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. 88296009 F FLEX (Stylized and/or with Design, see http://uspto.report/TM/88296009/mark.png) has been amended as follows:

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

With respect to the disclaimer requirement for FLEX as being descriptive, Applicant respectfully submits that a mark is descriptive if it immediately describes a significant ingredient, quality, characteristic, function, feature, purpose or use of relevant goods or services.  In re Gyulay, 3 U.S.P.Q.2d 1009 (Fed.Cir.1987); In re Bed & Breakfast Registry, 229 U.S.P.Q. 818 (Fed.Cir. 1986).  In re MetPath Inc., 223 U.S.P.Q. 88 (T.T.A.B. 1984); In re Bright-Crest, Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979); TMEP §1209.01(b).  Additionally, not only must a mark immediately impart information about the goods or services, but it must also do so with “a degree of particularity”.  In re Intelligent Medical Systems, Inc., 5 U.S.P.Q.2d 1674 (T.T.A.B. 1987); In re Analog Devices Inc., 6 U.S.P.Q.2d 1808 (T.T.A.B. 1988).  Finally, any doubts regarding whether a mark is “merely descriptive” are to be resolved in favor of the applicant.  In re Conductive Sys., Inc. 220 U.S.P.Q. 84 (T.T.A.B. 1983).

Applicant respectfully submits that the proposed mark is not descriptive, but suggestive.  Applicant respectfully asserts that the mark “FLEX” does not immediately impart information about the goods with a degree of particularity.  Instead, the consumer is required to gather information as to what goods are associated with the mark. 

The relevant public would be required to gather further information about Applicant’s goods.  Such exercise of information gathering to reach a conclusion of the services is suggestive rather than merely descriptive.  In re Nobile Co., 225 USPQ 749, 750 (TTAB 1985) (NOBURST held suggestive as opposed to merely descriptive for a product that reduces the likelihood that pipes of a water system in which it is used will burst since the Board did not “believe this conclusion is readily arrived at by merely observing the mark of the goods but that it requires interpretation by the viewer.” 

Accordingly, Applicant respectfully submits that no disclaimer is required.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 009 for downloadable exercise, fitness and health programs; exercise, fitness and health programs; computer application related to exercise, fitness and health programs; providing exercise fitness and health information; providing blogs related to health; entertainment and education related to fitness and health programs; downloadable interactive exercise programs; program related to calorie calculations; providing health and fitness information and articles; matching individuals to other individuals or groups to perform exercise programs; matching individuals to other individuals or groups to discuss health and fitness; matching services for health, fitness and exercise focused related individuals; organizing health and fitness classes; platform for allowing individuals to organize exercise, health and fitness groups; providing an internet platform for allowing individuals to discuss and organize exercise, health and fitness classes and meet-ups

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 (Original Class: 009 ) for Exercise and fitness programs, namely, physical fitness instruction; providing exercise fitness information; providing on-line journals, namely, blogs featuring health information; entertainment and education, namely, conducting classes about fitness and health; providing fitness information and non-line non-downloadable articles about fitness programs; organizing health and fitness classes
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.

The applicant's current attorney information: Justin Lampel. Justin Lampel of LAMPEL & ASSOCIATES, P.C., is located at

      555 SKOKIE BLVD., SUITE 500
      NORTHBROOK, Illinois 60062
      US
The docket/reference number is FFI-T-19-03.

The phone number is 847-845-4345.

The fax number is 847.725.0077.

The email address is jlampel@lampellaw.com

The applicants proposed attorney information: Justin Lampel. Justin Lampel of LAMPEL & ASSOCIATES, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      555 SKOKIE BLVD., SUITE 500
      NORTHBROOK, Illinois 60062
      United States
The docket/reference number is FFI-T-19-03.

The phone number is 847-845-4345.

The fax number is 847.725.0077.

The email address is jlampel@lampellaw.com

Justin Lampel submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JUSTIN LAMPEL. JUSTIN LAMPEL of LAMPEL & ASSOCIATES, P.C., is located at

      555 SKOKIE BLVD., SUITE 500
      NORTHBROOK, Illinois 60062
      US
The docket/reference number is FFI-T-19-03.

The phone number is 847-845-4345.

The fax number is 847.725.0077.

The email address is jlampel@lampellaw.com

The applicants proposed correspondence information: Justin Lampel. Justin Lampel of LAMPEL & ASSOCIATES, P.C., is located at

      555 SKOKIE BLVD., SUITE 500
      NORTHBROOK, Illinois 60062
      United States
The docket/reference number is FFI-T-19-03.

The phone number is 847-845-4345.

The fax number is 847.725.0077.

The email address is jlampel@lampellaw.com

SIGNATURE(S)
Response Signature
Signature: /Justin Lampel/     Date: 09/11/2019
Signatory's Name: Justin Lampel
Signatory's Position: Attorney

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JUSTIN LAMPEL
   LAMPEL & ASSOCIATES, P.C.
   
   555 SKOKIE BLVD., SUITE 500
   NORTHBROOK, Illinois 60062
Mailing Address:    Justin Lampel
   LAMPEL & ASSOCIATES, P.C.
   555 SKOKIE BLVD., SUITE 500
   NORTHBROOK, Illinois 60062
        
Serial Number: 88296009
Internet Transmission Date: Wed Sep 11 15:53:54 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201909111553546
72602-88296009-610d66e2841c37a2593ff9ceb
67275add2c4b992eea32a23d6824ae4df4c1b65-
N/A-N/A-20190911155037892273