To: | Motus, LLC (suzann@themoskowitzfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88800610 - MOTUS - 346 |
Sent: | May 11, 2020 02:09:11 PM |
Sent As: | ecom126@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
U.S. Application Serial No. 88800610
Mark: MOTUS
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Correspondence Address:
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Applicant: Motus, LLC
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Reference/Docket No. 346
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: May 11, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF USPTO DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02. However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
PRIOR-FILED APPLICATION – ADVISORY
The filing date of pending U.S. Application Serial No. 88440574 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.
Notwithstanding the above, applicant must address the requirements below.
IDENTIFICATION OF GOODS & SERVICES – REQUIRED
There are multiple issues with the applicant’s identification of goods and services that must be addressed. While the examining attorney only highlights some of the larger issues immediately below, the examiner provides guidance for each issue in the suggested language further below.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Third, applicant must clarify the wording “Business management consultation services, conducting marketing studies, and commercial computer network services, namely, data collection, statistical analysis, and providing a website featuring reporting and recommendations concerning business vehicles, insurance policy and coverage information and recommendations, devices and expenses for business purposes” in the identification of services in International Class 35 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the applicant appears to smash together numerous different types of services by using the conjunction “and” which makes this entry unclear as to whether they are all the same service or several different services. Further, this wording could identify services in more than one international class. In particular, business management consultation services are in Class 35, but applicant’s wording “providing a website featuring reporting and recommendations concerning business vehicles, insurance policy and coverage information and recommendations, devices and expenses for business purposes” is completely unclear as to which class this falls under. Generally, a website featuring recommendations falls into multiple classes based on the type(s) of recommendations, further, if the website features technology for users to access information, then that would be a Class 42 service.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
The examiner has also suggested other amendments to provide better clarity overall.
Applicant may adopt the following wording, if accurate (additions appear in bold underline font; deletions appear in bold strikethrough font):
CLASS 9 –Downloadable software used on mobile devices for tracking and managing vehicle and device information, including , namely, mileage for purposes of reimbursement and field worker activity tracking; , Downloadable mobile applications for reimbursement, calculation, administering, and tracking vehicle mileage, telecommunications expenses, and business expenses; Downloadable mobile apps for collecting vehicle information, insurance policy and coverage information, discounts and payment on fuel and related discount programs; downloadable cloud-based software for vehicle and mobile device information analysis, device procurement, discounts and payment on fuel and related discount programs
CLASS 35 – Business management of reimbursement programs for others Administering vehicle, device and business expense
management and reimbursement programs for purposes of reimbursing employees for business use of personal assets or tracking personal use of business assets; Business management consultation
services, conducting marketing studies; commercial computer network services, namely, data collection and statistical analysis
for business purposes in the fields of {specify the fields, e.g., medicine, healthcare, etc.}; Business consultancy services,
namely, consulting in the field of managed mobility services (MMS) which includes and telecom expense management (TEM); business management of logistics for others, namely, consulting in the fields of mobile device management (MDM), mobile application management (MAM), device as a services
(DaaS), and IoT device and expense management; Administration of mobile worker discount, procurement and/or rewards programs for enabling
employee participants to purchase mobility-related goods and services; Business administration of consumer loyalty programs, namely, fuel
card programs; administration of insurance discount programs in the nature of administration of a customer loyalty program which provides discounts on insurance; Fuel
card programs in the nature of {specify the nature of these programs, e.g., providing incentive award programs fro
customers through issuance and processing of loyalty points for purchase of a company’s goods and services
CLASS 41 – Driver safety and training programs; administration of corporate-based driver safety and driving risk management programs in the nature of providing driver safety training
CLASS 42 – computer software development services for others for purposes of employee expense reimbursement in the fields of vehicle reimbursement
programs and expense management solutions; Providing on-line non-downloadable software for collecting, editing, organizing, compiling, comparing, modifying, transmitting, and storing data and
information in the field of business vehicles and mobility expenses; providing on-line non-downloadable software for tracking and management of insurance policy and coverage
information, Managed Mobility Services (MMS), which includes: Telecom Expense Management (TEM), Mobile Device Management (MDM), Mobile Application Management (MAM), Device as a
Service (DaaS), and IoT device and expense management; providing temporary use of non-downloadable cloud-based software for vehicle and mobile device information
analysis, device procurement, discounts and payment on fuel and related discount programs; Providing an interactive website featuring reporting and recommendations technology that enables users to access information and reports concerning business vehicles, insurance policy and
coverage information and recommendations, devices and expenses for business purposes
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least four (4) classes; however, applicant submitted a fee sufficient for only three (3) classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for Class 9, 35, and 42; and applicant needs a specimen for Class 41. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
RESPONSE GUIDELINES
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Kyle Aurand/
Kyle Aurand
Trademark Examining Attorney
Law Office 126
(571) 270-3039
kyle.aurand@uspto.gov
RESPONSE GUIDANCE