NOTE TO THE FILE
Sent to TICRS as Serial Number: 88421562SERIAL NUMBER: 88421553
DATE: 01/16/2020
NAME: dfathy
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: Fathy, Dominic
Sent: Thursday, January 16, 2020 10:13 AM
To: Chelseaa Bush <CBush@sheppardmullin.com>
Cc: Hal Milstein <HMilstein@sheppardmullin.com>
Subject: RE: Office Actions for PONYHI (Serial No. 88421553), PONYALPHA (Serial No. 88421551), PONYZERO (Serial No. 88421558), PONYSIM (Serial No. 88421554), PONYVOYAGE (Serial No. 88421562), PONYPILOT (Serial No. 88421568), and PONYBRAIN (Serial No. 88421564)
Hi Chelseaa,
Thank you. Yes, I will enter examiner’s amendments with your proposals. I will send a copy of each for your records. Then, I will follow up with the suspension actions.
Best regards,
Dominic
______________________________
Dominic Fathy
Trademark Examining Attorney
Law Office 104
(571) 272-8801
From: Chelseaa Bush <CBush@sheppardmullin.com>
Sent: Wednesday, January 15, 2020 6:16 PM
To: Fathy, Dominic <Dominic.Fathy@USPTO.GOV>
Cc: Hal Milstein <HMilstein@sheppardmullin.com>
Subject: RE: Office Actions for PONYHI (Serial No. 88421553), PONYALPHA (Serial No. 88421551), PONYZERO (Serial No. 88421558), PONYSIM (Serial No. 88421554), PONYVOYAGE (Serial No. 88421562), PONYPILOT (Serial No. 88421568), and PONYBRAIN (Serial No. 88421564)
Dear Mr. Fathy,
The client has approved the following amendment of goods and services for all of the applications. Please let me know if you can enter these changes as Examiner’s Amendments.
Class 09: Computer hardware; computer hardware for communicating audio, video and data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer network; downloadable and recorded computer software for vehicle navigation; downloadable and recorded computer software for operating an autonomous vehicle; downloadable and recorded computer software for vehicle fleet management; downloadable and recorded computer software for coordinating, scheduling, booking, and dispatching vehicles for passenger and freight transport; downloadable and recorded computer software for managing freight transportation by truck and autonomous vehicles; navigation apparatus for vehicles; navigational instruments, namely, GPS navigation devices and satellite-aided navigation systems; steering apparatus for vehicles, namely, simulators for the steering and controlling of vehicles; radar apparatus; laser device for sensing distance to objects; laser object detectors for use on vehicles; lidar (light detection and ranging apparatus); vehicle infrared, acceleration, proximity, and velocity sensors; sensors for determining position, velocity, direction, and acceleration; downloadable mobile applications for coordinating transportation services; downloadable mobile applications for coordinating, scheduling, booking, and dispatching vehicles for passenger and freight transport and delivery services; downloadable and recorded computer software and hardware for vehicle fleet launching, coordination, calibrating, direction, and management; cameras; cameras for use with vehicles; transmitters of electronic signals; radios for vehicles; radio transmitters and receivers; global positioning system (GPS); simulators for driving or control of vehicles; vehicle drive training simulators; control units for regulating start-up electrical motors; apparatus for testing vehicle brakes; vehicle video recorder; downloadable mobile applications for booking taxis
Class 12: Land vehicles; automobiles; trucks; freight land vehicles, namely, automobiles and trucks; mass transit land vehicles, namely automobiles and buses; autonomous cars; autonomous land vehicles, namely, automobiles, trucks, and buses; driverless cars; electric vehicles, namely, electric cars and electric motor cycles; electrically-powered motor scooters; anti-theft devices and alarms for vehicles; motor vehicle alarm systems; steering units for land vehicles and parts thereof; drones; plastic parts for vehicles, namely, automotive exterior and interior plastic extruded decorative and protective trim; metal parts for vehicles, namely, automotive exterior and interior metal decorative and protective trim; strollers
