of services for International Class 36 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 “accounts services being accountancy” in International Class 35, “accounts services, namely, individual retirement account services” in International Class 36.

 

The wording “brokerage services” in the identification of services for International Class 36 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 “brokerage services, namely, commodity brokerage” in International Class 36 and “brokerage services, namely, transport brokerage” in International Class 39.

 

Applicant is advised to delete or modify the duplicate entry in the identification of services in International Class 36 for “insurance” and “real estate affairs.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.  If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted services may not later be reinserted.  TMEP §1402.07(e).

 

International Class 38

 

The wording “telecommunications,” “telecommunications services, namely, push notifications to renters of vehicles,” and “telecommunication services, namely, providing electronic message alerts” in the identification of International Class 38 services 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. 

 

International Class 39

 

The wording “packaging and storage of goods,” “delivery services,” “packaging and storage of goods,” “transport and delivery of goods,” and “travel arrangement” in the identification of International Class 39 services 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. 

 

The wording “transport” in the identification of services for International Class 39 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 “transport in the nature of transportation logistics services, namely, arranging the transportation of goods for others” in International Class 35 and “transport of persons and goods” in International Class 39.  

 

The wording “frequent traveler programs” is classified incorrectly.  Applicant must amend the application to classify the services in International Class 35.  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 is advised to delete or modify the duplicate entry in the identification of services in International Class 39 for “transport.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.  If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted services may not later be reinserted.  TMEP §1402.07(e).

 

International Class 42

 

The wording “scientific and technological services and research and design relating thereto,” “industrial analysis and industrial research services,” “design and development of computer hardware and software,” “design and development of open source software,” “cloud computing,” “providing temporary use of non-downloadable software,” “providing temporary use of non-downloadable software for analyzing transportation and deliveries,” “providing temporary use of non-downloadable software for analyzing transportation and deliveries for employees and customers,” “providing temporary use of non-downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, and booking transportation and deliveries,” “providing temporary use of non-downloadable software for arranging, scheduling, managing, and coordinating transportation and deliveries for employees and customers,” and “providing temporary use of online non-downloadable software for use by motorized vehicle operators and passengers and potential passengers” “research and development in the field of machine learning,” and “software-as-a-service (SaaS)” in the identification of International Class 42 services 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. 

 

The wording “providing a website featuring information about discount and rewards programs” is classified incorrectly.  Applicant must amend the application to classify the services in International Class 35.  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,” “providing a website featuring information about transportation costs,” and “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 a website featuring information about options to maintain personal safety in the event of a detected trip irregularity” is classified incorrectly.  Applicant must amend the application to classify the services in International Class 45.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The wording “providing a website with information about safety and emergency services” is classified incorrectly.  Applicant must amend the application to classify the services in International Class 45.  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 is advised to delete or modify the duplicate entry in the identification of services in International Class 42 for “scientific and technological services and research and design relating thereto”. Further, the wording “providing a website” is in the identification of services for International Class 35 and International Class 42.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.  If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted services may not later be reinserted.  TMEP §1402.07(e).

 

International Class 45

 

The wording “monitoring trip activity, vehicle location, and other data for safety and emergency response purposes,” “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,” and “monitoring of mobile devices by a remote monitoring center to provide urgent personal support services to others” in the identification of International Class 45 services 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. 

 

The wording “personal and social services rendered by others to meet the needs of individuals” in the identification of services for International Class 45 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 “personal and social services rendered by others to meet the needs of individuals, namely, entertainment services in the nature of organizing social entertainment events” in International Class 41, “personal and social services rendered by others to meet the needs of individuals, namely, music therapy for social assimilation purposes” in International Class 44,  and “personal and social services rendered by others to meet the needs of individuals, namely, personal concierge services for others comprising making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes” in International Class 45.

