| Serial Number | 97786510 |
| Word Mark | W WHEELS |
| Filing Date | Wednesday, February 8, 2023 |
| Status | 645 - FINAL REFUSAL - MAILED |
| Status Date | Tuesday, August 13, 2024 |
| Registration Number | 0000000 |
| Registration Date | NOT AVAILABLE |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | NOT AVAILABLE |
| Goods and Services | Fleet vehicle driver environmental and safety training; Providing an online newsletter in the fields of vehicles and driver behavior, best practice tips and related news stories for drivers; Providing interactive training services to drivers and operators of commercial and government fleet vehicles through non-downloadable software accessed through computer hardware to evaluate a participant driver's skills and knowledge when compared to established best practices for fleet vehicle drivers |
| Description of Mark | The mark consists of the letter "W" in stylized format above the word "wheels". |
| Goods and Services | Vehicle telematics system comprised of electronic transmitters, receiver circuitry, microprocessors, radios, and downloadable computer software for transmission of data; Downloadable mobile software application in the field of driver behavior and vehicle health to improve fleet safety; Downloadable mobile software application in the field of fleet management for purposes of recording hours of service through an electronic logging device (ELD); Downloadable mobile software application in the field of fleet management for accessing vehicle and driver information, documents and notifications for purposes of productivity and compliance |
| Goods and Services | Fleet management services, namely, providing information regarding moving and storing excess vehicles; On-line fleet management service for vehicles; Corporate fleet vehicle leasing; leasing of motor vehicles |
| Goods and Services | Fleet vehicle maintenance, repairs and refueling services; Fleet vehicle maintenance and repair consultation, namely, administering vehicle repair and maintenance services for others; Providing data collection services, namely, reporting on vehicle maintenance data and repair costs and preparing customized reports from said data; Vehicle fleet management in the nature of online reporting services for fleet managers and drivers via the internet, namely, fleet management services in the nature of maintenance of fleet vehicles |
| Section 2(f) Limitation Statement | WHEELS has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| Goods and Services | Fleet vehicle lease financing; Providing financing on vehicle maintenance, repair and fuel purchases; Providing financing of other commercial fleet vehicle activities, namely, financing vehicle transportation costs and commercial vehicle acquisition costs; Providing financing of vehicle appraisals; Toll payment management services, namely, financial management services; Insurance claims management in the field of vehicle insurance, namely, insurance claims administration and processing |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Vehicle fleet management in the nature of online reporting services for fleet managers and drivers via the internet, namely, fleet management services in the nature of tracking of fleet vehicles for commercial purposes; Business management services in the field of administration of vehicle fleets; Locating and procuring of new and pre-owned vehicles available for purchase or lease for others; Fleet vehicle acquisition services for others; Providing assistance in re-marketing of fleet vehicles for others; Arranging the transport of fleet vehicles for others; Business consultation in the field of vehicle information services, namely, business consultation in the field of telematics and GPS technology used to track driver and vehicle actions; Providing tracking services and information concerning tracking of assets in transit, namely, vehicles, trailers, drivers, cargo and delivery containers for business inventory purposes; Business consultation services in the field of fleet management for purposes of cost management and efficiency; Administrative processing of state vehicular registration, title transfers and vehicular registration corrections for others; Administrative processing of documents to assist others in obtaining duplicate vehicular titles, namely, state vehicular title transfer services; Administrative processing and preparation of vehicular title transfer applications in connection with vehicle acquisitions and resales for others; Administrative processing of commercial vehicle registration renewals and license renewals for others; Providing data collection services in the nature of reporting on vehicle fuel consumption and preparing customized reports to assist fleet vehicle operators in reducing costs, namely, cost analyses; Providing wholesale auction data and information used as a benchmark for wholesale vehicle marketing and predictive modeling, namely, business research services; providing business information, also via internet, the cable network or other forms of data transfer; Distributorship services in the field of automobiles featuring previously leased automobiles which are then made available, after expiration of the lease term, to Applicant's clients for sale to the client's employees and to automobile dealerships for sale to customers; fleet management in the nature of inventory management, namely, monitoring corporate fleets of others consisting of previously leased automobiles which are then made available, after expiration of the lease term, to employees of the corporation and to automobile dealerships for sale to customers; fleet management services for vehicles, namely, reviewing and responding to vehicle service inquiries from operators of corporate vehicles, customizing vehicle maintenance schedules for fleets of vehicles owned by corporations, advising corporations on ordering new vehicles to supplement existing fleets, and ordering new vehicles to supplement existing fleets; Vehicle fleet management services, namely, development and implementation of individualized long term strategic fleet management plans for others in connection with analysis and consultation on cost management, supply chain management, risk assessment, field productivity, and fleet administration; Business Management Consultancy Services in the field of vehicle fleet management |
