Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  January 05, 2021

 

This Office action is supplemental to and supersedes the previous Office actions issued on April 22, 2019, December 16, 2019, and June 20, 2020 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, wording within the identification of International Class 45 services requires additional clarification, as set forth below.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all issues raised in this Office action, in addition to the issues raised in the Office actions dated April 22, 2019, December 16, 2019, and June 20, 2020.  The issues raised in the previous April 22, 2019, December 16, 2019, and June 20, 2020 Office actions are as follow and are maintained: amend the identification of goods and services, satisfy all multiple-class application requirements.

 

All arguments and evidence included in the April 22, 2019, December 16, 2019, and June 20, 2020 Office actions are incorporated herein by reference.

 

The following is a SUMMARY OF ISSUES that applicant must address:

• Identification of Goods and Services – Partial Requirement
• Multiple-Class Application Requirements

 

Applicant must respond to all issues raised in this Office action and the previous April 22, 2019, December 16, 2019, and June 20, 2020 Office actions, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

IDENTIFICATION OF GOODS AND SERVICES – PARTIAL REQUIREMENT – FINAL

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

International Class 12

 

The wording “vehicles, namely, land vehicles, micromobility vehicles for first-mile and last-mile traveling, motor scooters, two-wheeled motorized scooters, self-balancing motor scooters, hovering boards, mopeds, electronically motorized skateboards, self-balancing boards, electric conveyances being electric land vehicles, electric land vehicles, electric micromobility vehicles for first-mile and last-mile traveling, electric land conveyances being electric land vehicles, electric micromobility conveyances for first-mile and last-mile traveling electric pedal assist bicycles, electrically-powered motor scooters, electric two-wheeled motorized scooters, electric self-balancing scooters, self-balancing two-wheeled electric scooters, self-balancing one-wheeled electric scooters, electric hovering boards, electric mopeds, electric motorized skateboards, electric motorized self-balancing boards” 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 “hovering boards” in the identification of goods is variation of a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the preiously attached U.S. Registration No. 3685723. 

 

Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Applicant may replace such wording with the following, if appropriate:  “self-balancing boards.”

 

In addition, the wording “jet skis” in the identification of goods is variation of a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration No. 1394547. 

 

Applicant may replace such wording with the following, if appropriate:  “recreational jet boats.”

 

International Class 16

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods 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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows:  “paper and cardboard; printed matter; photographs; stationery and office requisites, except furniture; drawing materials and materials for artists; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printed publications, namely, research papers in the field of machine learning” in International Class 16.

 

However, the proposed amendment identifies the following goods:  “printed matter, namely, printed paper, cardboard advertising signs, printed paper signs, printed cardboard signs and display cards primarily composed of cardboard, and table tents” in International Class 16.  

 

This portion of the proposed amendment is beyond the scope of the original identification because while printed paper signs,” “display cards primarily composed of cardboard,” and “table tents” are comprised of “paper and cardboard,” the wordings identify goods that are distinct in nature and function. The proposed amendment thus is not broadly encompassed by the identification in the original application.

 

International Class 35

 

The wording “arranging and conducting incentive rewards programs, namely, administration of loyalty programs enabling members to obtain access to exclusive discounts, offers, promotions, rewards, and features from retailers and service providers,” “business services, namely, filling the temporary and permanent staffing needs of businesses,” “membership rewards programs to incentivize engagement with a ridesharing platform,” “membership rewards programs to promote the sale of transportation and delivery services,” and “providing rewards programs for customers to earn fuel discounts and rebates, school tuition, car maintenance and repair discounts, roadside assistance, priority rideshare matching, rideshare trip routing and duration information, access to rideshare promotions, and increased flat fares” 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, about planning, coordinating, and tracking the transportation of people and conveyances” 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 information about transportation logistics management services, namely, about planning, coordinating, and tracking the transportation of people being planning and scheduling shipments for users of transportation services” in International Class 35 and “providing a website featuring information about transportation management services in the nature of transportation of goods, namely, information about planning, coordinating, and tracking the transportation of conveyances” in International Class 39.