 

Applicant may substitute the following wording, if accurate:

 

International Class 2:

 

Materials for artists in the nature of paints for arts and crafts

 

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 computer software, namely, software for machine learning; downloadable webinars, tutorial sessions and seminars in the field of machine learning; electronic downloadable publications, namely, tech reports and research papers in the field of machine learning; downloadable software for analyzing transportation and deliveries; downloadable software for analyzing transportation and deliveries for employees and customers; downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, and booking transportation and deliveries; downloadable software for arranging, scheduling, coordinating, and managing transportation for employees and customers; downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, and booking high capacity vehicle (HCV) transportation; downloadable computer software for receiving and responding to requests for transportation; downloadable software for navigation; software for renting bicycles, electric bicycles, electric assist bicycles, pedal assist bicycles, and motorized scooters; downloadable software for accessing bicycle, electric bicycle, electric assist bicycle, pedal assist bicycle, and motorized scooter sharing services; downloadable software for renting conveyances; downloadable software for coordinating transportation services; downloadable software for coordination of delivery services; downloadable software for accessing peer-to-peer vehicle sharing and rental services; downloadable software for renting vehicles; downloadable software for accessing vehicle sharing and rental services; downloadable computer software for engaging and coordinating transportation and delivery services; downloadable computer software for coordinating transportation services, namely, software for the automated scheduling and dispatch of motorized vehicles; downloadable computer software for use by motorized vehicle operators and passengers and potential passengers for arranging and managing ridesharing; downloadable computer software for accessing ridesharing services; downloadable computer software for detecting trip delays, vehicle location, and trip anomalies; downloadable computer software for safety and incident detection; downloadable computer software for {applicant to specify function, e.g., requesting, managing, etc.} emergency assistance; downloadable computer software for {applicant to specify function, e.g., for providing access to the Internet, connecting computer network users, etc.} 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; magnetically encoded debit cards; downloadable software for accessing and viewing transit information, schedules, routes, and prices; software for comparing transportation costs; downloadable ticketing software; downloadable software for booking travel; downloadable software for managing and tracking vehicles, fleets of vehicles, and vehicle drivers; downloadable software for performing safety checks of vehicles, fleets of vehicles, and vehicle drivers; downloadable real-time map software for tracking vehicles, deliveries, and people; real-time map software for tracking vehicles, fleets of vehicles, and vehicle drivers; downloadable real-time map software for tracking vehicles, employees, and customers during trips; downloadable software for tracking number of trips, vehicle and driver hours, and driver earnings; downloadable software for matching vehicle owners with vehicle drivers; downloadable software for accessing a marketplace of available vehicles and vehicle drivers; downloadable software for searching for and contacting vehicle drivers and vehicle owners; downloadable software for business and employee expense accounting, analyzation, and reporting; downloadable software for voucher redemption; open source downloadable computer 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}

 

International Class 12:

 

{Applicant to specify, e.g., land, all-terrain, self-driving transport, etc.} vehicles; locomotives being apparatus for locomotion by land, air or water; bicycles; electric bicycles; electric assist bicycles; pedal assist bicycles

 

International Class 16:

 

Paper and cardboard; printed matter, namely, {applicant to specify, e.g., newspapers, photographs, magazines, books, printed periodicals, etc.} in the field of {specify subject matter, e.g., transportation, art, science, etc.}; photographs; stationery and office requisites, except furniture, namely, {applicant to specify, e.g., staplers, rubber bands, franking machines, etc.}; drawing materials in the nature of {applicant to specify, e.g., drawing materials for blackboards, drawing templates, drawing pens, etc.} and materials for artists in the nature of {applicant to specify, e.g., art pads, canvas for painting, easels, etc.}; printed instructional and teaching materials in the field of {specify subject matter, e.g., transportation, art, science, etc.}; plastic sheets, films and bags for wrapping and packaging; printed publications, namely, research papers in the field of machine learning

 

International Class 28:

 

Toy vehicles

 

International Class 35:

 

