To: | Fitbit, Inc. (trademarks@fenwick.com) |
Subject: | U.S. Trademark Application Serial No. 87910643 - VERSA - 33338-70004 |
Sent: | July 22, 2019 06:20:38 AM |
Sent As: | ecom109@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 87910643
Mark: VERSA
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Correspondence Address: |
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Applicant: Fitbit, Inc.
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Reference/Docket No. 33338-70004
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 22, 2019
This Office action is in response to applicant’s communication filed on January 7, 2019. The application was suspended on January 9, 2019 pending the disposition of U.S. Application Serial No. 87664250, which has matured into registration.
In a previous Office action(s) dated July 5, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s): Unsigned application and Identification and Classification of Goods. As noted in the suspension notice, the Unsigned application requirement has been satisfied.
Upon further consideration, the Section 2(d) Refusals and the Prior-filed application advisory as to U.S. Application Serial No. 87664250 have been withdrawn.
IDENTIFICATION AND CLASSIFICATION OF GOODS
The applicant’s identification of goods are as follows:
· Class 9: Smartwatches; wearable activity trackers; personal electronic devices used to track fitness goals and statistics; smartwatch cables, namely, electric charging cables for smartwatches; computer application software for providing personal training services, coaching, and workouts and for providing exercise and fitness advice via smartwatches
The highlighted portions of the applicant’s identification of goods must be clarified because it fails to describe the nature of the goods with sufficient particularity and/or includes goods classified in other classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. Note that the rest of the identification of goods is acceptable in Class 9.
Specifically, “providing personal training services, coaching, and workouts” is indefinite as a function of the computer application software and requires further clarification as to the underlying function of the application software for classification purposes. Based on how the identification is written, it is unclear if the underlying nature of the goods/service is the application software in Class 9 or the personal training and coaching services offered through the application software, which would be classified in Class 41. Thus, the identification is indefinite as to the function of the application software and is required to provide further clarification for classification purposes.
Accordingly, applicant may adopt any or all of the following identification(s), if accurate:
· CLASS 9: Smartwatches; wearable activity trackers; personal electronic devices used to track fitness goals and statistics; smartwatch cables, namely, electric charging cables for smartwatches; computer application software for providing {specify specific function of the software in this class, e.g., guided workout, exercise, and fitness information and advice for personal training and coaching purposes} via smartwatches
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.
RESPONSE GUIDELINES & PARTIAL ABANDONMENT ADVISORY
37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
The application will then proceed for the following goods:
Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Philip Liu/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 109
(571) 272 - 6792
Philip.Liu@uspto.gov
RESPONSE GUIDANCE