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. 88801514 CABANA(Standard Characters, see http://uspto.report/TM/88801514/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: Response and supporting evidence
Original PDF file:
evi_6677102222-2020100513 1948351315_._201005_CABAN A_Office_Action_Response.pdf
Converted PDF file(s) ( 16 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable mobile applications for providing information about motor vehicles for temporary use; downloadable mobile applications for providing transportation and logistics services, bookings for transportation services, and dispatching motor vehicles to customers; downloadable mobile applications for use in scheduling, planning, organizing, managing, and providing temporary use of motor vehicles
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: Downloadable mobile applications for providing information about motor vehicles for temporary use; Downloadable mobile applications for providing information about motorized land vehicles for temporary use; downloadable mobile applications for providing transportation and logistics services, bookings for transportation services, and dispatching motor vehicles to customers; downloadable mobile applications for providing motorized land vehicle transportation and logistics services, bookings for motorized land vehicle transportation services, and dispatching motorized land vehicles to customers; downloadable mobile applications for use in scheduling, planning, organizing, managing, and providing temporary use of motor vehicles; downloadable mobile applications for use in scheduling, planning, organizing, managing, and providing temporary use of motorized land vehiclesClass 009 for Downloadable mobile applications for providing information about motorized land vehicles for temporary use; downloadable mobile applications for providing motorized land vehicle transportation and logistics services, bookings for motorized land vehicle transportation services, and dispatching motorized land vehicles to customers; downloadable mobile applications for use in scheduling, planning, organizing, managing, and providing temporary use of motorized land vehicles
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 039 for Vehicle rental services; reservation services for the rental and sharing of vehicles; provision of information and advisory and consultancy services in relation to the aforesaid services
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: Vehicle rental services; Motorized land vehicle rental services; reservation services for the rental and sharing of vehicles; reservation services for the rental and sharing of motorized land vehicles; provision of information and advisory and consultancy services in relation to the aforesaid servicesClass 039 for Motorized land vehicle rental services; reservation services for the rental and sharing of motorized land vehicles; provision of information and advisory and consultancy services in relation to the aforesaid services
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 Providing temporary use of non-downloadable software for use in providing transportation and logistics services, bookings for transportation services, and dispatching motor vehicles to customers; providing temporary use of non-downloadable software for use in scheduling, planning, organizing, managing, and providing temporary use of motor vehicles; providing platform as a service (PAAS) services featuring software platforms for use in inventory and fleet management for use in the motor vehicle rental field; providing temporary use of non-downloadable software that provides web-based access to applications and services through a web operating system and portal interface, namely, software for use in scheduling, planning, organizing, managing, and providing temporary use of motor vehicles
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: Providing temporary use of non-downloadable software for use in providing transportation and logistics services, bookings for transportation services, and dispatching motor vehicles to customers; Providing temporary use of non-downloadable software for use in providing motorized land vehicle transportation and logistics services, bookings for motorized land vehicle transportation services, and dispatching motor motorized land vehicles to customers; providing temporary use of non-downloadable software for use in scheduling, planning, organizing, managing, and providing temporary use of motor vehicles; providing temporary use of non-downloadable software for use in scheduling, planning, organizing, managing, and providing temporary use of motorized land vehicles; providing platform as a service (PAAS) services featuring software platforms for use in inventory and fleet management for use in the motor vehicle rental field; providing platform as a service (PAAS) services featuring software platforms for use in inventory and fleet management for use in the motorized land vehicle rental field; providing temporary use of non-downloadable software that provides web-based access to applications and services through a web operating system and portal interface, namely, software for use in scheduling, planning, organizing, managing, and providing temporary use of motor vehicles; providing temporary use of non-downloadable software that provides web-based access to applications and services through a web operating system and portal interface, namely, software for use in scheduling, planning, organizing, managing, and providing temporary use of motorized land vehiclesClass 042 for Providing temporary use of non-downloadable software for use in providing motorized land vehicle transportation and logistics services, bookings for motorized land vehicle transportation services, and dispatching motor motorized land vehicles to customers; providing temporary use of non-downloadable software for use in scheduling, planning, organizing, managing, and providing temporary use of motorized land vehicles; providing platform as a service (PAAS) services featuring software platforms for use in inventory and fleet management for use in the motorized land vehicle rental field; providing temporary use of non-downloadable software that provides web-based access to applications and services through a web operating system and portal interface, namely, software for use in scheduling, planning, organizing, managing, and providing temporary use of motorized land vehicles
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 043 for Rental of temporary accommodations; booking of temporary accommodations; providing online reservations and bookings for temporary lodging and accommodations
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: Rental of temporary accommodations; Rental of temporary accommodations in the nature of motorized land vehicles; booking of temporary accommodations; booking of temporary accommodations in the nature of motorized land vehicles; providing online reservations and bookings for temporary lodging and accommodations; providing online reservations and bookings for temporary lodging and accommodations in the nature of motorized land vehiclesClass 043 for Rental of temporary accommodations in the nature of motorized land vehicles; booking of temporary accommodations in the nature of motorized land vehicles; providing online reservations and bookings for temporary lodging and accommodations in the nature of motorized land vehicles
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.
Correspondence Information (current):
      CRAIG A. BEAKER
      PRIMARY EMAIL FOR CORRESPONDENCE: pctrademarks@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cbeaker@perkinscoie.com

The docket/reference number is 135148-4000.
Correspondence Information (proposed):
      Craig A. Beaker
      PRIMARY EMAIL FOR CORRESPONDENCE: pctrademarks@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cbeaker@perkinscoie.com

The docket/reference number is 135148-4000.

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: /Craig A. Beaker/     Date: 10/05/2020
Signatory's Name: Craig A. Beaker
Signatory's Position: Attorney of Record, Perkins Coie LLP, Colorado Bar Member

Signatory's Phone Number: 303-291-2300

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:    CRAIG A. BEAKER
   PERKINS COIE LLP
   SUITE 4900
   1201 THIRD AVENUE
   SEATTLE, Washington 98101
Mailing Address:    Craig A. Beaker
   PERKINS COIE LLP
   SUITE 4900
   1201 THIRD AVENUE
   SEATTLE, Washington 98101
        
Serial Number: 88801514
Internet Transmission Date: Mon Oct 05 13:26:32 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020100513263282
3106-88801514-7504be41c9c4c3ef8dbd84baca
962c551152d48e8248c53411c5d4eec0dde14473
-N/A-N/A-20201005131948351315