Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA799382
`02/03/2017
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Uber Technologies, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/15/2017
`
`1455 Market Street, 4th Floor
`San Francisco, CA 94103
`UNITED STATES
`
`Sally M. Abel, Stephen Garcia
`Fenwick & West LLP
`801 California Street Silicon Valley Center
`Mountain View, CA 94041
`UNITED STATES
`trademarks@fenwick.com Phone:650-988-8500
`
`Applicant Information
`
`Application No
`
`87022254
`
`Publication date
`
`10/18/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`02/03/2017
`
`Opposition Peri-
`od Ends
`
`02/15/2017
`
`TOTAL.CARE HOLDINGS, LLC
`1706 South 500 West, Ste. 100
`Bountiful, UT 84010
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Management of telephone call centers for
`others; Operation of telephone call centers for others; Outsourcing services in the nature of arranging
`service contracts for others in the field of home careand hospice
`
`Class 044. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Consulting services in the field of medical
`care; Hospice services; Medical consultations; Medical and pharmaceutical consultation; Medical as-
`sistance; Medicalassistance consultancy provided by doctors and other specialized medical person-
`nel; Medical assistance services; Medical consultations; Medical house call services; Medical con-
`sultations provided viaphone, online chat or videoconferencing; Nursing, medical; Providing medical
`information, consultancy and advisory services; Providing an internet web site formedical profession-
`als and medical patients featuring information relating to sleep apnea and related diagnostic data in-
`put from remote locations via electronicpatient monitoring devices that feed information to the web
`site for use by medical professionals for purposes of monitoring and diagnosing medical condi-
`tions;Providing an internet website for medical professionals and medical patients featuring medical
`information from remote locations via devices that feed information to the website that is processed,
`exchanged and accessed in real-time by users; Providing an internet website for medical profession-
`als and medical patientsfeaturing medical information from remote locations via electronic patient
`
`

`

`monitoring devices that feed in formation tothe web site that can be accessed in real-time by medical
`professionals for purposes of monitoring and diagnosing medical conditions; Providing an internet-
`based database of patient medical information where patients can inquire about medical issues and
`procedures from other patients and can relay information about their medical experiences for support
`and community; Providing limited in-home personal medical services for individuals including check-
`ing vital signs, medication compliance and individual hygiene, checking medical equipment and sup-
`plies, and providing on-line information related to these personal medical services; Provision of med-
`ical services by health careprofessionals via the internet or telecommunication networks
`
`Class 045. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Case management services, namely, co-
`ordination of legal, social and psychological services for elderly persons; Case management ser-
`vices, namely, the coordination of necessary medical services, vocational issues and educational ser-
`vices for persons injured at work; In-home support services to senior persons, namely, geriatric care
`management services in thenature of the coordination of necessaryservices and personal care for
`older individuals; Non-medical in-home personal care services for assisting with daily living activities
`of disabled persons andthe elderly; Providing case management services, namely, coordinating legal,
`medical, physical, social, personal care and psychological services for disabled persons and the eld-
`erly; Providing non-medical assisted living services for personal purposes in the nature of
`schedulingappointments, answering the telephone, checking messages, mail sorting, mail handling,
`mail receiving and secretarial and clerical services; Providing non-medical in-home personal services
`for individuals including checking home condition,supplies and individual well-being, scheduling ap-
`pointments, running errands, making safety checks, and providing on-line information related to these
`personalservices; Providing non-medical personal assistant services for others in the nature of plan-
`ning, organizing, coordinating, arranging and assisting individualsto perform daily tasks; Providing
`personal support services for caregivers, partners, wives and husbands of the chronically ill and/or
`disabled, namely, companionship and emotional support; Providingpersonal support services for fam-
`ilies of patients with life threatening disorders, namely, companionship, help with medical forms, emo-
`tional counseling and emotional support; Providing personal support services for patients and families
`of patients, namely, emotional counselingand emotional support; Providing personal support services
`for families of patients with life threatening disorders, namely, companionship, help with medical
`forms, emotional counseling and emotionalsupport
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Section 2(a)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3977893
`
`Registration Date
`
`06/14/2011
`
`Word Mark
`
`UBER
`
`Application Date
`
`11/05/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/10/28 First Use In Commerce: 2010/10/28
`Computer software for coordinating transportation services, namely, software for
`the automated scheduling and dispatch of motorized vehicles
`Class 038. First use: First Use: 2010/10/28 First Use In Commerce: 2010/10/28
`Telecommunications services, namely, routing calls, SMS messages, and push-
`notifications to local third-party motorizedvehicle dispatchers in the vicinity of the
`caller using mobile phones
`Class 039. First use: First Use: 2010/10/28 First Use In Commerce: 2010/10/28
`Providing a website featuring information regarding transportation services and-
`bookings for transportation services
`Class 042. First use: First Use: 2010/10/28 First Use In Commerce: 2010/10/28
`Providing temporary use of online non-downloadable software for providing
`transportation services, bookings for transportation services and dispatching
`motorized vehicles to customers
`
`U.S. Registration
`No.
`
`4794482
`
`Registration Date
`
`08/18/2015
`
`Word Mark
`
`Design Mark
`
`UBERHEALTH
`
`Application Date
`
`01/06/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2013/10/01 First Use In Commerce: 2013/10/01
`Healthcare
`
`U.S. Registration
`No.
`
`4837495
`
`Registration Date
`
`10/20/2015
`
`Application Date
`
`02/20/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`UBERX
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/07/04 First Use In Commerce: 2012/07/04
`Computer software for coordinating transportation services, namely, software for
`the automated scheduling and dispatch of motorized vehicles
`Class 038. First use: First Use: 2012/07/04 First Use In Commerce: 2012/07/04
`Telecommunications services, namely, routing calls, SMS messages, and push-
`notifications to local third-party motorizedvehicle operators in the vicinity of the
`caller using mobile phones
`Class 039. First use: First Use: 2012/07/04 First Use In Commerce: 2012/07/04
`Providing a website featuring information regarding transportation services and-
`bookings for transportation services; transport by motorized vehicles; travel ar-
`rangement, namely, arranging vehicle transportation
`Class 042. First use: First Use: 2012/07/04 First Use In Commerce: 2012/07/04
`Providing temporary use of online non-downloadable software for providing
`transportation services, bookings for transportation services and for dispatching
`motorized vehicles to customers; design anddevelopment of computer software
`
`U.S. Registration
`No.
`
`4856316
`
`Registration Date
`
`11/17/2015
`
`Word Mark
`
`Design Mark
`
`UBERRUSH
`
`Application Date
`
`04/11/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2014/04/07 First Use In Commerce: 2014/04/07
`Computer software for coordinating transportation and delivery services; com-
`puter software for providing information ontransportation and delivery services;
`computer software for the scheduling and dispatch of motorized vehicles, couri-
`ers, and messengers; computer software for planning, scheduling, controlling,
`
`

