Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  September 29, 2020

 

 

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.

 

 

SEARCH RESULTS-PRIOR PENDING APPLICATIONS

 

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.

 

 

The filing dates of pending U.S. Application Serial Nos. 87148384, 87582763, 87582772, 87774508, 87774515, 87774523, 87774526, 87774530, 87774532, 87774540 and 88540858 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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 comply with the following procedural requirements:

 

 

IDENTIFICATION/CLASSIFICATION OF GOODS AND/OR SERVICES

 

Applicant has identified the following:

 

International Class 41: Educational services, namely, classes in the field of operating self-driving vehicles; 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; providing online non-downloadable articles via websites and blogs in the field of development, testing and deployment of autonomous vehicle services; providing publications in the nature of newsletters on autonomous vehicles; providing non-downloadable publications in the nature of newsletters on operating, 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; training services in the field of autonomous vehicle technical and mechanical systems

 

 

International Class 42: 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; providing use of online non-downloadable software for onboarding, operation, control, monitoring and processing data of autonomous vehicles; providing temporary use of online non-downloadable software for monitoring, actuating, controlling, or operating autonomous vehicles; providing temporary use of online non-downloadable software for the connection to computer networks of autonomous vehicles and for data analytics regarding the operation of autonomous vehicles; providing online non-downloadable software services for transportation services, namely, coordinating, booking, and dispatching autonomous vehicles; research and development into autonomous vehicles; providing a website featuring online non-downloadable software for scheduling and coordinating transportation services; software as a service (SAAS) services featuring software for managing, dispatching, navigating, controlling, notifying riders, and scheduling autonomous vehicle fleet

 

 

 

 

The above bolded wording in the identification of services is indefinite and must be clarified because the exact nature of the goods and services is unclear and overly broad and encompasses goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, the wording in International Class 41 could encompass downloadable publications in International Class 9. Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services and ensure that the goods and services are properly classified.  See TMEP §1402.01.  If there is no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses or the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s) for services.  See id.

 

 

Applicant may substitute the following wording, if accurate:

 

 

International Class 9:

 

Downloadable electronic publications in the nature of newsletters on autonomous vehicles

 

 

International Class 41:

 

Educational services, namely, classes in the field of operating self-driving vehicles; educational services, namely, online seminars in the field of autonomous vehicles and distribution of training material in connection therewith in the nature of online articles and media about autonomous vehicles and providing a website featuring a blog in the field of autonomous vehicles; providing online non-downloadable articles via websites and blogs in the field of development, testing and deployment of autonomous vehicle services; providing online non-downloadable publications in the nature of newsletters on autonomous vehicles; providing non-downloadable publications in the nature of newsletters on operating, 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; training services in the field of autonomous vehicle technical and mechanical systems

 

 

International Class 42:

 

Quality control of goods and services, namely, 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; providing use of online non-downloadable software for onboarding, operation, control, monitoring and processing data of autonomous vehicles; providing temporary use of online non-downloadable software for monitoring, actuating, controlling, or operating autonomous vehicles; providing temporary use of online non-downloadable software for the connection to computer networks of autonomous vehicles and for data analytics regarding the operation of autonomous vehicles; providing online non-downloadable software services for transportation services, namely, coordinating, booking, and dispatching autonomous vehicles; research and development into autonomous vehicles; providing a website featuring online non-downloadable software for scheduling and coordinating transportation services; software as a service (SAAS) services featuring software for managing, dispatching, navigating, controlling, notifying riders, and scheduling autonomous vehicle fleet

 

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

 

MULTI-CLASS APPLICATIONS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must 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 3 classes; however, applicant submitted a fee(s) sufficient for only 2 classes.  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.

 

 

/Katherine Weigle/

Examining Attorney

Law Office 101

U.S. Patent & Trademark Office

(571) 270-1506

katherine.weigle@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 29, 2020 for

U.S. Trademark Application Serial No. 90022153

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Katherine Weigle/

Examining Attorney

Law Office 101

U.S. Patent & Trademark Office

(571) 270-1506

katherine.weigle@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 29, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”