To: | Qudos Technologies, LLC (katalinaqudos@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88622998 - ALWAYS THE RIDE YOU WANT - N/A |
Sent: | December 20, 2019 08:21:16 AM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88622998
Mark: ALWAYS THE RIDE YOU WANT
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Correspondence Address:
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Applicant: Qudos Technologies, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 20, 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.
SUMMARY OF ISSUES
Registration is refused on the following grounds:
SEARCH OF U.S.P.T.O. DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Class(es) 42 in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). Specifically, the specimen shows use of the mark as a source indicator for software goods, namely, a downloadable software mobile application, and not for services in the nature of providing temporary use of non-downloadable software. Downloadable software application is an identification that is broader in scope than a computer service in International Class 42, which is generally provided for use on a temporary basis.
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). To show a direct association, specimens showing the mark used in rendering the identified services need not explicitly refer to those services, but “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In this case, the submitted images all refer to “download the app,” except for a couple of pages, so the association is with a software app, not services. The pages that do not show the reference to “download the app,” do nothing to convey an association between the services and the mark because they lack sufficient textual references describing the services. Simply stating “personalize your ridesharing experience” or “Favorite the drivers you like with Qudos Fave” or “we like you 3,000” are not references that directly refer to the services as providing temporary use of non-downloadable software. Another reason why mark-services association is not present is because there is no sign-in or log-in screen that creates a connection with the services implying they are available and rendered once the user logs in. Overall, the specimen and its description indicate the mark is used in association with software goods rather than non-downloadable software services.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii). Some sign-in screens may include a reference to the services and effectively function as an advertisement. See TMEP § 1301.04(i), Example 6 (MYFITAGE). Other sign-in screens may contain no reference to the services, but may nonetheless be acceptable if the overall content of the specimen sufficiently indicates the services. Or, the specimen description may explain the context of the services by stating the specimen is a sign-in screen for accessing the services and that applicant is offering the type of services being applied for. Such an explanation may provide a sufficient basis for accepting the sign-in screen specimen, as long as there is no contradictory information in the record indicating that the mark is not associated with the identified services. See TMEP § 1301.04(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
ADVISORY REGARDING THE IDENTIFICATION:
The identification contains a duplicate reference to “providing temporary use of on-line non-downloadable computer software for use by motorized vehicle operators and passengers and potential passengers for ride sharing, namely for scheduling ridesharing,” and one of the references should be deleted.
RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal Office action.
/Giselle Agosto-Hincapie/
Examining Attorney Advisor
Trademarks Law Office 102
giselle.agosto@uspto.gov (Informal inquires only)
571-272-5868
RESPONSE GUIDANCE