 

International Class 36

 

The wording “monetary services, namely, providing discounted prepayment of goods and services,” “financial affairs and services and monetary affairs and services, namely, electronic direct-deposit services,” “financial services and monetary services, namely, administration of transactions involving funds drawn from online stored value accounts,” “financial services and monetary services, namely, funding electronic and online cash accounts,” “financial processing services and monetary processing services, namely, processing of electronic, mobile, and online transactions,” “financial services and monetary services, namely, administration and processing of transactions involving funds drawn from electronic and online stored value accounts,” “financial services and monetary services, namely, administering, providing, processing, verifying, and authenticating electronic, mobile, and online payments and contactless financial transactions,” and “financial transaction services, namely, maintaining and servicing a payment network for facilitating electronic payments by others to others for goods or 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” 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 on frequent traveler bonus programs” 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 “providing a website featuring information on business administration of frequent traveler bonus programs” in International Class 35, “providing a website featuring information on transportation featuring frequent traveler bonus programs” in International Class 39, and “providing a website featuring information in the field of hotels, namely, on frequent traveler hotel bonus programs” in International Class 43.

 

International Class 41

 

The wording “online publications, namely, blogs, non-downloadable technical reports and non-downloadable research papers in the field of machine learning” 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 45

 

The wording “personal and social services rendered by others to meet the needs of individuals, namely, emergency response services in the nature of alarm monitoring services for deploying non-medical emergency response assistance and providing notification to users and non-medical emergency support responders” 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 12:

 

Motorized vehicles, namely, one-wheeled, two-wheeled, three-wheeled, and four-wheeled motor vehicles; self-driving transport vehicles; electrically-powered motor vehicles; bicycles; electric bicycles; electric assist bicycles; pedal assist bicycles; vehicles, namely, boats, personal watercrafts in the nature of recreational jet boats and water scooters; vehicles, namely, land vehicles, micromobility vehicles for first-mile and last-mile traveling being vehicles for the physically handicapped and those of reduced mobility, motor scooters, two-wheeled motorized scooters, self-balancing motor scooters, hovering boards self-balancing boards, mopeds, electronically motorized skateboards, self-balancing boards, electric conveyances being electric land vehicles, electric land vehicles, electric micromobility vehicles for first-mile and last-mile traveling, electric land conveyances being electric land vehicles, electric micromobility conveyances for first-mile and last-mile traveling being vehicles for the physically handicapped and those of reduced mobility, electric pedal assist bicycles, electrically-powered motor scooters, electric two-wheeled motorized scooters, electric self-balancing scooters, self-balancing two-wheeled electric scooters, self-balancing one-wheeled electric scooters, electric hovering self-balancing boards, electric mopeds, electric motorized skateboards, electric motorized self-balancing boards; vehicles, namely, aircrafts in the nature of vertical take-off and landing (VTOL) vehicles and electric vertical take-off and landing (eVTOL) vehicles

 

International Class 16:

 

Paper and cardboard; printed matter, namely, printed paper, cardboard advertising signs, printed paper signs, printed cardboard advertising signs and display cards primarily composed of cardboard, and table tents; photographs; plastic sheets, films and bags for wrapping and packaging; plastic sheets, films and bags for wrapping and packaging, namely, adhesive plastic film for wrapping and packaging, plastic packaging wrap for commercial or industrial use, plastic films used for packaging food, food wrapping plastic film, plastic film for use as wrapping and packaging material for food and beverages, food wrapping plastic film, and plastic film roll stock for packaging food; printed publications, namely, research papers in the field of machine learning

 

International Class 35:

 

