Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88761291 PRONTO(Standard Characters, see http://uspto.report/TM/88761291/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant's Response to Section 2(d) Refusal- Likelihood of Confusion

Please find Applicant's response attached in the Evidence section.

EVIDENCE
Evidence has been attached: Response and supporting exhibits.
Original PDF file:
evi_40137145162-202010010 95302217411_._PRONTO_Trad emark_Response_2D_.pdf
Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7
Original PDF file:
evi_40137145162-202010010 95302217411_._Exhibit_1_P RONTO.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_40137145162-202010010 95302217411_._Exhibit_2_P RONTO.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_40137145162-202010010 95302217411_._PRONTO_Exhi bit_3.pdf
Converted PDF file(s) ( 18 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Autonomous driving and advanced driver-assistance systems (ADAS) comprising cameras, sensors, controllers, audible alarms, detecting and warning devices, electrical communication machines and instruments, and computer software and computer hardware to control the aforesaid; cameras; antennas; electronic navigation apparatus and instruments for autonomous driving; GPS navigation devices; automotive advanced driver-assistance systems (ADAS) sensors; sensors for use in controlling the drive and operation of safety devices and equipment for motor vehicles, namely, optical sensors, radar sensors, sensors for detecting, processing and recognizing traffic signs, traffic signals, and vehicular brake lights and turn signals; measuring, detection, monitoring, testing and controlling instruments, devices and controllers, namely, vehicular speedometers, brake controllers, steering controllers, mileage recorders, cruise controls, electronic controls for vehicle speed, data processing units, computer hardware, firmware and software for monitoring conditions within a vehicular system and controlling functions of vehicles; alarms, namely, alarms for use in motor vehicle safe driving systems; obstacle detecting and warning devices comprised of radar apparatus, camera, electronic display, alarm, and control unit for detecting, displaying and warning of obstacles to motor vehicles; lane departure warning devices for motor vehicles comprised of a camera, sensor, electronic display, and alarm for detecting, displaying, and warning of lane departure; video monitors; electrical communication machines and instruments, namely, wireless telephony apparatus, radio transmitters and receivers, and computer hardware and software for use with motor vehicles autonomous driving and advanced driver-assistance systems (ADAS); computer hardware and computer software for use with vehicular autonomous driving, safety systems; on-board electronic systems in vehicles comprised of computer hardware and computer software for providing driving assistance; computer hardware and software for driver monitoring
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Autonomous driving and advanced driver-assistance systems (ADAS) comprising cameras, sensors, controllers, audible alarms, detecting and warning devices, electrical communication machines and instruments, and computer software and computer hardware to control the aforesaid; Autonomous driving and advanced driver-assistance systems (ADAS) comprising cameras, proximity sensors, brake controllers, audible alarms, detecting and warning devices in the nature of vehicle detection equipment for detecting vehicle location and electronic warning bells, electrical communication machines and instruments in the nature of communications servers, and downloadable computer software and computer hardware to control the aforesaid; cameras; antennas; electronic navigation apparatus and instruments for autonomous driving; GPS navigation devices; automotive advanced driver-assistance systems (ADAS) sensors; automotive advanced driver-assistance systems (ADAS) proximity sensors; sensors for use in controlling the drive and operation of safety devices and equipment for motor vehicles, namely, optical sensors, radar sensors, sensors for detecting, processing and recognizing traffic signs, traffic signals, and vehicular brake lights and turn signals; sensors for use in controlling the drive and operation of safety devices and equipment for motor vehicles, namely, optical sensors, radar sensors, electronic sensors for detecting, processing and recognizing traffic signs, traffic signals, and vehicular brake lights and turn