`

`monitoring, and providing information on transportation of assets and goods;
`computersoftware for providing information concerning pick-up and delivery of
`assets and goods in transit; computer software that enables customers to com-
`municate withmotorized vehicle operators, couriers, and messengers; computer
`software that enables customers to manage and track pickup and delivery of as-
`sets and goods
`Class 038. First use: First Use: 2014/04/07 First Use In Commerce: 2014/04/07
`Telecommunications services, namely, routing calls, text messages, and push-
`notifications to local third-party motorized vehicle operators, couriers, and mes-
`sengers in the vicinity of the caller using mobile phones; telecommunications
`services, namely, routing calls, text messages, and push-notifications to custom-
`ers
`Class 039. First use: First Use: 2014/04/07 First Use In Commerce: 2014/04/07
`Providing a website featuring information regarding transportation and deliv-
`eryservices and bookings for transportation and delivery services; transport by
`motorized vehicles; pick-up, transportation, delivery, and storage of goods,
`packages, parcels, and messages; travel arrangement, namely, arranging
`vehicle transportation; courier services; messenger services; document delivery;
`express delivery of goods, packages, and messages by motorized vehicles;
`providing information concerning pick-up and delivery of assets and goods in
`transit; transportationreservation services; transportation consulting services;
`transportation of assets and goods
`Class 042. First use: First Use: 2014/04/07 First Use In Commerce: 2014/04/07
`Providing temporary use of online non-downloadable software for providing
`transportation and delivery services, bookings for transportation and delivery
`services and for dispatching motorized vehicles, couriers, and messengers to
`customers; providing temporary use of online non-downloadable software for
`planning, scheduling, controlling, monitoring, and providing information on trans-
`portation of assets and goods; providing temporary use of online non-
`downloadable software for providing information concerning pick-up and delivery
`of assets and goods in transit; providing a web site featuring non-downloadable
`software that enables customers to communicate with motorized vehicle operat-
`ors, couriers, and messengers; providing a web site featuring non-downloadable
`software that enables customers to manage and track pickup and delivery of as-
`sets and goods; design and development of computer software
`
`U.S. Registration
`No.
`
`5042023
`
`Registration Date
`
`09/13/2016
`
`Word Mark
`
`Design Mark
`
`UBEREATS
`
`Application Date
`
`02/20/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`Goods/Services
`
`Class 009. First use: First Use: 2015/12/09 First Use In Commerce: 2015/12/09
`
`

