To: | Fitbit, Inc. (trademarks@fenwick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87420900 - FITBIT - 33338-00072 |
Sent: | 7/27/2017 10:06:44 AM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87420900
MARK: FITBIT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Fitbit, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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.
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.
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.
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
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)).
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.