Accounting services; advertising, marketing, and promotional services; arranging and conducting an incentive rewards program to promote the sale of fuel, vehicles, vehicle maintenance services, and telecommunications services; arranging and conducting incentive rewards programs to promote the sale of {indicate goods or services that are the subject matter of the reward program, e.g., food, clothing, electronics, etc.}; arranging and providing discount programs that enables customers to obtain discounts on goods and services; arranging and providing discount programs to customers to obtain discounts on goods and receive improved services; business administration and management services; business consulting services in the field of transportation of persons and delivery of goods and packages; business consulting services in the field of transportation, freight and delivery; business {applicant to specify, e.g., efficiency expert, risk assessment, etc.} services; discount programs, namely, {applicant to specify, e.g., administration of a discount program for enabling participants to obtain discounts on goods and services through use of a discount membership card, etc.}; issuance and processing of loyalty points, namely, providing incentive award programs through issuance and processing of loyalty points for purchase of a company's goods and services; providing on-line employment information in the field of job postings; business administration of consumer loyalty programs; marketing; membership rewards cards, namely, promoting the goods and services of others by means of the issuance of loyalty rewards cards; membership rewards programs in the nature of consumer loyalty services for commercial, promotional, and/or advertising purposes, namely, administration of frequent flyer program that allows members to redeem miles for points or awards offered by other loyalty programs; monitoring, managing, and tracking of transportation of persons and delivery of goods and packages in transit to ensure on-time arrival, for business purposes; monitoring, managing, and tracking of conveyances in transit to ensure on-time arrival, for business purposes; providing office functions; personnel recruitment and placement; promotion services; providing a website featuring recommendations, ratings and reviews posted by consumers about local service providers in the field of transportation for commercial purposes; providing a website featuring information about a discount and rewards program for customers; providing a website featuring information about a discount and rewards program for freight carriers; providing a website featuring information about discount and rewards programs; providing a website featuring information about fuel tax and fuel reporting being commercial financial transaction data; providing a website featuring information about transportation management services, namely, peer-to-peer vehicle sharing and rental services and about planning, coordinating, and tracking the transportation of people and conveyances; providing a website featuring information in the fields of consumer-to-business commerce and business-to-business commerce via a web-based portal; providing an incentive reward program for customers, namely, administration of a discount program that enables participants to obtain discounts on the cost of goods and services or receive improved goods and services through use of a membership card; providing an incentive reward program for freight carriers, namely, administration of a discount program that enables participants to obtain discounts on the cost of goods and services or receive improved goods and services through use of a membership card; providing consumer information in the field of {indicate goods, services or subject matter of information, e.g., transportation, food, etc.}; providing career information; providing rewards programs for customers, namely, providing incentive award programs for customers and employees through the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty; providing, arranging, and conducting discount programs for enabling participants to obtain discounts on the cost of services or receive improved services through use of a membership card; professional staffing, recruiting, matching consumers with professionals in the field of {specify, e.g., real estate, home repair, etc.}, and job placement services; transportation management services for others, namely, planning, coordinating, and tracking the transportation of people and conveyances; transportation management services, namely, planning, coordinating, and tracking the transportation of people and conveyances; providing pay statements being preparation of financial statements; administration of customer loyalty programs and incentive award programs that provide vouchers for others; accounts services being accountancy; transport in the nature of transportation logistics services, namely, arranging the transportation of goods for others; business administration of frequent traveler programs

 

International Class 36:

 

Insurance {applicant to specify, e.g., brokerage, administration, consultancy, etc.}; financial affairs, namely, financial information, management and analysis services; real estate affairs, namely, {applicant to specify, e.g., real estate agency services, real estate brokerage, real estate management services, etc.}; financial services, namely, {applicant to specify, e.g., financial analysis and research services, money lending, gold trading, etc.}; monetary affairs, namely, financial information, management and analysis services; monetary services, namely, financial information, management and analysis services; financial information processing services; monetary processing services, namely, {applicant to specify, e.g., check processing, charge card and credit card payment processing services, tax payment processing services, etc.}; payment services, namely, {applicant to specify, e.g., charge card and credit card payment processing services, tax payment processing services, cryptocurrency payment processing, etc.}; credit and loan services; transaction services, namely, {applicant to specify, e.g., electronic cash transactions, cash and foreign exchange transactions, credit card transaction processing services, etc.}; electronic funds transfer services; accounts services, namely, {applicant to specify, e.g., individual retirement account services, trust management accounts, savings account services, etc.}; insurance; real estate affairs; brokerage services, namely, {applicant to specify e.g., commodity brokerage, insurance brokerage, brokerage of bonds, etc.}; redeeming the vouchers of others for payment of goods or services; business finance procurement services; providing financial information   