`

`Computer software for engaging and coordinating transportation services; com-
`puter software for engaging and coordinating delivery services
`Class 035. First use: First Use: 2016/06/09 First Use In Commerce: 2016/06/09
`Advertising and promotional services; business management; business adminis-
`tration; business administration in the field of transport and delivery; business
`management services in the field of transport and delivery; computerized food
`and grocery ordering services; computerized ordering service featuring con-
`sumer goods of others, food, and groceries; on-line ordering service featuring
`consumer goods of others, food, and groceries; office functions; on-line retail
`store services featuring consumer goods of others, food, and groceries; on-line
`grocery store services; comparison shopping services; monitoring, managing
`and tracking of package shipments; monitoring and tracking of package ship-
`ments to ensure on-time delivery for business purposes; business management
`consulting services in thefield of transportation and delivery; providing a web-
`based system and online portals in the field of consumer-to-business commerce
`for consumers to enter, manage and modify their consumer preferenceinforma-
`tion for use by merchants to create and manage offers for delivery to consumers
`Class 038. First use: First Use: 2015/12/09 First Use In Commerce: 2015/12/09
`Telecommunications services, namely, routing calls, SMS messages, and push-
`notifications to local third-party motorizedvehicle operators and food and grocery
`delivery agents in the vicinity of the caller using mobile phones; telecommunica-
`tion services, namely, routing calls, SMS messages and push-notifications to re-
`tail and delivery services; telecommunications
`Class 039. First use: First Use: 2015/12/09 First Use In Commerce: 2015/12/09
`Providing a website featuring information regarding delivery services and book-
`ings for delivery services; transport; packaging and storage of goods; food deliv-
`ery; parcel delivery; transport and delivery of goods; message delivery; express-
`delivery of goods by vehicles; providing information concerning collection and
`delivery of assets in transit; delivery services; temporary storage of deliveries;
`transportation and delivery services by road; providing information and tracking
`information to third parties regarding pickup and delivery status via Internet ac-
`cess and telephone; follow-up services, namely, providing electronic tracking of
`packages to others
`Class 042. First use: First Use: 2016/06/09 First Use In Commerce: 2016/06/09
`Providing temporary use of online non-downloadable software for providing
`transportation and delivery services, bookings for transportation and delivery
`services and for dispatching motorized vehicles to customers; design and devel-
`opment of computer software
`
`Attachments
`
`85170655#TMSN.png( bytes )
`86496538#TMSN.png( bytes )
`86198791#TMSN.png( bytes )
`86250398#TMSN.png( bytes )
`86541663#TMSN.png( bytes )
`UBERNURSE.CARE Notice of Opposition--87022254.pdf(204569 bytes )
`
`Signature
`
`/sabel/
`
`Name
`
`Date
`
`Sally M. Abel, Stephen Garcia
`
`02/03/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`)
`)
`) Opposition No. ______________________
`)
`)
`)
`)
`)
`
`In the matter of
`Trademark App. Ser. No. 87/022254
`Filed: May 03, 2016
`Published: Oct. 18, 2016
`Mark: UBERNURSE.CARE (and design)
`
`Uber Technologies, Inc.,
`
`Opposer,
`
` vs.
`
`Total.Care Holdings, LLC,
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`1. On May 3, 2016, Total.Care Holdings, LLC (“Applicant”) filed Application Serial No.
`
`87/022254 based on its intent to use the UBERNURSE.CARE (and design) mark for:
`
`Class 35: Management of telephone call centers for others; Operation of telephone call
`
`centers for others; Outsourcing services in the nature of arranging service contracts for
`
`others in the field of home care and hospice;
`
`Class 44: Consulting services in the field of medical care; Hospice services; Medical
`
`consultations; Medical and pharmaceutical consultation; Medical assistance; Medical
`
`assistance consultancy provided by doctors and other specialized medical personnel;
`
`Medical assistance services; Medical consultations; Medical house call services; Medical
`
`consultations provided via phone, online chat or videoconferencing; Nursing, medical;
`
`Providing medical information, consultancy and advisory services; Providing an internet
`
`web site for medical professionals and medical patients featuring information relating to
`
`sleep apnea and related diagnostic data input from remote locations via electronic patient
`
`1
`
`

