NOTE TO THE FILE
Sent to TICRS as Serial Number: 87767423SERIAL NUMBER: 87768579
DATE: 04/06/2018
NAME: hsales
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSFrom: Finkelstein, Sharoni S. [mailto:SSFinkelstein@Venable.com]
Sent: Thursday, April 05, 2018 6:10 PM
To: Sales, Heather <Heather.Sales@USPTO.GOV>
Cc: IP Docketing - SF <ipdocketingsf@Venable.com>; Gornall, Eve M. <EMGornall@Venable.com>; Hollander, Susan E. <SEHollander@Venable.com>; Li, Terri <TLi@Venable.com>
Subject: RE: Trademark Application, your docket#132922398118 et al., 24 HOUR FITNESS
Dear Ms. Sales,
Thank you for your email. We have now heard back from our client regarding the remaining issues below.
Our client consents to the disclaimer for “FITNESS” in application Serial Nos. 87768567, 87768575, 87768571, 87767423, 87768590, 87768579, and 87768572.
With respect to the goods and services, we would like to amend the identification as shown below.
24 HOUR FITNESS Corporate Logo (Serial No. 87767423)
Class 028: Free weights for exercise; barbells; weights for exercise; weights in the nature of bar-bells and dumb-bells for weight lifting; weight training equipment, namely, bumper plates and weight plates; handheld weights for exercise
24 HOUR FITNESS (word mark) (Serial No. 87768571)
Class 042: Providing a website featuring non-downloadable software for
providing access toenabling users to access information in the fields of fitness, exercise, physical activity, nutrition, and mindset;providing health and fitness related information over a global information network;providing temporary use of on-line non-downloadable software for recording and tracking data in the field of personal weight management and health management; providing temporary use of on-line non-downloadable software for online fitness tracking and planning of individual exercise routines, fitness goals, and nutritional intake
24 HOUR FITNESS (word mark) (Serial No. 87768567)
Class 041: Consulting and counseling services in the field of fitness; counseling services in the fields of health, nutrition, namely, instruction and training in the fields of fitness and nutrition; counseling services in the fields of health, namely, instruction programs in the field of nutrition; providing a website featuring information in the field of physical fitness; providing information in the field of physical fitness via a global computer network; providing a website featuring information in the field of physical fitness, exercise, and physical fitness activity; education services, namely, providing on-line training programs and e-courses in the field of fitness, exercise, physical activity, nutrition, and mindset; providing a website featuring information in the field of physical fitness, exercise, and physical fitness activity in the nature of non-downloadable digital content, namely, non-downloadable videos featuring exercise, fitness, and physical activity routines; health club services, namely, providing instruction and equipment in the field of physical exercise; personal fitness training; physical fitness training assessment services
24 HOUR FITNESS Corporate Logo (Serial No. 87768575)
Class 041: Consulting and counseling services in the field of fitness; counseling services in the fields of health, nutrition, namely, instruction and training in the fields of fitness; counseling services in the fields of health, namely, instruction programs in the field of nutrition; providing a website featuring information in the field of physical fitness; providing information in the field of physical fitness via a global computer network; providing a website featuring information in the field of physical fitness, exercise, and physical fitness activity; education services, namely, providing on-line training programs and e-courses in the field of fitness, exercise, physical activity, nutrition, and mindset; providing a website featuring information in the field of physical fitness, exercise, and physical fitness activity in the nature of non-downloadable digital content, namely, non-downloadable videos featuring exercise, fitness, and physical activity routines; health club services, namely, providing instruction and equipment in the field of physical exercise; personal fitness training
Please let us know if you have any questions. Otherwise, we look forward to receiving the Examiners Amendments with these changes.
Many thanks for your assistance with these applications.