Accounting services; advertising, marketing, and promotional services; advertising, marketing, and promotional services, namely, promoting third party goods and services; advertising, marketing, and promotional services, namely, advertising services, namely, promoting third party goods and services through on-line medium; 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, namely, administration of customer loyalty programs enabling members to obtain access to exclusive discounts, offers, promotions, rewards, and features in the nature of {specify methods or incentives, e.g., free or discount automobile parts if customers maintain their vehicles at an automobile dealership, etc.} from retailers and service providers; arranging and conducting incentive rewards programs to incentivize engagement with a ridesharing platform; arranging and providing discount programs that enable customers to obtain discounts on goods and services; arranging and providing discount programs to customers to obtain discounts on the cost of goods and services or receive improved services; business administration and management services; business administration and management services, namely, business management consultancy in the field of transportation management services, namely, in the field of planning, coordinating, and tracking the transportation of people and conveyances; 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 services, namely, professional staffing services in the nature of filling the temporary and permanent staffing needs of businesses; business services, namely, providing a website featuring online employment information in the nature of personal profiles and job postings; business services, namely, business invoicing services; discount programs, namely, administration of a discount program for enabling participants to obtain discounts on goods and services and receive improved services; 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; providing on-line employment information in the field of job postings, namely, providing an on-line searchable database featuring employment opportunities; 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; arranging and conducting incentive membership rewards programs to incentivize engagement with a ridesharing platform; arranging and conducting incentive membership rewards programs to promote the sale of transportation and delivery services; 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; providing office functions; personnel recruitment and placement; promotion services; providing a website featuring information about transportation logistics management services, namely, information about planning, coordinating, and tracking the transportation of people and conveyances being planning and scheduling shipments for users of transportation services; 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 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 about electronic funds storage, transfer, and balances; providing consumer information about electronic payment options and methods; providing consumer information, namely, consumer product information via the Internet; providing business information; administration of customer loyalty providing rewards programs which provides for customers to earn fuel discounts and rebates, school tuition, car maintenance and repair discounts, roadside assistance, priority rideshare matching, rideshare trip routing and duration information, access to rideshare promotions, and increased flat fares; providing rewards programs for customers, namely, providing, arranging, and conducting incentive rewards programs for customers to promote the sale of transportation and delivery services; providing rewards programs for customers, namely, providing, arranging, and conducting rewards programs, namely, administration of loyalty programs enabling members to obtain access to exclusive discounts, offers, promotions, rewards and features; providing, arranging, and conducting discount programs for customers to obtain discounts on the cost of services or receive improved services; personnel staffing, recruiting, matching and placement services; providing pay statements, namely, payroll preparation, processing, administration and management services; administration of customer loyalty programs and incentive award programs that provide vouchers for others; accounts services, namely, accounting services; transport in the nature of transportation logistics services, namely, arranging the transportation of goods for others; business administration of frequent traveler programs; loyalty programs, namely, providing incentive award programs for customers through the issuance and processing of loyalty rewards points for purchase of a company's goods and services; funds transfer services in the nature of bookkeeping for electronic funds transfer; providing a website featuring information about fuel tax assessment; business services, namely, customer relationship management (CRM); providing information in the field of business administration of incentive loyalty programs that feature discounts, rewards, rewards programs, program profiles, loyalty points, and benefits; brokerage services, namely, providing referrals in the field of employment; brokerage services, namely, brokerage being providing referrals in the field of job placement services; brokerage services, namely, brokerage being providing referrals in the field of delivery services; providing a website featuring information on business administration of frequent traveler bonus programs; providing a website featuring information about transportation logistics management services, namely, about planning, coordinating, and tracking the transportation of people being planning and scheduling shipments for users of transportation services

 

International Class 36:

 