`

`monitoring devices that feed information to the web site for use by medical professionals
`
`for purposes of monitoring and diagnosing medical conditions; Providing an internet
`
`website for medical professionals and medical patients featuring medical information
`
`from remote locations via devices that feed information to the website that is processed,
`
`exchanged and accessed in real-time by users; Providing an internet website for medical
`
`professionals and medical patients featuring medical information from remote locations
`
`via electronic patient monitoring devices that feed in formation to the web site that can be
`
`accessed in real-time by medical professionals for purposes of monitoring and diagnosing
`
`medical conditions; Providing an internet-based database of patient medical information
`
`where patients can inquire about medical issues and procedures from other patients and
`
`can relay information about their medical experiences for support and community;
`
`Providing limited in-home personal medical services for individuals including checking
`
`vital signs, medication compliance and individual hygiene, checking medical equipment
`
`and supplies, and providing on-line information related to these personal medical
`
`services; Provision of medical services by health care professionals via the internet or
`
`telecommunication networks;
`
`Class 45: Case management services, namely, coordination of legal, social and
`
`psychological services for elderly persons; Case management services, namely, the
`
`coordination of necessary medical services, vocational issues and educational services for
`
`persons injured at work; In-home support services to senior persons, namely, geriatric
`
`care management services in the nature of the coordination of necessary services and
`
`personal care for older individuals; Non-medical in-home personal care services for
`
`assisting with daily living activities of disabled persons and the elderly; Providing case
`
`2
`
`

`

`management services, namely, coordinating legal, medical, physical, social, personal care
`
`and psychological services for disabled persons and the elderly; Providing non-medical
`
`assisted living services for personal purposes in the nature of scheduling appointments,
`
`answering the telephone, checking messages, mail sorting, mail handling, mail receiving
`
`and secretarial and clerical services; Providing non-medical in-home personal services for
`
`individuals including checking home condition, supplies and individual well-being,
`
`scheduling appointments, running errands, making safety checks, and providing on-line
`
`information related to these personal services; Providing non-medical personal assistant
`
`services for others in the nature of planning, organizing, coordinating, arranging and
`
`assisting individuals to perform daily tasks; Providing personal support services for
`
`caregivers, partners, wives and husbands of the chronically ill and/or disabled, namely,
`
`companionship and emotional support; Providing personal support services for families
`
`of patients with life threatening disorders, namely, companionship, help with medical
`
`forms, emotional counseling and emotional support; Providing personal support services
`
`for patients and families of patients, namely, emotional counseling and emotional
`
`support; Providing personal support services for families of patients with life threatening
`
`disorders, namely, companionship, help with medical forms, emotional counseling and
`
`emotional support (“the Application”).
`
`Uber Technologies, Inc. (“Uber”), a Delaware corporation, is the owner of trademark
`
`registrations for the famous UBER and UBERX marks and the UBERHEALTH mark, as well as
`
`common law trademark rights in its UBER and UBER-based marks and names. Uber’s
`
`trademark rights in these marks predate the Application’s filing date. Consumers are likely to be
`
`confused as to source by Applicant’s registration and use of such a similar mark for such closely
`
`3
`
`

`

`related services. The registration of UBERNURSE.CARE (and design) would falsely suggest a
`
`connection between Applicant and Uber’s name and identity. Furthermore,
`
`UBERNURSE.CARE (and design) would dilute the distinctive quality of Uber’s famous UBER
`
`and UBER-based marks. Thus, Uber, its partners, and the general public will be damaged by the
`
`registration of UBERNURSE.CARE (and design).
`
`2. The Application was published for opposition in the Official Gazette on October 18,
`
`2016. Uber requested and was granted an extension of the deadline to oppose the Application
`
`until February 15, 2017.
`
`As additional grounds for opposition Uber alleges:
`
`3. Since 2009, Uber has used UBER as a trademark and a trade name in connection with
`
`its goods and services. In particular, Uber, an application and internet based technology platform
`
`company, offers the UBER smartphone application and services for connecting and facilitating
`
`communications between its users for arranging and scheduling travel and delivery logistics,
`
`including the arranging and scheduling of the delivery of healthcare services under the UBER
`
`and UBERHEALTH marks. Uber promotes the UBER and UBERHEALTH software and
`
`services on its website and through multiple social media accounts and other online outlets.
`
`Uber offers its goods and services throughout the United States and in many other countries.
`
`4. Uber is the owner of several U.S. Trademark Registrations for UBER-based marks,
`
`including, but not limited to:
`
`Trademark
`UBER
`
`Reg. No.
`3,977,893
`
`Full Goods and Services Descriptions
`9: Computer software for coordinating transportation services,
`namely, software for the automated scheduling and dispatch of
`motorized vehicles.
`
`Filing Date
`Nov. 5, 2010
`
`Reg. Date
`June 14, 2011
`
`
`
`38: Telecommunications services, namely, routing calls, SMS
`messages, and push-notifications to local third-party motorized
`
`4
`
`

