| To: | Zoox, Inc. (trademarks@leehayes.com) |
| Subject: | U.S. Trademark Application Serial No. 88540858 - ZOOX - Z019-2945TMU |
| Sent: | October 18, 2019 02:48:39 PM |
| Sent As: | ecom108@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88540858
Mark: ZOOX
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Correspondence Address: 601 W. RIVERSIDE AVENUE SUITE 1400
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Applicant: Zoox, Inc.
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Reference/Docket No. Z019-2945TMU
Correspondence Email Address: |
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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.
SEARCH OF OFFICE’S DATABASE OF MARKS
ADVISORY: PRIOR-FILED 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.
Applicant must address the following requirements.
CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES
The identification of goods/services in Classes 9, 12, 41, and 42 is indefinite and/or overbroad and must be clarified or reclassified to ensure proper analysis.
The wording “Computer software for coordinating transportation services, namely, software for electronic message alerts featuring leads, optimal matches, and matching posts for services, scheduling, namely, connecting transportation providers with individuals and groups needing rides, the arrangement and booking of transportation, electronic messages, social networking services and profiles” in the identification of goods is indefinite and overbroad and must, as explained above, indicate whether the format is downloadable, recorded, or online non-downloadable. This wording must also further indicate the purpose of the software with regard to electronic messages and social networking services and profiles, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).
The identification for “Electronic components for unmanned transportation units, namely, connectors and interconnectors for computers and computer hardware, computer network interface devices and computer interface boards, electronic display interfaces, and electronic communication systems comprised of computer hardware and software to enable signaling, switching and control of electronic components for aerial robotics and power management, data management, downlink transmission control, and interactions with other unmanned vehicles, all for mobility robotics and parts and fittings therefor” in the identification of goods must be reworded in order to clarify the purpose of the connectors and interconnectors. See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).
The wording “Electronic vehicle tracking apparatus” and “Electronic instruments for detecting traffic” in the identification of goods is indefinite and must identify the specific apparatus and instruments provided, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In Class 12, the wording “Passenger carrying vehicles; Electric vehicles” and “Mobility conveyances namely, automated people movers in the nature of multi-passenger wheeled robotic vehicles” in the identification of goods is indefinite and must specify the nature of the goods, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In Class 41, the wording “Educational services, namely, online seminars in the field of autonomous vehicles, including providing articles and media about autonomous vehicles online through a website which also features a blog” in the identification of services is indefinite must be amended to clarify the services provided and further identify the types of media provided, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “providing publications in the nature of newsletters on autonomous vehicles” in the identification of services is indefinite and overbroad and must specify the nature of the publications, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, printed newsletters are in Class 16, while online newsletters are in Class 41.
The wording “providing non-downloadable publications in the nature of newsletters on development, testing, and deployment of autonomous vehicles” in the identification of services is indefinite and must specify the nature of the publications, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In Class 42, the wording “Remote monitoring of a vehicle carrying a passenger, fleet maintenance and repair, passenger interaction, payment verification, vehicle software testing and validation, data collection of a driveable environment, and 3D map generation for vehicles, all for supporting an autonomous vehicle fleet company” in the identification of services is indefinite and must specify the nature of the services, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following suggestions, if accurate:
009: Downloadable computer application software for enabling mobility as a service by providing a platform that coordinates mobility options; downloadable computer application software for configuring robots to provide mobility and transportation services; downloadable computer software for coordinating transportation services, namely, software for electronic message alerts featuring leads, optimal matches, and matching posts for services, scheduling, namely, connecting transportation providers with individuals and groups needing rides, the arrangement and booking of transportation, managing the sending and receiving of electronic messages, managing and maintaining social networking services and profiles; downloadable computer software for coordinating transportation services, namely, software for the automated scheduling and dispatch of motorized vehicles; downloadable computer application software for mobile and wireless devices connecting drivers and passengers; downloadable computer application software for mobile and wireless devices, namely, software for automated scheduling and dispatch of motor vehicles; downloadable mobile application software for coordinating transportation services; downloadable computer application software for mobile and wireless devices, namely, software for engaging transportation services; downloadable computer application software for mobile phones and handheld devices, namely, software for remote control of electronic devices; Electronic devices in the nature of transportation control systems comprised of {specify components of