Best regards,
Sharoni
Sharoni S. Finkelstein, Esq. | Venable LLP
t 310.229.0478 | f 310.229.9901
2049 Century Park East, Suite 2300, Los Angeles, CA 90067
SSFinkelstein@Venable.com | www.Venable.com
From: Sales, Heather [mailto:Heather.Sales@USPTO.GOV]
Sent: Monday, April 02, 2018 12:44 PM
To: IP Docketing - SF <ipdocketingsf@Venable.com>
Cc: Finkelstein, Sharoni S. <SSFinkelstein@Venable.com>
Subject: Trademark Application, your docket#132922398118 et al., 24 HOUR FITNESS
Dear Ms. Finkelstein:
I have reviewed your client’s trademark application serial nos. 87768567, 87768575, 87768571, 87767423, 87768590, 87768579, and 87768572 and I would like to discuss the following issues with you:
Disclaimer for all applications: The wording “FITNESS” requires a disclaimer because it is merely describes a feature/characteristic of the goods and services, and thus an un-registrable component of the mark. TMEP §§1213, 1213.03(a). The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “FITNESS” apart from the mark as shown.
Identification: Certain wording is too broad or indefinite and must be clarified. May I suggest as follows:
Serial No. 87767423
Class 028: Free weights for exercise; barbells; weights for exercise; weights in the nature of bar-bells and dumb-bells for weight lifting; weight training equipment, namely, {specify the type of equipment e.g., bars, benches, etc.}; handheld weights for exercise
Serial No. 87768571 Applicant has identified more than one international class. If applicant adds an additional class/es, an additional fee/s will be required.
Class 041: Providing physical fitness instruction related information over a global information network
Class 042: Providing a website featuring non-downloadable software for enabling users to access information in the fields of fitness, exercise, physical activity, nutrition, and mindset; providing temporary use of on-line non-downloadable software for recording and tracking data in the field of personal weight management and health management; providing temporary use of on-line non-downloadable software for online fitness tracking and planning of individual exercise routines, fitness goals, and nutritional intake
Class 044: Providing health information over a global information network
Serial No. 87768567
Class 041: Consulting and counseling services in the field of fitness; counseling services in the fields of health, nutrition, namely, instruction and training in the fields of fitness and nutrition; counseling services in the fields of health, namely, instruction programs in the field of nutrition; providing a website featuring information in the field of physical fitness; providing information in the field of physical fitness via a global computer network; providing a website featuring information in the field of physical fitness, exercise, and physical fitness activity; education services, namely, providing on-line training programs and e-courses in the field of fitness, exercise, physical activity, nutrition, and mindset; providing a website featuring information in the field of physical fitness, exercise, and physical fitness activity in the nature of non-downloadable digital content, namely, non-downloadable videos featuring exercise, fitness, and physical activity routines; health club services, namely, providing instruction and equipment in the field of physical exercise; personal fitness training; physical fitness training assessment services
Serial No. 87768575
Class 041: Consulting and counseling services in the field of fitness; counseling services in the fields of health, nutrition, namely, instruction and training in the fields of fitness; counseling services in the fields of health, namely, instruction programs in the field of nutrition; providing a website featuring information in the field of physical fitness; providing information in the field of physical fitness via a global computer network; providing a website featuring information in the field of physical fitness, exercise, and physical fitness activity; education services, namely, providing on-line training programs and e-courses in the field of fitness, exercise, physical activity, nutrition, and mindset; providing a website featuring information in the field of physical fitness, exercise, and physical fitness activity in the nature of non-downloadable digital content, namely, non-downloadable videos featuring exercise, fitness, and physical activity routines; health club services, namely, providing instruction and equipment in the field of physical exercise; personal fitness training
Upon clarification and/or authorization, I can note the changes via Examiner’s Amendment.
Additionally, there is a prior-filed application Serial No. 87468759 that may present a bar to registration of your client’s marks. However, upon meeting the above requirements I will withhold from suspending your client’s applications as I have taken note that the prior-filed application may abandon if a response is not filed in that case by 04/05/2018.
Please let me know how you wish to procced at your earliest convenience by email or calling me at the number below.
Thank you in advance for your reply,
Heather A. Sales
Trademark Examining Attorney
U.S. Patent and Trademark Office | Law Office 122
(571) 272-7835 | Heather.Sales@uspto.gov