 

International Class 38:

 

Telecommunications, namely, {applicant to specify nature of services, e.g., telecommunications consultation, transfer of data by telecommunications, etc.}; telecommunications services, namely, providing push notifications alerts via the Internet to renters of vehicles; telecommunications services, namely, routing calls, SMS messages, and push-notifications; telecommunications services, namely, routing calls, SMS messages, and push-notifications to passengers and motorized vehicle operators using mobile devices; telecommunications services, namely, routing calls, SMS messages, and push-notifications between parties using mobile phones, tablets and other devices capable of receiving such messages and notifications; 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; telecommunications services, namely, routing calls, SMS messages, and push-notifications to travelers using mobile devices; telecommunications services, namely, routing and sending text messages 

 

International Class 39:

 

Transport of persons and goods; packaging and storage of goods in the nature of {applicant to specify, e.g., goods, food, machine tools, valuables, etc.}; conveyance rental and sharing services, namely, arranging and coordinating peer-to-peer vehicle sharing and rental services; coordinating travel arrangements for individuals and for groups; delivery services by air, road, rail and sea; frequent traveler programs; packaging and storage of goods in the nature of {specify, e.g., goods, food, machine tools, valuables, etc.}; providing a website featuring information about transport arrangement for travelers and about conveyance rental and sharing services; providing a website featuring information in the field of transportation; providing a website featuring information in the field of transportation and vehicle moving services; providing a website featuring information regarding delivery services and bookings for delivery services; providing a website featuring information regarding transportation services and bookings for transportation services; providing a website featuring information regarding travel arrangement; providing a website featuring information related with transportation services, traffic and travel times; providing information concerning collection, tracking and delivery of goods in transit; providing information relating to the planning and booking of travel and transport, via electronic means; providing information relating to traffic and traffic congestion; provision of road and traffic information; transport; transport and delivery of goods in the nature of {specify, e.g., goods, food, machine tools, valuables, etc.}; transportation and delivery services, namely, monitoring, managing, and tracking of transportation of persons and delivery of goods and packages; monitoring, managing, and tracking of conveyances in transit; transportation of passengers and goods; travel arrangement, namely, coordinating travel arrangements for individuals and for groups; travel arrangement, namely, transport arrangement for travelers; bicycle, electric bicycle, electric assist bicycle, and pedal assist bicycle rental and sharing services; conveyance rental and sharing services; vehicle rental services; vehicle sharing services, namely, arranging and coordinating temporary use of vehicles; travel assistance services, namely, providing information about emergency services for people in transit; providing information about transportation and travel; brokerage services, namely, transport brokerage; transportation management services for others, namely, planning, coordinating, and tracking the transportation of people and conveyances; transportation management services, namely, planning, coordinating, and tracking the transportation of people and conveyances; providing a website featuring information about transportation management services, namely, peer-to-peer vehicle sharing and rental services and about planning, coordinating, and tracking the transportation of people and conveyances; providing a website featuring information in the field of transportation; providing information about travel, via the Internet; 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; personal and social services rendered by others to meet the needs of individuals, namely, entertainment services in the nature of organizing social entertainment events; business training consultancy services; providing a website featuring non-downloadable articles in the field of travel

 

International Class 42:

 