`

`vehicle operators in the vicinity of the caller using mobile phones.
`
`
`
`39: Providing a website featuring information regarding
`transportation services and bookings for transportation services
`
`
`
`42: Providing temporary use of online non-downloadable software
`for providing transportation services, bookings for transportation
`services and for dispatching motorized vehicles to customers
`
`UBERHEALTH
`
`4,794,482
`
`44: Healthcare
`
`Jan. 6, 2015
`
`Aug. 18, 2015
`
`UBERX
`
`4,837,495
`
`9: Computer software for coordinating transportation services,
`namely, software for the automated scheduling and dispatch of
`motorized vehicles.
`
`Feb. 20, 2014 Oct. 20, 2015
`
`UBERRUSH
`
`4,856,316
`
`
`
`38: Telecommunications services, namely, routing calls, SMS
`messages, and push-notifications to local third-party motorized
`vehicle operators in the vicinity of the caller using mobile phones.
`
`
`
`39: Providing a website featuring information regarding
`transportation services and bookings for transportation services;
`transport by motorized vehicles; travel arrangement, namely,
`arranging vehicle transportation.
`
`
`
`42: Providing temporary use of online non-downloadable software
`for providing transportation services, bookings for transportation
`services and for dispatching motorized vehicles to customers;
`design and development of computer software.
`
`9: Computer software for coordinating transportation and delivery
`services; computer software for providing information on
`transportation and delivery services; computer software for the
`scheduling and dispatch of motorized vehicles, couriers, and
`messengers; computer software for planning, scheduling,
`controlling, monitoring, and providing information on
`transportation of assets and goods; computer software for
`providing information concerning pick-up and delivery of assets
`and goods in transit; computer software that enables customers to
`communicate with motorized vehicle operators, couriers, and
`messengers; computer software that enables customers to manage
`and track pickup and delivery of assets and goods.
`
`
`
`38: Telecommunications services, namely, routing calls, text
`messages, and push-notifications to local third-party motorized
`
`5
`
`April 11,
`2014
`
`Nov. 17, 2015
`
`

`

`vehicle operators, couriers, and messengers in the vicinity of the
`caller using mobile phones; telecommunications services, namely,
`routing calls, text messages, and push-notifications to customers.
`
`
`
`39: Providing a website featuring information regarding
`transportation and delivery services and bookings for
`transportation and delivery services; transport by motorized
`vehicles; pick-up, transportation, delivery, and storage of goods,
`packages, parcels, and messages; travel arrangement, namely,
`arranging vehicle transportation; courier services; messenger
`services; document delivery; express delivery of goods, packages,
`and messages by motorized vehicles; providing information
`concerning pick-up and delivery of assets and goods in transit;
`transportation reservation services; transportation consulting
`services; transportation of assets and goods.
`
`
`
`42: Providing temporary use of online non-downloadable software
`for providing transportation and delivery services, bookings for
`transportation and delivery services and for dispatching motorized
`vehicles, couriers, and messengers to customers; providing
`temporary use of online non-downloadable software for planning,
`scheduling, controlling, monitoring, and providing information on
`transportation of assets and goods; providing temporary use of
`online non-downloadable software for providing information
`concerning pick-up and delivery of assets and goods in transit;
`providing a web site featuring non-downloadable software that
`enables customers to communicate with motorized vehicle
`operators, couriers, and messengers; providing a web site featuring
`non-downloadable software that enables customers to manage and
`track pickup and delivery of assets and goods; design and
`development of computer software.
`
`09: Computer software for engaging and coordinating
`transportation services; computer software for engaging and
`coordinating delivery services.
`
`35: Advertising and promotional services; business management;
`business administration; business administration in the field of
`transport and delivery; business management services in the field
`of transport and delivery; computerized food and grocery ordering
`services; computerized ordering service featuring consumer goods
`of others, food, and groceries; on-line ordering service featuring
`consumer goods of others, food, and groceries; office functions;
`on-line retail store services featuring consumer goods of others,
`food, and groceries; on-line grocery store services; comparison
`shopping services; monitoring, managing and tracking of package
`shipments; monitoring and tracking of package shipments to
`ensure on-time delivery for business purposes; business
`management consulting services in the field of transportation and
`delivery; providing a web-based system and online portals in the
`field of consumer-to-business commerce for consumers to enter,
`
`6
`
`UBEREATS
`
`5,042,023
`
`Feb. 20, 2015
`
`Sept. 13, 2016
`
`

