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. 88212829 EQUINOX(Standard Characters, see http://uspto.report/TM/88212829/mark.png) has been amended as follows:

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

RESPONSE

This is in response to the Office Action dated January 24, 2019.  Reconsideration of this Application is respectfully requested in view of the following remarks.

REMARKS

In the Office Action, the Examining Attorney raised a number of issues, each of which is discussed in detail below.

A.        Amendment to the Description of Goods

            The Examining Attorney requested amendment to the description of goods in the Application.  Applicant hereby complies with this request.  

B.        Potential Refusal Based on a Prior-Filed Pending Application

            Additionally, the Examining Attorney noted that Applicant’s EQUINOX mark may be refused registration because of a likelihood of confusion with a certain other mark, should it proceed to registration.  Applicant elects not to submit arguments relevant to this issue at this time and reserves the right to do so in the future.  Applicant respectfully requests that its Application be suspended pending final disposition of this prior-filed application. 

CONCLUSION

            Applicant respectfully requests that the amendments to its description of goods be accepted and that the Application be suspended pending final disposition of the prior-filed pending mark cited in the Office Action. 

 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable software application for downloading recorded content for viewing on smartphones; downloadable software application for streaming audio and audiovisual content in the field of fitness training and instruction; downloadable software application for use by individuals participating in health, exercise, physical training and fitness classes in tracking athletic performance and receiving feedback on results; downloadable mobile application for receiving content and media used in connection with interactive audio and visual presentations of health, exercise, physical training, fitness and personal development on an interactive website; downloadable software application for fitness training, instruction and guided workouts; digital media, namely, downloadable audio and video recordings featuring fitness content, fitness training, fitness instruction and classes; pre-recorded digital audio and video files featuring fitness training and instruction; computers and downloadable software for monitoring and analyzing various parameters associated with the operation of a exercise equipment and for fitness training; downloadable software applications for use by individuals participating in exercise classes; wearable activity trackers; electronic monitors and sensors for monitoring athletic performance; Fitness training apparatus featuring electronic sensors and software to analyze distance, running speed, activity level, pace and elevation and electronically display results
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: Downloadable software application for downloading recorded content for viewing on smartphones; downloadable software application for streaming audio and audiovisual content in the field of fitness training and instruction; downloadable software application for use by individuals participating in health, exercise, physical training and fitness classes in tracking athletic performance and receiving feedback on results; downloadable mobile application for receiving content and media used in connection with interactive audio and visual presentations of health, exercise, physical training, fitness and personal development on an interactive website; downloadable software application for fitness training, instruction and guided workouts; digital media, namely, downloadable audio and video recordings featuring fitness content, fitness training, fitness instruction and classes; pre-recorded digital audio and video files featuring fitness training and instruction; pre-recorded digital audio and video recordings featuring fitness training and instruction; computers and downloadable software for monitoring and analyzing various parameters associated with the operation of a exercise equipment and for fitness training; downloadable software applications for use by individuals participating in exercise classes; downloadable software applications for registering for fitness classes and equipment for use by individuals participating in exercise classes; wearable activity trackers; electronic monitors and sensors for monitoring athletic performance; Fitness training apparatus featuring electronic sensors and software to analyze distance, running speed, activity level, pace and elevation and electronically display resultsClass 009 for Downloadable software application for downloading recorded content for viewing on smartphones; downloadable software application for streaming audio and audiovisual content in the field of fitness training and instruction; downloadable software application for use by individuals participating in health, exercise, physical training and fitness classes in tracking athletic performance and receiving feedback on results; downloadable mobile application for receiving content and media used in connection with interactive audio and visual presentations of health, exercise, physical training, fitness and personal development on an interactive website; downloadable software application for fitness training, instruction and guided workouts; digital media, namely, downloadable audio and video recordings featuring fitness content, fitness training, fitness instruction and classes; pre-recorded digital audio and video recordings featuring fitness training and instruction; computers and downloadable software for monitoring and analyzing various parameters associated with the operation of a exercise equipment and for fitness training; downloadable software applications for registering for fitness classes and equipment for use by individuals participating in exercise classes; wearable activity trackers; electronic monitors and sensors for monitoring athletic performance; Fitness training apparatus featuring electronic sensors and software to analyze distance, running speed, activity level, pace and elevation and electronically display results
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.

SIGNATURE(S)
Response Signature
Signature: /Nicole Chaudhari/     Date: 07/23/2019
Signatory's Name: Nicole Chaudhari
Signatory's Position: Associate attorney, DLA Piper LLP (US), IL bar member

Signatory's Phone Number: 312-368-4000

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: 88212829
Internet Transmission Date: Tue Jul 23 17:43:28 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2019072317432810
1414-88212829-620ef6bcb49c24bdb937d491b1
3d32b8fae4842abb34fe4de5444c41e7395be55-
N/A-N/A-20190723173545466077