Class 39: Transportation services, namely, providing shuttle services by automobiles, buses and trucks; transportation services, namely, making reservations and bookings for transportation; transportation of passengers by vehicle; transportation services, namely, providing temporary use of vehicles in the nature of motor vehicle sharing services; transportation services, namely, providing travel by autonomous vehicles in the nature of taxi services; car rental services; transport reservation services; freighting services; freight transportation by trucks and autonomous vehicles; transportation of passengers and freight by land vehicle; providing a website featuring information regarding autonomous car transportation services and scheduling transportation services; leasing of vehicles; transportation services, namely, coordinating the pickup and drop-off of passengers at designated or directed locations; motor vehicle sharing services, namely, providing temporary use of motor vehicles; providing taxi booking services via mobile applications
Class 45: Monitoring of security alarm systems; dating services; online social networking services in the field of autonomous vehicles; internet-based social introduction service; computer software licensing; licensing of intellectual property; licensing of software for management of intellectual property; legal administration of licenses; granting of software licenses; stolen vehicle recovery services; stolen vehicle tracking; emergency roadside assistance services, namely, opening of locks; lost property services in the nature of tracking, locating, monitoring and returning services for recovering lost personal possessions, namely, lost property return; rental of security apparatus in the nature of camera and video surveillance equipment
Best regards,
Chelseaa
Chelseaa Bush
+1 650-815-2635 | direct
cbush@sheppardmullin.com | Bio
SheppardMullin
379 Lytton Avenue
Palo Alto, CA 94301-1479
+1 650-815-2600 | main
www.sheppardmullin.com | LinkedIn | Twitter
From: Fathy, Dominic <Dominic.Fathy@USPTO.GOV>
Sent: Thursday, January 2, 2020 12:24 PM
To: Chelseaa Bush <CBush@sheppardmullin.com>
Cc: Hal Milstein <HMilstein@sheppardmullin.com>
Subject: RE: Office Actions for PONYHI (Serial No. 88421553), PONYALPHA (Serial No. 88421551), PONYZERO (Serial No. 88421558), PONYSIM (Serial No. 88421554), PONYVOYAGE (Serial No. 88421562), PONYPILOT (Serial No. 88421568), and PONYBRAIN (Serial No. 88421564)
Dear Ms. Bush,
If you are unable to satisfy all the requirements as to the identification of goods and services in the Office action, I am unable to perform the examiner’s amendments and suspension actions. The actions of another examining attorney do not obviate my responsibilities in seeking clarification of indefinite and/or overly broad listings.
For example, you wish to keep “rental of security apparatus” in Class 45. This listing encompasses “Rental of security camera surveillance equipment” in Class 45 and also “Rental of computers relating to computer security and prevention of computer risks” is in Class 42.
Therefore, please formally respond to the Office actions and your arguments will be considered in due course.
Best regards,
Dominic
______________________________
Dominic Fathy
Trademark Examining Attorney
Law Office 104
(571) 272-8801
From: Chelseaa Bush <CBush@sheppardmullin.com>
Sent: Thursday, January 2, 2020 1:36 PM
To: Fathy, Dominic <Dominic.Fathy@USPTO.GOV>
Cc: Hal Milstein <HMilstein@sheppardmullin.com>
Subject: Office Actions for PONYHI (Serial No. 88421553), PONYALPHA (Serial No. 88421551), PONYZERO (Serial No. 88421558), PONYSIM (Serial No. 88421554), PONYVOYAGE (Serial No. 88421562), PONYPILOT (Serial No. 88421568), and PONYBRAIN (Serial No. 88421564)
Dear Mr. Fathy,
I write regarding the applications for PONYHI (Serial No. 88421553), PONYALPHA (Serial No. 88421551), PONYZERO (Serial No. 88421558), PONYSIM (Serial No. 88421554), PONYVOYAGE (Serial No. 88421562), PONYPILOT (Serial No. 88421568), and PONYBRAIN (Serial No. 88421564).
With regards to the prior pending applications, we authorize you to suspend the subject applications pending disposition of the prior pending third party applications.
With regards to the identification of goods and services, we authorize the addition of downloadable and recorded before all references to computer software in Class 9.
With regards to the other requests for amendment of goods and services, we were not required to make these changes in the client’s two previous applications for PONY.AI that have now received notices of allowance. Please see Serial Nos. 87955012 and 87955006. We ask that you please reconsider these goods and services and accept them as is in keeping with the client’s previous applications.
Thank you,
Chelseaa, Attorney of Record for Applicant
Chelseaa Bush
+1 650-815-2635 | direct
cbush@sheppardmullin.com | Bio
SheppardMullin
379 Lytton Avenue
Palo Alto, CA 94301-1479
+1 650-815-2600 | main
www.sheppardmullin.com | LinkedIn | Twitter
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