Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87420900 FITBIT(Standard Characters, see http://uspto.report/TM/87420900/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/00/2009 and first used in commerce at least as early as 09/00/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: 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; software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, audio, image and digital files; 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 sessionsClass 009 for 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; 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
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/00/2009 and first used in commerce at least as early as 09/00/2009 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/00/2009 and first used in commerce at least as early as 09/00/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: 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 othersClass 035 for Online retail store services featuring health and fitness products, electronic devices, scales, wearable activity trackers, accessories and apparel
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/00/2009 and first used in commerce at least as early as 09/00/2009 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for 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; pre-recorded 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/00/2010 and first used in commerce at least as early as 05/00/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: 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; pre-recorded athletic and fitness sessions; 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 nutritionClass 041 for 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
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/00/2010 and first used in commerce at least as early as 05/00/2010 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Non-downloadable computer software for tracking fitness, health and wellness goals and statistics; 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; non-downloadable software for creating personalized fitness training programs; 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/00/2009 and first used in commerce at least as early as 09/00/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Non-downloadable computer software for tracking fitness, health and wellness goals and statistics; Online non-downloadable computer software for tracking fitness, health and wellness goals and statistics; 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 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; non-downloadable software for creating personalized fitness training programs; online non-downloadable software for creating personalized fitness training programs; non-downloadable software for providing personal training services, workouts and fitness assessments; 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 othersClass 042 for 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
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/00/2009 and first used in commerce at least as early as 09/00/2009 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/00/2015 and first used in commerce at least as early as 05/00/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: 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; 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 servicesClass 044 for 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
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/00/2015 and first used in commerce at least as early as 05/00/2015 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /kaw/     Date: 01/29/2018
Signatory's Name: Karen A. Webb
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: (650) 335-7656

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 87420900
Internet Transmission Date: Mon Jan 29 20:13:16 EST 2018
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20180129201316450
431-87420900-5103f65ffb22ee87aa0df6c0cd4
e8a76256ca5de27cc78bc09290bd15d3ecb894-N
/A-N/A-20180129183054276340