Examiners Amendment

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

EXAMINER’S AMENDMENT

 

ISSUE/MAILING DATE: 3/28/2019

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by Peter Riebling on 3/26/2019, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  Otherwise, no response is necessary.  TMEP §707.  Any amendments to the identification of services may clarify or limit the services, but may not add to or broaden the scope of the services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

                                                           

IDENTIFICATION OF SERVICES AMENDED

 

The identification of services is amended to read as follows: 

 

Class 41 –

“Providing personal training and physical fitness consultation to corporate clients to help their employees make physical fitness, strength, conditioning, and exercise alterations in their daily living; providing group coaching and in-person learning forums in the field of leadership development; entertainment in the nature of obstacle courses, endurance events, endurance races, athletic events, sporting events and competitions; arranging, organizing and conducting obstacle courses, endurance events, endurance races, athletic events, sporting events and competitions; conducting fitness classes; physical fitness training of individuals and groups; physical fitness assessment services; physical fitness boot camp; consulting services in the fields of fitness and exercise; counseling services in the fields of physical fitness, sports and exercise; physical fitness instruction; providing assistance, personal training and physical fitness consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living; providing a website featuring information on fitness, sports, and exercise; providing a website featuring non-downloadable videos and images in the fields of athletic competitions, fitness and exercise; providing a website featuring blogs and non-downloadable publications in the nature of articles and magazines in the fields of fitness and exercise; entertainment services, namely, providing podcasts in the fields of exercise, personal training, health and self-improvement; entertainment services, namely, providing video podcasts in the fields of exercise, personal training, health and self-improvement; educational and entertainment services, namely, providing motivational and educational speakers; educational services, namely, conducting classes, seminars, conferences, workshops and programs in the fields of physical fitness, mental fitness, nutrition, leadership, team building, survival training, behavior modification, sports, exercise, health, wellness, and self-improvement and distribution of course and educational materials in connection therewith; educational services, namely, providing training to employees of corporations and businesses in the fields of physical fitness, mental fitness, leadership, team building, and obstacle course creation and distribution of course and educational materials in connection therewith; educational and entertainment services, namely, an educational program, course and curriculum about what it takes to achieve success in any field or endeavor and distribution of course and educational materials in connection therewith; online educational courses, lectures, seminars, workshops, presentation, podcasts, and training featuring non-downloadable videos, non-downloadable electronic publications in the nature of articles, newsletters, manuals, pamphlets, guidebooks, electronic mail messages, and non-downloadable e-books featuring panel discussions and coaching in the fields of success, life performance, business performance, motivation, psychology, core virtues, values, fitness, exercise, strength, conditioning, exercise improvement, mental toughness, self-awareness, self-mastery, mental strength and control, emotional strength and control, nutrition, grit, mind-body character development, physical fitness, health, wellness, and self improvement; leadership development training in the field of business.”

 

See TMEP §§1402.01, 1402.01(e).

 

WHAT HAPPENS NEXT

 

After the trademark examining attorney issues the examiner’s amendment, applicant will not receive a registration on the Principal Register for the applied-for mark until the mark makes it through the publication process and opposition period.  The publication process starts once the trademark examining attorney issues the examiner’s amendment and the mark is approved for publication in the USPTO’s Trademark Official Gazette, a weekly online publication.  The USPTO will then send a “Notice of Publication” to the applicant specifying the date its mark will publish in this publication.

 

The USPTO publishes applicant’s mark in the Trademark Official Gazette to provide third parties who believe they may be damaged by registration of applicant’s mark an opportunity to oppose registration of that mark within thirty (30) days from the publication date.  An “opposition” is similar to a federal court proceeding, but this proceeding is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal of administrative judges who issue decisions on these matters.  If a third party opposes registration of applicant’s mark by instituting an opposition proceeding, the USPTO will send applicant notice of this opposition.  When this occurs, an applicant may wish to hire an attorney due to the complexity of these proceedings.

 

If no one opposes registration of the mark, and the mark was published based upon an applicant’s actual use of the mark in commerce or on a foreign registration, the USPTO generally registers the mark and issues a registration certificate within approximately twelve (12) weeks after the publication date.

 

If no one opposes registration of the mark, and the mark was published based upon an applicant’s bona fide intention to use the mark in commerce, the USPTO generally issues a “Notice of Allowance” within approximately eight (8) weeks after the publication date.  Applicant then has six (6) months from the date of the Notice of Allowance to timely file a “Statement of Use” or to file a request for a six-month “Extension of Time to file a Statement of Use” (extension request).  Extension requests are granted in six-month increments and a maximum of five extension requests can be filed after the issuance of the Notice of Allowance.  If a Statement of Use is not filed within the six months after the Notice of Allowance issued, a Statement of Use must be filed within the time period of a previously granted extension request.  The USPTO will only issue a registration certificate after the trademark examining attorney approves a Statement of Use.

 

For an overview of the time frames for when an applicant should file and the USPTO will issue documents related to a trademark application, see Trademark Application and Post-Registration Process Timelines.  Forms for Statements of Use and extension requests, and additional requirements for intent to use applications, are available online at Intent to Use (ITU) Forms.

 

Additionally, the application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as crucial legal deadlines.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

 

/Tiffany Y. Chiang/

Trademark Examining Attorney

Law Office 113

(571) 272-7681

tiffany.chiang@uspto.gov

 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/28/2019 FOR U.S. APPLICATION SERIAL NO.88309363

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.