signals; measuring, detection, monitoring, testing and controlling instruments, devices and controllers, namely, vehicular speedometers, brake controllers, steering controllers, mileage recorders, cruise controls, electronic controls for vehicle speed, data processing units, computer hardware, firmware and software for monitoring conditions within a vehicular system and controlling functions of vehicles; measuring, detection, monitoring, testing and controlling instruments, devices and controllers, namely, vehicular speedometers, brake controllers, electronic steering controllers, mileage recorders, cruise controls, electronic controls for vehicle speed, data processing units, computer hardware, downloadable firmware and downloadable software for monitoring conditions within a vehicular system and controlling functions of vehicles; alarms, namely, alarms for use in motor vehicle safe driving systems; obstacle detecting and warning devices comprised of radar apparatus, camera, electronic display interfaces, acoustic sound alarm, and control unit for detecting, displaying and warning of obstacles to motor vehicles; obstacle detecting and warning devices comprised of radar apparatus, camera, electronic display, alarm, and control unit for detecting, displaying and warning of obstacles to motor vehicles; video monitors; lane departure warning devices for motor vehicles comprised of a camera, sensor, electronic display, and alarm for detecting, displaying, and warning of lane departure; electrical communication machines and instruments, namely, wireless telephony apparatus, radio transmitters and receivers, and computer hardware and software for use with motor vehicles autonomous driving and advanced driver-assistance systems (ADAS); computer hardware and downloadable computer software for use with vehicular autonomous driving, safety systems; on-board electronic systems in vehicles comprised of computer hardware and downloadable computer software for providing driving assistance; computer hardware and computer software for use with vehicular autonomous driving, safety systems; computer hardware and downloadable software for driver monitoring; on-board electronic systems in vehicles comprised of computer hardware and computer software for providing driving assistance; computer hardware and software for driver monitoringClass 009 for Autonomous driving and advanced driver-assistance systems (ADAS) comprising cameras, proximity sensors, brake controllers, audible alarms, detecting and warning devices in the nature of vehicle detection equipment for detecting vehicle location and electronic warning bells, electrical communication machines and instruments in the nature of communications servers, and downloadable computer software and computer hardware to control the aforesaid; cameras; antennas; electronic navigation apparatus and instruments for autonomous driving; GPS navigation devices; automotive advanced driver-assistance systems (ADAS) proximity sensors; sensors for use in controlling the drive and operation of safety devices and equipment for motor vehicles, namely, optical sensors, radar sensors, electronic sensors for detecting, processing and recognizing traffic signs, traffic signals, and vehicular brake lights and turn signals; measuring, detection, monitoring, testing and controlling instruments, devices and controllers, namely, vehicular speedometers, brake controllers, electronic steering controllers, mileage recorders, cruise controls, electronic controls for vehicle speed, data processing units, computer hardware, downloadable firmware and downloadable software for monitoring conditions within a vehicular system and controlling functions of vehicles; obstacle detecting and warning devices comprised of radar apparatus, camera, electronic display interfaces, acoustic sound alarm, and control unit for detecting, displaying and warning of obstacles to motor vehicles; video monitors; electrical communication machines and instruments, namely, wireless telephony apparatus, radio transmitters and receivers, and computer hardware and software for use with motor vehicles autonomous driving and advanced driver-assistance systems (ADAS); computer hardware and downloadable computer software for use with vehicular autonomous driving, safety systems; on-board electronic systems in vehicles comprised of computer hardware and downloadable computer software for providing driving assistance; computer hardware and downloadable software for driver monitoring
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following:

Current:
Class 037 for Computer installation services for autonomous driving; installation, maintenance and repair of computer hardware for autonomous driving; installation services in the nature of assembly of parts into motor vehicles; vehicle customization services, namely, installation of necessary electronic and other equipment into vehicles in order to support autonomous driving technology
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Computer installation services for autonomous driving; installation, maintenance and repair of computer hardware for autonomous driving; installation services in the nature of assembly of parts into motor vehicles; installation services, namely, installation of computer equipment parts into motor vehicles vehicle customization services, namely, installation of necessary electronic and other equipment into vehicles in order to support autonomous driving technology; vehicle customization services, namely, installation of necessary electronic and other equipment into vehicles in order to support autonomous driving technologyClass 037 for Computer installation services for autonomous driving; installation, maintenance and repair of computer hardware for autonomous driving; installation services, namely, installation of computer equipment parts into motor vehicles vehicle customization services, namely, installation of necessary electronic and other equipment into vehicles in order to support autonomous driving technology
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following:

Current:
Class 042 for Computer programming for autonomous driving; design, engineering and consultancy services relating to vehicles, vehicle parts, the autonomous driving systems, and advanced driver-assistance systems (ADAS), and components; research, development, design and upgrading of computer software and computer systems for autonomous driving; research, development, design and upgrading services in the field of motor vehicles, autonomous driving and advanced driver-assistance systems (ADAS); design, maintenance and update of computer software for use in the automotive industry for autonomous driving; Software as a Service (SaaS) featuring software for autonomous driving and advanced driver-assistance systems (ADAS); design and development of devices, instruments and equipment for wireless data transmission for use in the autonomous driving and advanced driver-assistance systems (ADAS) fields
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Computer programming for autonomous driving; design, engineering and consultancy services relating to vehicles, vehicle parts, the autonomous driving systems, and advanced driver-assistance systems (ADAS), and components; design, engineering and technological consultancy services relating to vehicles, vehicle parts, the autonomous driving systems, and advanced driver-assistance systems (ADAS), and components; research, development, design and upgrading of computer software and computer systems for autonomous driving; research, development, design and upgrading services in the field of motor vehicles, autonomous driving and advanced driver-assistance systems (ADAS); design, maintenance and update of computer software for use in the automotive industry for autonomous driving; Software as a Service (SaaS) featuring software for autonomous driving and advanced driver-assistance systems (ADAS); design and development of devices, instruments and equipment for wireless data transmission for use in the autonomous driving and advanced driver-assistance systems (ADAS) fieldsClass 042 for Computer programming for autonomous driving; design, engineering and technological consultancy services relating to vehicles, vehicle parts, the autonomous driving systems, and advanced driver-assistance systems (ADAS), and components; research, development, design and upgrading of computer software and computer systems for autonomous driving; research, development, design and upgrading services in the field of motor vehicles, autonomous driving and advanced driver-assistance systems (ADAS); design, maintenance and update of computer software for use in the automotive industry for autonomous driving; Software as a Service (SaaS) featuring software for autonomous driving and advanced driver-assistance systems (ADAS); design and development of devices, instruments and equipment for wireless data transmission for use in the autonomous driving and advanced driver-assistance systems (ADAS) fields
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Pronto.ai, Inc., a corporation of Delaware, having an address of
      1186 Folsom Street
      San Francisco, California 94103
      United States
      Email Address: XXXX

Proposed: Pronto.ai, Inc., a corporation of Delaware, having an address of
      1186 Folsom Street
      San Francisco, California 94103
      United States
      Email Address: XXXX
Correspondence Information (current):
      DEBORAH J. PECKHAM
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@burnslev.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 54751.0 T01.
Correspondence Information (proposed):
      Deborah J. Peckham
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@burnslev.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 54751.0 T01.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Deborah J. Peckham/     Date: 10/01/2020
Signatory's Name: Deborah J. Peckham
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 617-345-3000

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    DEBORAH J. PECKHAM
   BURNS & LEVINSON LLP
   
   125 HIGH STREET
   BOSTON, Massachusetts 02110
Mailing Address:    Deborah J. Peckham
   BURNS & LEVINSON LLP
   125 HIGH STREET
   BOSTON, Massachusetts 02110
        
Serial Number: 88761291
Internet Transmission Date: Thu Oct 01 12:37:15 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202010011237151
68330-88761291-7503c6fdc992563ce13e35467
33c32a451fb12b18cda733eab753ac410a6f6c2b
-N/A-N/A-20201001095302217411