UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 7/27/2017

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

ISSUES APPLICANT MUST ADDRESS:  On July 21, 2017, and dates following, the trademark examining attorney and applicant’s attorneys Karen Webb and Moira Lion discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

 

SUMMARY OF ISSUES:

• IDENTIFICATION OF GOODS AND SERVICES INDEFINITE, MISCLASSIFIED

 

 

IDENTIFICATION OF GOODS AND SERVICES INDEFINITE, MISCLASSIFIED

 

The wording “software for alerts… and for recording, organizing, transmitting, manipulating, reviewing, and receiving… display screens” in International Class 9 has an unclear meaning, and may have unintentionally included “display screens” from an earlier entry that is identical in part.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may delete the wording “and display screens,” if accurate.

 

The wording “general wellness instruments and apparatus” in the identification of goods in International Class 10 is indefinite and must be clarified because goods of this type in this class must identify an underlying medical purpose.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, in order to be classified in International Class 10, a device must be therapeutic to the point of being used or prescribed by a medical professional or be instrumental in the treatment of a disease or physical condition. Instruments or apparatus which relate to the medical field, e.g., “general wellness,” but are not used to treat an actual ailment do not belong in Class 10.  Applicant may substitute the wording “general wellness instruments and apparatus, namely, medical wellness devices,” if accurate.

 

Applicant has classified “designing, creating and maintaining electronic commerce websites for others” in International Class 35; however, the proper classification is International Class 42 because website design is a technical service in Class 42 regardless of subject matter.  Therefore, applicant may respond by (1) reclassifying these services in the proper international class, or (2) deleting this entry from the application.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.

 

The wording “pre-recorded athletic and fitness sessions” in the identification of services in International Class 41 is indefinite and must be clarified because the nature of the recording must be specified (e.g., video) as well as the delivery method.  Videos that are downloadable and/or on physical media are goods in Class 9, and providing non-downloadable online videos is a Class 41 service.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “Non-downloadable computer software” in the identification of services in International Class 42 is indefinite and must be clarified because it must also be specified as “online” to properly describe services in this class as distinguished from goods consisting of software on physical media in International Class 9.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “Corporate wellness services, namely, providing assistance and consultation to corporate clients to help their employees make health, fitness, wellness and nutritional changes in their daily living to improve health” in the identification of services in International Class 44 is indefinite and must be clarified.  This wording could refer to Class 35 services intended to help businesses function, e.g., “Business administration of programs intended to lower health care costs and increase business productivity through employee health, wellness, and nutritional changes,” or it could refer to healthcare services in Class 44 such as “Wellness and health-related consulting services.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following suggested identification of goods and services, if accurate (changes in bold, deletions in strikethrough):

 

International Class 9

Personal electronic devices used to track fitness goals and statistics; wearable activity trackers; smartwatches; portable digital electronic devices for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; wearable electronic devices, namely, watches, bracelets, and wristbands that are comprised of software that communicates data to personal digital assistants, smart phones, and personal computers through Internet websites and other computer and electronic communication networks; wearable digital electronic devices comprised primarily of software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, audio, image and digital files and display screens; cables, namely, charging cables; computer peripheral devices; computers; sensors for scientific use to be worn by a human to gather human biometric data; software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, audio, image and digital files and display screens; computer application software for smartphones and mobile devices in the fields of fitness and exercise featuring personal training services, coaching, workouts and fitness assessments; mobile application software for creating personalized fitness training programs; computer application software for smartphones and mobile devices to support corporate wellness programs; computer software development tools; pre-recorded video recordings featuring athletic and fitness sessions

 

International Class 10

Medical devices for measuring body weight and estimating body fat percentage; general wellness instruments and apparatus, namely, medical wellness devices for storing, relaying, tracking, measuring and displaying biometric data, body movement, sleep, heart rate, and calories burned; general wellness instruments and apparatus, namely, medical wellness devices for estimating maximal oxygen consumption 

 

International Class 14 (no change)

Horological and chronometric instruments; watches; timepieces; watch straps; watch bands; jewelry; bracelets; pendants  

 

International Class 35

Online retail store services featuring health and fitness products, electronic devices, scales, wearable activity trackers, accessories and apparel; designing, creating and maintaining electronic commerce websites for others 

 

International Class 41

Conducting fitness classes; physical fitness conditioning classes; fitness boot camps; yoga classes; boxing and kickboxing fitness classes; providing classes in the fields of fitness and exercise; providing a website featuring non-downloadable pre-recorded videos featuring athletic and fitness sessions; educational services, namely, conducting seminars, conferences, and workshops in the fields of health and wellness; online journals, namely, blogs featuring commentary, advice and information in the fields of health, wellness, sleep, fitness and nutrition 

 

International Class 42

Online non-downloadable computer software for tracking fitness, health and wellness goals and statistics; online non-downloadable computer software for displaying, aggregating, analyzing and organizing data and information in the fields of health, wellness, fitness, physical activity, weight management, sleep, and nutrition; online non-downloadable software for creating personalized fitness training programs; online non-downloadable software for providing personal training services, workouts and fitness assessments; application service provider, featuring application programming interface (API) software for allowing data retrieval, upload, access, management, tracking, and analyzing of user data; software as a service (SaaS) that enables users to manage employee accounts, schedule and track employee participation, and facilitate and manage corporate fitness and wellness programs; software as a service (SaaS) for use in designing, creating and analyzing data, metrics and reports in the areas of health, fitness, sleep, nutrition and wellness; designing, creating, and maintaining electronic commerce websites for others

 

International Class 44

Corporate wellness services, namely, providing assistance and consultation to corporate clients to help their employees make health, fitness, wellness and nutritional changes in their daily living to improve health in the nature of wellness and health-related consulting services

 

International Class 45 (no change)

Online social networking services 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.  Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

 

RESPONSE GUIDELINES

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Matt Schwab/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 120

Phone: (571) 272-5701

matthew.schwab@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/27/2017 FOR U.S. APPLICATION SERIAL NO. 87420900

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 7/27/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.