`

`manage and modify their consumer preference information for use
`by merchants to create and manage offers for delivery to
`consumers.
`
`38: Telecommunications services, namely, routing calls, SMS
`messages, and push-notifications to local third-party motorized
`vehicle operators and food and grocery delivery agents in the
`vicinity of the caller using mobile phones; telecommunication
`services, namely, routing calls, SMS messages and push-
`notifications to retail and delivery services; telecommunications.
`
`39: Providing a website featuring information regarding delivery
`services and bookings for delivery services; transport; packaging
`and storage of goods; food delivery; parcel delivery; transport and
`delivery of goods; message delivery; express delivery of goods by
`vehicles; providing information concerning collection and delivery
`of assets in transit; delivery services; temporary storage of
`deliveries; transportation and delivery services by road; providing
`information and tracking information to third parties regarding
`pickup and delivery status via Internet access and telephone;
`follow-up services, namely, providing electronic tracking of
`packages to others.
`
`42: Providing temporary use of online non-downloadable software
`for providing transportation and delivery services, bookings for
`transportation and delivery services and for dispatching motorized
`vehicles to customers; design and development of computer
`software.
`
`
`
`5. Uber’s registrations for UBER, UBERHEALTH, UBERX, UBERRUSH, and
`
`UBEREATS are valid and are evidence of Uber’s exclusive rights to use the marks in commerce
`
`in connection with the goods and services specified therein. Attached as Exhibit A to this Notice
`
`of Opposition is a current printout of information from the electronic database records of the
`
`U.S. Patent and Trademark Office showing the current status and title of Registration Nos.
`
`3,977,893, 4,794,482, 4,837,495, 4,856,316, and 5,042,023.
`
`6. There is no issue as to priority. The filing dates and/or first use dates of Uber’s
`
`applications for UBERHEALTH, UBER, UBERX, UBERRUSH, and UBEREATS, are before
`
`the filing date of the Application.
`
`7
`
`

`

`7. Uber also owns several U.S. Trademark Applications for UBER-based marks,
`
`including:
`
`Trademark
`UBERESSENTIALS
`
`Serial No.
`86/433,957
`
`Filing Date
`Oct. 24, 2014
`
`Status
`Allowed
`
`Full Goods and Services Descriptions
`9: Computer software for engaging and coordinating
`transportation services; computer software for engaging and
`coordinating delivery services
`
`35: Advertising and promotional services; business management;
`business administration; business administration in the field of
`transport and delivery; business management services in the field
`of transport and delivery; computerized ordering service featuring
`consumer goods of others, personal care products, pharmaceutical
`products, food, and groceries; on-line ordering service featuring
`consumer goods of others, personal care products, pharmaceutical
`products, food, and groceries; providing office functions; on-line
`retail store services featuring consumer goods of others, personal
`care products, pharmaceutical products, food, and groceries;
`comparison shopping services; monitoring package shipments and
`deliveries for commercial purposes; monitoring and tracking of
`package shipments to ensure on-time delivery for business
`purposes; business management consulting services in the field of
`transportation and delivery; providing information and tracking
`information to third parties regarding pickup and delivery status
`via Internet access and telephone, namely, providing electronic
`tracking of delivery information to others; follow-up services,
`namely, providing computerized tracking and tracing of packages
`and documents in transit to ensure delivery; providing a web-
`based system and online portals in the field of consumer-to-
`business commerce for consumers to enter, manage and modify
`their consumer preference information for use by merchants to
`create and manage offers for delivery to consumers
`
`
`38: Telecommunications services, namely, routing calls, SMS
`messages, and push-notifications to local third-party motorized
`vehicle operators in the vicinity of the caller using mobile phones;
`telecommunication services, namely, routing calls, SMS messages
`and push-notifications to retail and delivery services
`
`39: Providing a website featuring information regarding
`transportation services and bookings for transportation services;
`transport by motorized vehicle; packagi