system, e.g., connectors, controllers, hardware} for unmanned transportation units; Electronic components for unmanned transportation units, namely, connectors and interconnectors for computers and computer hardware, computer network interface devices, computer interface boards, electronic display interfaces, and electronic communication systems, all for mobility robotics and comprised of computer hardware and software to enable signaling, switching and control of electronic components for aerial robotics and power management, data management, downlink transmission control, and interactions with other unmanned vehicles, as well as parts and fittings therefor; Navigation apparatus for vehicles; Electronic vehicle tracking apparatus, namely, {specify apparatus, e.g., GPS tracking devices}; Electronic navigational and positioning apparatus and instruments; Electronic instruments for detecting traffic, namely, {specify instruments, e.g., electronic sensors, cameras}
012: Land transportation and mobility vehicles; Land vehicles and conveyances in the nature of automobiles; Self-driving transport vehicles; Unmanned conveying land vehicles; Passenger carrying vehicles, namely, land vehicles; Electric vehicles, namely, automobiles; Driverless cars; Mobility conveyances namely, automated people movers in the nature of multi-passenger wheeled robotic transport vehicles; Mobility vehicles, namely, passenger shuttles in the nature of land vehicles; Industrial vehicles, namely, semi-trailer trucks; Passenger motor vehicles, namely, land vehicles; Unmanned vehicles, namely, land vehicles; Transportation robots, namely, robotic transport vehicles; Structural parts for all of the foregoing
016: Printed publications in the nature of newsletters on autonomous vehicles
037: Vehicle repair and maintenance of a fleet of autonomous vehicles used by a ride sharing company
039: Transport by land; Transportation of passengers by motorized vehicle; Transportation of goods by motorized vehicle; Transportation of passengers by vehicle through a network of transportation providers; Transportation of goods by vehicle through a network of transportation providers; Providing customized driving directions
041: Educational services, namely, classes in the field of operating self-driving vehicles; Educational services, namely, online seminars in the field of autonomous vehicles and providing a website featuring a blog and non-downloadable publications and media in the nature of articles, {specify media, e.g., brochures, videos, etc.} in the field of autonomous vehicles; Providing on-line non-downloadable articles via websites and blogs in the field of development, testing and deployment of autonomous vehicle services; providing online publications in the nature of newsletters on autonomous vehicles; providing non-downloadable electronic publications in the nature of newsletters on development, testing, and deployment of autonomous vehicles; publication of printed publications on autonomous vehicles including publications on development, testing, and deployment of software for autonomous vehicles; education in the nature of providing instruction to passengers about autonomous vehicles while those passengers are taking rides in an autonomous vehicle; education in the nature of field trips in the field of development, testing, and deployment of autonomous vehicles by providing rides in an autonomous vehicle
042: Providing a website featuring technology that enables users to remotely monitor a vehicle carrying a passenger, fleet maintenance and repair, passenger interaction, payment verification, vehicle software testing and validation, data collection of a drivable environment, and 3D map generation for vehicles, all for supporting an autonomous vehicle fleet company; providing temporary use of non-downloadable computer application software for enabling mobility as a service by providing a platform that coordinates mobility options; providing temporary use of non-downloadable computer application software for configuring robots to provide mobility and transportation services; providing temporary use of non-downloadable computer software for coordinating transportation services, namely, software for electronic message alerts featuring leads, optimal matches, and matching posts for services, scheduling, namely, connecting transportation providers with individuals and groups needing rides, the arrangement and booking of transportation, managing the sending and receiving of electronic messages, managing and maintaining social networking services and profiles; downloadable computer software for coordinating transportation services, namely, software for the automated scheduling and dispatch of motorized vehicles; providing temporary use of non-downloadable computer application software for mobile and wireless devices connecting drivers and passengers; providing temporary use of non-downloadable computer application software for mobile and wireless devices, namely, software for automated scheduling and dispatch of motor vehicles; providing temporary use of non-downloadable mobile application software for coordinating transportation services; providing temporary use of non-downloadable computer application software for mobile and wireless devices, namely, software for engaging transportation services; providing temporary use of non-downloadable computer application software for mobile phones and handheld devices, namely, software for remote control of electronic devices
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.
Applicant must address the following additional requirement.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods and services that are classified in at least seven classes; however, applicant submitted a fee sufficient for only six 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 and satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least seven classes; however, applicant submitted a fee(s) sufficient for only six classes. As explained, applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
RESPONSE GUIDELINES
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.
How to respond. Click to file a response to this nonfinal Office action
/Nathaniel Pettican/
Nathaniel Pettican
Examining Attorney
Law Office 108
(571) 272-1087
nathaniel.pettican@uspto.gov
RESPONSE GUIDANCE