| Goods and Services | Accident investigations, namely, preparation of accident reports for others; Vehicle fleet monitoring services for safety purposes; Fuel management services in the field of vehicle fleet information and management; Consultation services, namely, collecting and reporting data relating to vehicle fuel consumption, vehicle emissions calculations and benchmarking information in the fleet industry for compliance with emissions laws and regulations; Providing a website featuring information in the field of compliance with emissions laws and regulations in the fleet industry |
| Goods and Services | Software as a service (SAAS) services utilizing historical, actual, projected and trend data to enable users to analyze, report on, evaluate and optimize financing and operational alternatives for vehicle fleet with regard to vehicle selection, vehicle replacement, vehicle costs, lease and financing factors, resale values, carbon emissions minimization and vehicle metrics used in fleet management; Software as a service (SAAS) services featuring software that provides a user with the ability to upload and organize vehicle data and then create customized reports based upon said data; Software as a service (SAAS) services featuring software to monitor individual driver and fleet performance, and perform predictive analysis for risk management purposes; Software as a service (SAAS) services featuring software for tracking, paying and managing vehicle violations in the field of fleet management; Software as a service (SAAS) services featuring software providing an interactive website featuring technology that allows car rental companies and fleet vehicle operators and drivers to monitor, manage and create reports; Providing a website featuring technology that enables users to pay tolls, monitor toll payment performance, and manage toll payments in the field of toll management for rental car companies, customers and fleet owners, operators and drivers; Platform as a service (PAAS) services featuring software to record and track communications, updates and resolutions with respect to fleet vehicle issues; Providing a website featuring information in the field of environmental assessment and planning practices as related to the fleet industry to assist owners of vehicle fleets in monitoring and reducing carbon emissions by providing carbon output information and vehicle lifecycle costs; Providing online non-downloadable mobile software application in the field of driver behavior and vehicle health to improve fleet safety; Providing online non-downloadable mobile software application in the field of fleet management for purposes of recording hours of service through an electronic logging device (ELD); Providing online non-downloadable mobile software application in the field of fleet management for accessing vehicle and driver information, documents and notifications for purposes of productivity and compliance |
| International Class | 009 - Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus. |
| US Class Codes | 021, 023, 026, 036, 038 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 27, 2023 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 27, 2023 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 036 - Insurance; financial affairs; monetary affairs; real estate affairs. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 27, 2023 |
| Primary Code | 036 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 27, 2023 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 27, 2023 |
| Primary Code | 039 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 041 - Education; providing of training; entertainment; sporting and cultural activities. |
| US Class Codes | 100, 101, 107 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 27, 2023 |
| Primary Code | 041 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 042 - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 27, 2023 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 045 - Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 27, 2023 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Wheels LLC |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Des Plaines, IL 60015 |
| Event Date | Event Description |
| Saturday, February 11, 2023 | NEW APPLICATION ENTERED |
| Monday, February 27, 2023 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, February 28, 2023 | NOTICE OF DESIGN SEARCH CODE E-MAILED |
| Monday, November 6, 2023 | ASSIGNED TO EXAMINER |
| Wednesday, November 8, 2023 | NON-FINAL ACTION WRITTEN |
| Wednesday, November 8, 2023 | NON-FINAL ACTION E-MAILED |
| Wednesday, November 8, 2023 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, December 19, 2023 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, December 19, 2023 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, December 20, 2023 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, April 8, 2024 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, April 8, 2024 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, January 9, 2024 | NON-FINAL ACTION WRITTEN |
| Tuesday, January 9, 2024 | NON-FINAL ACTION E-MAILED |
| Tuesday, January 9, 2024 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Monday, April 8, 2024 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, April 26, 2024 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Friday, April 26, 2024 | NON-FINAL ACTION WRITTEN |
| Friday, April 26, 2024 | NON-FINAL ACTION E-MAILED |
| Tuesday, July 23, 2024 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, August 13, 2024 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Tuesday, July 23, 2024 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, July 23, 2024 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, August 13, 2024 | FINAL REFUSAL WRITTEN |
| Tuesday, August 13, 2024 | FINAL REFUSAL E-MAILED |
| Monday, November 11, 2024 | APPLICATION EXTENSION GRANTED/RECEIPT PROVIDED |
| Monday, November 11, 2024 | APPLICATION EXTENSION TO RESPONSE PERIOD - RECEIVED |