Financial affairs, namely, financial information, management and analysis services; financial services, namely, providing electronic processing of credit card, debit card, prepaid card, mobile wallets, electronic wallets, electronic check, electronic payments, mobile payments, and online payments provided through an electronic payment network for merchants and consumers; financial services, namely, payment and funds verification services; monetary affairs, namely, financial information, management and analysis services; monetary services, namely, providing discounted prepayment of goods and services being prepaid services in the nature of making advance payments to add value to prepaid or pay-as-you-go cards for the purchase of {indicate items being purchased, e.g., digital downloads of music, etc.}; financial information processing; monetary information being financial information processing services; payment services, namely, electronic processing of payments made via credit card, debit card, prepaid card, mobile wallets, electronic wallets, electronic check, electronic payments, mobile payments, and online payments; payment services, namely, electronic payment services involving electronic processing of payments via a global computer network; electronic commerce payment services, namely, establishing electronic funding accounts used to purchase goods and services on the internet; payment services, namely, payment management services, namely, providing electronic processing of credit card, debit card, prepaid card, mobile wallets, electronic wallets, electronic check, electronic payments, mobile payments, and online payments provided through an electronic payment network for merchants and consumers; credit and loan services; financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; financial transaction services, namely, providing secure commercial transactions and payment options; transaction services, namely, financial transaction services, namely, providing secure commercial transactions and payment options; funds transfer services, namely, enabling electronic peer-to-peer funds transfers; funds transfer services, namely, electronic transfer of money and electronic funds transfer; electronic transfer of funds and money; accounts services, namely, online cash account services; redeeming the vouchers of others for payment of goods or services; business finance procurement services; providing financial information; financial affairs and services and monetary affairs and services, namely, processing of electronic and online payments; financial affairs and services and monetary affairs and services, namely, electronic banking direct-deposit services; financial affairs and services and monetary affairs and services, namely, loyalty rewards program payment processing services and gift card transaction processing services; financial affairs and services and monetary affairs and services, namely, providing a website featuring information in the field of financial services, payment processing services, and financial transactions; financial affairs and monetary affairs, namely, providing electronic processing of electronic payments made through an electronic stored value account via a global computer network; financial affairs and monetary affairs, namely, financial information, management and analysis services; financial processing and monetary processing services, namely, electronic transfer of money and electronic funds transfer services; financial services and monetary services, namely, administration of transactions involving funds drawn from online stored value accounts using a credit or debit card over a global data network; financial services and monetary services, namely, providing electronic cash transactions for use as part of a customer loyalty program; financial services and monetary services, namely, funding electronic and online cash accounts being {specify nature of services, e.g., providing of investment funding, etc.}; financial processing services and monetary processing services, namely, processing of electronic, mobile, and online debit and credit card transactions; financial services and monetary services, namely, providing online stored value accounts in an electronic environment; financial services and monetary services, namely, administration and electronic processing of transactions involving funds drawn from electronic and online stored value accounts using a credit or debit card over a global data network; financial services and monetary services, namely, administering, providing, electronic processing, verifying, and authenticating of electronic, mobile, and online payments and contactless debit and credit card financial transactions via a global computer network; financial processing services and monetary processing services, namely, transaction processing terminal services using near field communication (NFC) technology, QR codes, and radio frequency identification (RFID) signals; electronic transfer of funds and money; payment processing services, namely, credit card and debit card transaction processing services; loyalty program payment processing services, namely, issuance and processing of loyalty points; providing information in the field of incentive loyalty program payment processing services; financial transaction services, namely, maintaining and servicing a payment network in the nature of providing electronic processing of credit card transactions and electronic payments via a global computer network for facilitating electronic payments by others to others for goods or services; insurance services, namely, provision of motor vehicle and commercial transportation insurance carrier services, brokerage, and underwriting and motor vehicle and commercial transportation insurance rate quotes 

 

International Class 39:

 

