TEAS Petition to Revive Abandon Applic

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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

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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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 87596074 HIIT CAMP(Standard Characters, see http://uspto.report/TM/87596074/mark.png) has been amended as follows: PETITION NOTICE OF APPEAL OR PETITION TO DIRECTOR
I elect not to file a notice of appeal with the Trademark Trial and Appeal Board or petition to Director. I understand that additional time to file either an appeal or petition to the Director will not be provided. Failure to file an appeal may result in my application being abandoned for an incomplete response even if this petition is granted.Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The applicant World Gym International, LLC (or “Applicant”) respectfully requests that the examining attorney reconsider his finding that the HIIT CAMP mark is merely descriptive.  For the reasons described below, the Applicant’s mark is suggestive and therefore registrable on the Principal Register or, alternatively, is suitable for registration on the Supplemental Register.

With respect to Class 41, HIIT CAMP is not likely to be interpreted by the average consumer as descriptive.  HIIT is not a common acronym – it does not appear in the dictionary.  Nor does the term “CAMP” have any common definition that literally applies here.  This is not a “place where athletes engage in intensive training, especially preseason training.” The gym services are not in actuality a “camp” – they are rather a training regimen offered to non-athletes to improve their general fitness.  The only possibly applicable definition is the third definition listed on the excerpt provided by the examining attorney, demonstrating that it is an uncommon usage of the word. 

The full mark “HIIT CAMP” is not a common (or even uncommon) phrase in use.  If one were to ask the average consumer what a HIIT CAMP was they would have no idea and would need to use additional imagination to arrive at the services offered by Applicant.  Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1126 (9th Cir. 2014) (mark is suggestive which “requires customers to use some additional imagination and perception to decipher the nature of [applicant’s] goods.”) 

Moreover, even if the above were merely descriptive, it is certainly capable of acquiring meaning through use and association of the fitness services with the mark over time and therefore, in the alternative, should be allowed on the Supplemental Register.  See In re Bush Bros. & Co. 884 F.2d 569, 570 (Fed. Cir. 1989) (even a merely descriptive mark may be registered in the Supplemental Register as the relevant test “is not whether the mark is already distinctive of the applicant's goods, but whether it is capable of becoming so.”).

For the foregoing reasons, Applicant respectfully requests that the examining attorney reconsider his initial position and allow Applicant’s mark to proceed to publication or, in the alternative, amendment for registration on the Supplemental Register.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 025 for clothing, namely, shirts, tank tops, shorts, pants, sweat bands, sweat suits, jackets, hats, gloves, socks, footwear

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Gymnasium services, namely, providing gymnasiums; health club services, namely, providing instruction and equipment in the field of physical exercise; providing exercise and fitness facilities; conducting exercise classes; educational services, namely, conducting seminars on nutrition and fitness; educational services, namely, conducting personal training in the fields of nutrition, exercise and physical fitness; providing mixed martial arts training and physical fitness training; providing boxing training and physical fitness training; providing kickboxing training and physical fitness training; conducting bodybuilding, mixed martial arts, athletic, and sports exhibitions, competitions, and contests
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Gymnasium services, namely, providing gymnasiums; Health club services, namely, providing instruction and equipment in the field of physical exercise; conducting exercise classes; providing exercise and fitness facilities; educational services, namely, conducting seminars on physical fitness; educational services, namely, conducting personal training in the fields of exercise and physical fitness; educational services, namely, conducting seminars on nutrition and fitness; providing physical fitness training; educational services, namely, conducting personal training in the fields of nutrition, exercise and physical fitness; providing mixed martial arts training and physical fitness training; providing boxing training and physical fitness training; providing kickboxing training and physical fitness training; conducting bodybuilding, mixed martial arts, athletic, and sports exhibitions, competitions, and contestsClass 041 for Health club services, namely, providing instruction and equipment in the field of physical exercise; conducting exercise classes; educational services, namely, conducting seminars on physical fitness; educational services, namely, conducting personal training in the fields of exercise and physical fitness; providing physical fitness training
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)

Signature: /Elliot B. Gipson/      Date: 04/11/2019
Signatory's Name: Elliot B. Gipson
Signatory's Position: Attorney of Record, CA bar member
Signatory's Phone Number: 310-557-9750


Response Signature
Signature: /Elliot B. Gipson/     Date: 04/11/2019
Signatory's Name: Elliot B. Gipson
Signatory's Position: Attorney of Record, CA bar member

Signatory's Phone Number: 310-557-9750

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/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 applicant 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/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.

        
RAM Sale Number: 87596074
RAM Accounting Date: 04/12/2019
        
Serial Number: 87596074
Internet Transmission Date: Thu Apr 11 23:31:33 EDT 2019
TEAS Stamp: USPTO/POA-XX.XX.XXX.XX-20190411233133110
807-87596074-6202da4b2d09b337cd3848408af
afe514883ab4ab5abd84d5ab5d7c736c421e27f-
CC-9337-20190411213404317909