Scientific and technological services, namely, {specify type of services, e.g., scientific research, analysis, testing, etc.} in the field of {indicate field or subject matter, e.g., information technology, anatomy, etc.} and research and design relating thereto; industrial analysis being analysis of {indicate goods or services of others, e.g., vehicles, electronics, etc.} to assure compliance with industry standards and industrial research services in the field of {indicate field or goods that are subject of research, e.g., vehicles, hardware, etc.}; design and development of computer hardware and software; design and development of open source software; providing virtual computer systems and virtual computer environments through cloud computing; providing a website; providing a website featuring information about discount and rewards programs; 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 spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; providing temporary use of online non-downloadable software for analyzing transportation and deliveries; providing temporary use of online non-downloadable software for analyzing transportation and deliveries for employees and customers; providing temporary use of online non-downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, and booking transportation and deliveries; providing temporary use of online non-downloadable software for arranging, scheduling, managing, and coordinating transportation and deliveries for employees and customers; providing temporary use of online non-downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, and booking high capacity vehicle (HCV) transportation providing temporary use of online non-downloadable software for receiving and responding to requests for transportation; providing temporary use of online non-downloadable software for accessing ridesharing services; providing temporary use of online non-downloadable software for coordinating transportation and delivery services, bookings for transportation services and for dispatching vehicles to customers; providing temporary use of online non-downloadable software for providing push-notifications to passengers and motorized vehicle operators using mobile devices; providing temporary use of online non-downloadable software for providing transportation and delivery services, bookings for transportation services and for dispatching vehicles to customers; providing temporary use of online non-downloadable software for {specify function, e.g., arranging ridesharing, etc.} for use by motorized vehicle operators and passengers and potential passengers; providing temporary use of online non-downloadable software for use by motorized vehicle operators and passengers and potential passengers for arranging and managing ridesharing; research and product development in the field of machine learning; scientific and technological services and research and design relating thereto; software-as-a-service (SaaS) services featuring 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 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; electronic monitoring and reporting of transportation data using computers or sensors; 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 a website featuring information about options to maintain personal safety in the event of a detected trip irregularity; 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 for managing and tracking vehicles, fleets of vehicles, and vehicle drivers; providing temporary use of online non-downloadable software for performing safety checks of vehicles, fleets of vehicles, and vehicle drivers; providing temporary use of online non-downloadable real-time map software for tracking vehicles, deliveries, and people; providing temporary use of online non-downloadable real-time map software for tracking vehicles, fleets of vehicles, and vehicle drivers; providing temporary use of online non-downloadable real-time map software for tracking vehicles, employees, and customers during trips; providing temporary use of online non-downloadable software for tracking number of trips, vehicle and driver hours, and driver earnings; providing temporary use of online non-downloadable software for matching vehicle owners with vehicle drivers; providing temporary use of online non-downloadable software for accessing a marketplace of available vehicles and vehicle drivers; providing temporary use of online non-downloadable software for searching for and contacting vehicle drivers and vehicle owners; providing temporary use of online non-downloadable software for matching vehicle owners with vehicle drivers; providing temporary use of online non-downloadable software for accessing a marketplace of available vehicles and vehicle drivers; providing temporary use of online non-downloadable software for searching for and contacting vehicle drivers; providing temporary use of online non-downloadable software for searching for and contacting vehicle owners; providing temporary use of online non-downloadable software for business and employee expense accounting, analyzation, and reporting; providing temporary use of online non-downloadable software for creating, funding, providing, restricting, canceling, and sending vouchers; 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 a website featuring on-line non-downloadable software that enables users to request transportation

 

International Class 44:

 

Personal and social services rendered by others to meet the needs of individuals, namely, music therapy for social assimilation purposes

 

International Class 45:

 

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, {applicant to specify nature of services, e.g., personal concierge services for others comprising making requested personal arrangements and reservations, running errands and providing customer specific information to meet individual needs, all rendered in business establishments, office buildings, hotels, residential complexes and homes, case management services in the nature of coordination of legal, social and psychological services for domestically abused persons, etc.}; monitoring trip activity, vehicle location, and other data in the nature of {applicant to specify, e.g., status updates, etc.} for personal safety and emergency response purposes; emergency response alarm 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 support services to others; providing a website with information about personal safety and emergency response services; providing a website featuring information about options to maintain personal safety in the event of a detected trip irregularity 

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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

 

The application identifies goods and services that are classified in at least thirteen (13) classes; however, applicant submitted fees sufficient for only ten (10) classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

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.

 

RESPONSE GUIDELINES:

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.

 

 

U.S. TRADEMARK APPLICATION NO. 88328871 - UBER - N/A

To: Uber Technologies, Inc. (tmprosecution@uber.com)
Subject: U.S. TRADEMARK APPLICATION NO. 88328871 - UBER - N/A
Sent: 4/22/2019 7:43:37 AM
Sent As: ECOM125@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/22/2019 FOR U.S. APPLICATION SERIAL NO. 88328871

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/22/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.

 

 


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