Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90022224 LUX(Standard Characters, see http://uspto.report/TM/90022224/mark.png) has been amended as follows:

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

Please see a written argument attached as a .pdf in the Evidence Section

EVIDENCE
Evidence has been attached: A written response and Exhibits A-D, consisting of online articles
Original PDF file:
evi_9765103130-2021032919 4358697588_._2GS1452.PDF
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6
Original PDF file:
evi_9765103130-2021032919 4358697588_._2GS1456.PDF
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_9765103130-2021032919 4358697588_._2GS1453.PDF
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5
Original PDF file:
evi_9765103130-2021032919 4358697588_._2GS1455.PDF
Converted PDF file(s) ( 10 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10
Original PDF file:
evi_9765103130-2021032919 4358697588_._2GS1454.PDF
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 012 for Automobiles; transportation robots, namely, robotic transport vehicles; self-driving transport vehicles; unmanned conveying land vehicles; electric vehicles; passenger carrying vehicles; driverless cars; industrial vehicles; land transportation and mobility vehicles; mobility conveyances, namely, automated people movers in the nature of multi-passenger wheeled robotic vehicles; transport vehicles, namely, autonomous vehicles for transport; autonomous cars; autonomous land vehicles; remote control vehicles; motors and engines for land vehicles; automatic steering apparatus for vehicles; land vehicle parts and accessories for safety; land vehicles; motor vehicles, namely, concept motor vehicles; vehicle camera mount
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: Automobiles; transportation robots, namely, robotic transport vehicles; self-driving transport vehicles; unmanned conveying land vehicles; electric vehicles; passenger carrying vehicles; driverless cars; industrial vehicles; land transportation and mobility vehicles; mobility conveyances, namely, automated people movers in the nature of multi-passenger wheeled robotic vehicles; mobility conveyances namely, automated people movers in the nature of multi-passenger wheeled robotic vehicles; transport vehicles, namely, autonomous vehicles for transport; autonomous cars; autonomous land vehicles; remote control vehicles; motors and engines for land vehicles; automatic steering apparatus for vehicles; land vehicle parts and accessories for safety; land vehicles; motor vehicles, namely, concept motor vehicles; vehicle camera mount; land vehicle parts and accessories for safety, namely, lighting apparatus, lighting system, and lighting configuration used to communicate and signal pedestrians; none of the foregoing for use in connection with golf carts or low-speed electric vehiclesClass 012 for Automobiles; transportation robots, namely, robotic transport vehicles; self-driving transport vehicles; unmanned conveying land vehicles; electric vehicles; passenger carrying vehicles; driverless cars; industrial vehicles; land transportation and mobility vehicles; mobility conveyances namely, automated people movers in the nature of multi-passenger wheeled robotic vehicles; transport vehicles, namely, autonomous vehicles for transport; autonomous cars; autonomous land vehicles; remote control vehicles; motors and engines for land vehicles; automatic steering apparatus for vehicles; land vehicle parts and accessories for safety; land vehicles; motor vehicles, namely, concept motor vehicles; vehicle camera mount; land vehicle parts and accessories for safety, namely, lighting apparatus, lighting system, and lighting configuration used to communicate and signal pedestrians; none of the foregoing for use in connection with golf carts or low-speed electric 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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 041 for 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
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:
Class 041 for 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
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 042 for 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
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:
Class 042 for 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
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      Rhett V. Barney
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@leehayes.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhettb@leehayes.com; karig@leehayes.com

The docket/reference number is Z019-5066TMU.
Correspondence Information (proposed):
      Rhett V. Barney
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@leehayes.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhettb@leehayes.com; karig@leehayes.com

The docket/reference number is Z019-5066TMU.

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: /Rhett Barney/     Date: 03/29/2021
Signatory's Name: Rhett V. Barney
Signatory's Position: Attorney of Record, WA State Bar Member

Signatory's Phone Number: 509-944-4642 Signature method: Sent to third party for signature

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:    Rhett V. Barney
   Lee & Hayes, PC
   
   601 W. Riverside Ave. Suite 1400
   Spokane, Washington 99201
Mailing Address:    Rhett V. Barney
   Lee & Hayes, PC
   601 W. Riverside Ave. Suite 1400
   Spokane, Washington 99201
        
Serial Number: 90022224
Internet Transmission Date: Mon Mar 29 19:53:34 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2021032919533467
1237-90022224-770c865c235fbfb735c786529c
285bc357610fa5aaf497a2bbde1c7c6682ac4d8f
2-N/A-N/A-20210329194358697588