Transport of persons and goods; transport of persons, namely, time-based transport of persons; 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; coordinating travel arrangements for individuals and for groups, namely, arranging time-based ridesharing services for individuals and for groups; delivery services by air, road, rail, and sea; delivery services by air, road, rail, and sea, namely, delivery of groceries; delivery services being delivery of goods; delivery service, namely, delivery of groceries; 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 and delivery of goods; delivery of goods, namely, groceries; 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; transportation of goods, namely, groceries; transportation of passengers, namely, time-based transportation of passengers; travel arrangement, namely, coordinating travel arrangements for individuals and for groups; travel arrangement, namely, coordinating travel arrangements for individuals and for groups, namely, coordinating time-based ridesharing services for individuals and for groups; travel arrangement; travel arrangement, namely, arranging time-based ridesharing services; travel arrangement, namely, transport arrangement for travelers; travel arrangement, namely, transport arrangement for travelers, namely, arranging time-based transport 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; 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; conveyance rental and sharing services, namely, providing temporary use of bicycles; providing a website featuring information about transit, namely, information about transit booking, coordination, arrangement, ticketing, ridership, delays, and location; providing a website featuring information on transportation featuring frequent traveler bonus programs; providing a website featuring information on travel; providing a website featuring information regarding transport arrangement for travelers; providing information relating to the booking of transport for travelers, via electronic means; transport arrangement for travelers; transport, namely, transport of persons and goods by air; transport, namely, air transport services; providing a website featuring information about transportation management services in the nature of transportation of goods, namely, about planning, coordinating, and tracking the transportation of conveyances; providing a website featuring information about transportation management services in the nature of transportation of goods, namely, information about planning, coordinating, and tracking the transportation of conveyances

 

International Class 41:

 

Personal and social services rendered by others to meet the needs of individuals, namely, entertainment services in the nature of organizing social entertainment events; providing a website featuring non-downloadable articles in the field of travel and transportation; education, namely, education services in the nature of providing talks, conferences, seminars, and workshops in the fields of inspiration and transportation; education, namely, educational services, namely, conducting workshops, seminars, and programming programs relating to bicycles, bicycle safety, bicycle commuting, and health and environmental benefits of bicycles; entertainment in the nature of providing a website featuring non-downloadable videos in the fields of entertainment, popular culture, inspiration, transportation, and documentaries; entertainment, namely, providing a website featuring non-downloadable streamable films and videos in the fields of entertainment, popular culture, inspiration, transportation, and documentaries; entertainment, namely, providing a website featuring entertainment information in the field of videos and films; entertainment in the nature of entertainment services, namely, displaying a series of films and videos; entertainment, namely, entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures and multimedia entertainment content; entertainment, namely, providing online non-downloadable general feature magazines; entertainment, namely, entertainment services in the nature of conducting social events and activities for entertainment and recreational purposes to encourage membership in bicycle sharing programs, promote transportation systems, and reward members of bicycle sharing programs; entertainment, namely, providing on-line videos, films, and movies featuring information about pricing technology, matching technology, and the marketplace economy for transportation and delivery services, not downloadable; providing information relating to organizing community sporting and cultural activities; educational services, namely, conducting conferences, summits in the nature of conferences, non-downloadable webinars, tutorial sessions and seminars in the field of machine learning; providing online publications, namely, on-line journals in the nature of blogs, non-downloadable technical reports and non-downloadable research papers in the field of machine learning; educational services, namely, conducting conferences, summits, and seminars in the field of transportation; entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures and multimedia entertainment content; film and video production; providing a website featuring entertainment information in the field of videos and films; providing a website featuring non-downloadable videos in the fields of entertainment and documentaries

 

International Class 43:

 

Providing a website featuring information in the field of hotels, namely, on frequent traveler hotel bonus programs

 

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, emergency response services in the nature of security alarm monitoring services for deploying non-medical emergency response assistance and providing notification to users and non-medical emergency support responders; monitoring trip activity and vehicle location for personal safety and emergency response purposes; emergency response monitoring assistance services, namely, monitoring of mobile devices by a remote monitoring center for assisting in the dispatch of emergency public health and security services and notification to third parties; monitoring of mobile devices by a remote monitoring center to provide urgent personal security and safety support services to others; 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; travel assistance services, namely, providing information about emergency response services for people in transit

 

International Classes 9, 38, and 42 are acceptable as written.

 

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 eleven (11) 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.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

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 an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Amanda Galbo/

Amanda Galbo

Trademark Examining Attorney

Law Office 125

(571) 272-5391

amanda.galbo@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 05, 2021 for

U.S. Trademark Application Serial No. 88328871

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Amanda Galbo/

Amanda Galbo

Trademark Examining Attorney

Law Office 125

(571) 272-5391

amanda.galbo@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 05, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”