UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

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: 6/24/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES

 

• Prior Filed Application
• Identification of Goods and Services- International Classes 9, 39 and 42

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 88090534 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION OF GOODS

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).  These requirements for specification of the particular goods and/or services apply to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

INTERNATIONAL CLASS 9

 

The wording “computer software for the operation, control, maintenance, and management of vehicles, autonomous vehicles and vehicle components, for battery management for electric vehicles, for vehicle theft protection, for vehicle navigation, for travel and trip planning, for communications between vehicles and mobile devices, and for collecting, tracking, analyzing, and reporting data and information in the field of electric vehicles and autonomous vehicles” in the identification of goods is indefinite and must be clarified because applicant must specify that this refers to downloadable computer software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

INTERNATIONAL CLASS 39

 

The wording “Online services, namely, providing data and information regarding mobile activities, namely, ride sharing, car sharing, travel by autonomous vehicles, combinations of multi-modal travel alternatives and travel route planning; providing road and traffic information” in the identification of goods is indefinite and must be clarified because applicant must specify whether this online service is being provided via  website or if this refers to an online computer database .  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

 

The wording “online services, namely, providing data and information regarding parking garage and parking lot services, vehicle parking space availability, routing of vehicles by computer on data networks to available parking spaces, traffic, traffic routing, routing of vehicles to avoid traffic, ride sharing, car sharing”  in the identification of goods is indefinite and must be clarified because applicant must specify whether this online service is being provided via  website or if this refers to an online computer database and must separate out the clauses regarding routing of vehicles .  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

INTERNATIONAL CLASS 42

 

The wording “(SaaS) software as a service for the operation, control, maintenance, and management of vehicles, autonomous vehicles and vehicle components, for battery management for electric vehicles, for vehicle theft protection, for vehicle navigation, for travel and trip planning, for communications between vehicles and mobile devices, to detect external objects, obstructions, road lane marks, external light level, and precipitation, and react through command of vehicle steering system, and for collecting, tracking, analyzing, and reporting data and information in the field of electric vehicles and autonomous vehicles”  in the identification of goods is indefinite and must be clarified because applicant must specify that this refers to Software as a service (SaaS) service .  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording Air quality data collection services, namely, air quality monitoring services”  in the identification of goods is indefinite and must be clarified because applicant must specify that this refers to technical air quality monitoring services to ensure that there is no confusion that this is a business service in class 35 .  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Online services, namely, providing data and information regarding mobile activities, namely, traffic planning and traffic avoidance planning” in the identification of goods for International Class 42 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 information services on regarding transportation in class 39.

 

 

Applicant should note that any wording in bold, in italics, underlined, and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods which should be removed, it will be shown with a line though it such as this: strikethrough. When making its amendment, applicant should enter them in standard font, not in bold, in italics, underlined, and/or in ALL CAPS.

 

Applicant may substitute the following wording, if accurate:

 

International Class 9: Downloadable computer software for the operation, control, maintenance, and management of vehicles, autonomous vehicles and vehicle components, for battery management for electric vehicles, for vehicle theft protection, for vehicle navigation, for travel and trip planning, for communications between vehicles and mobile devices, and for collecting, tracking, analyzing, and reporting data and information in the field of electric vehicles and autonomous vehicles; Computerized surveillance and electronic control systems for motor vehicles, comprised of computer hardware and application software, cameras, optical sensors, ultrasound sensors, lidar and radar, to detect external objects, obstructions, road lane marks, external light level, and precipitation, and react through command of vehicle steering system, brakes, cruise control, engine, actuators, display monitors, windshield wipers, automotive warning lights, and headlights; safety and driving assistant system for mobile vehicles comprised of electronic proximity sensors and switches, high-resolution cameras, integrated circuits for the purpose of imaging processing, and display monitors

 

 

International Class 39: Online services, namely, providing data and information regarding mobile activities, namely, in the nature of ride sharing, car sharing, travel by autonomous vehicles, combinations of multi-modal travel alternatives and travel route planning via a website {OR Providing an online computer database featuring information regarding mobile activities in the nature of car sharing and ride sharing by electric autonomous vehicles including multi-modal travel alternatives and travel route planning}; Providing road and traffic information; Vehicle routing by computer on data networks responsive to monitored pollution data to reduce pollution emissions in locations having elevated pollution levels, vehicle routing by computer on data networks responsive to monitored pollution data to reduce exposure of persons to pollution, vehicle routing by computer on data networks to avoid traffic and weather conditions or to find prompt access to medical care, and vehicle routing by computer on data networks to available parking spaces; Online services, namely, providing data and information regarding parking garage and parking lot services, vehicle parking space availability via a website {OR providing an online computer database featuring information regarding parking garage and parking lot services and vehicle parking space availability}; Routing of vehicles by computer on data networks to available parking spaces; Routing of vehicles by computer on data networks to avoid traffic, congestion; traffic routing, routing of vehicles to avoid traffic, Routing of vehicles by computer on data networks for arranging ride sharing and  car sharing; Online services, namely, providing a website featuring data and information regarding mobile activities, namely, traffic planning and traffic avoidance planning

 

International Class 42: Providing temporary use of non-downloadable software for the operation, control, maintenance, and management of vehicles, autonomous vehicles and vehicle components, for battery management for electric vehicles, for vehicle theft protection, for vehicle navigation, for travel and trip planning, for communications between vehicles and mobile devices, to detect external objects, obstructions, road lane marks, external light level, and precipitation, and react through command of vehicle steering system, and for collecting, tracking, analyzing, and reporting data and information in the field of electric vehicles and autonomous vehicles; Software as a service (SaaS) software as a service for the operation, control, maintenance, and management of vehicles, autonomous vehicles and vehicle components, for battery management for electric vehicles, for vehicle theft protection, for vehicle navigation, for travel and trip planning, for communications between vehicles and mobile devices, to detect external objects, obstructions, road lane marks, external light level, and precipitation, and react through command of vehicle steering system, and for collecting, tracking, analyzing, and reporting data and information in the field of electric vehicles and autonomous vehicles; Online services, namely, providing data and information regarding mobile activities, namely, traffic planning and traffic avoidance planning; Air quality data collection services, namely, technical air quality monitoring services; providing temporary use of online non-downloadable software for collecting, tracking, analyzing, assigning, billing, and distributing data and information regarding mobile activities, namely, providing road, traffic, weather, and pollution information, routing of traffic, parking, ride sharing, car sharing, vehicle fleet management, and traffic monitoring and planning

 

 

 

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/or services or add goods and/or 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/or 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/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

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.  

 

 

 

/Claudia Garcia/

Examining Attorney

Law Office 111

(571) 272-6939

claudia.garcia@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/24/2019 FOR U.S. APPLICATION SERIAL NO. 88382839

 

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 6/24/2019 (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.