To: | Pure Gym Limited (jbegler@nvlawllp.com) |
Subject: | U.S. Trademark Application Serial No. 88353406 - PUREGYM - N/A |
Sent: | January 02, 2020 11:08:09 AM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88353406
Mark: PUREGYM
|
|
Correspondence Address: |
|
Applicant: Pure Gym Limited
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
FINAL OFFICE ACTION
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: January 02, 2020
This Office action is in response to applicant’s communication filed on December 4, 2019.
In a previous Office action dated June 5, 2019, applicant was required to satisfy the following requirements: amend the identification of goods and/or services and classification and provide a true copy of the foreign certificate of registration. Applicant was also advised of the option to delete the Section 1(b) basis.
Based on applicant’s response, the trademark examining attorney notes that the following action was taken: Section 1(b) basis deleted. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
TRUE COPY OF FOREIGN CERTIFICATE OF REGISTRATION REQUIRED
Applicant submitted a printout from an intellectual property office’s website to satisfy the statutory requirement under Trademark Act Section 44(e) for a true copy, photocopy, certification, or certified copy of a foreign registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01. However, the submitted document was not accompanied by a certification from the issuing intellectual property office. A photocopy of an intellectual property office’s publication or a printout from an intellectual property office’s website is sufficient to satisfy the statutory requirement only if it is accompanied by a certification from the issuing office. TMEP §1004.01.
An acceptable “copy” is a document that has been issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016.
Therefore, to perfect the Section 44(e) basis, applicant must submit an acceptable true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01. If the foreign certificate of registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
IDENTIFICATION OF GOODS AND SERVICES; CLASSIFICATION
Class 28
The wording “Gymnastic, fitness and sporting articles, machines and apparatus; machines and apparatus for physical exercise” in the identification of goods is indefinite and must be clarified because it is overly broad and indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify particular goods using 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.
Class 41
The wording “Leisure centre, health club, fitness centre and gymnasium services” and “Personal training services” in the identification of services is indefinite and must be clarified because it is unclear what the services specifically are, and may be classified in more than one class. These descriptions need to be amended to identify specific services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Provision of training and education relating to gym use, weight training, body building, aerobics, physical exercise, physical rehabilitation, diet, nutrition, health and beauty” and “Instructional services relating to gymnastics, weight training, body building, aerobics, indoor cycling, physical exercise, physical rehabilitation, personal training services” in the identification of services is indefinite. In the case of “personal training” and “physical rehabilitation,” it is not clear whether these are the subject matter of educational and instructional services, or whether they involve the direct provision of the services. If the latter, “personal training” services needs to be clarified to specify the focus of the training, and the services of “physical rehabilitation” are properly classified in International Class 44. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Additionally, the identification services pertaining to training, educational, and instructional services is indefinite because it does not indicate the type of educational service provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing. Applicant must specify the nature of the educational service being provided. If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management).
Applicant may adopt the following wording, if accurate:
Class 28: Gymnastic, fitness and sporting articles, machines and apparatus, namely {list specific items, e.g., weights, treadmills, rowing machines, stair stepping machines, resistance machines, stationary cycles, elliptical exercise machines, gymnastic apparatus}; machines and apparatus for physical exercise, namely {list specific items, e.g., weight lifting machines, body- building apparatus}; parts and fittings for all of the aforesaid goods
Class 41: Leisure centre, health club, fitness centre and gymnasium services, namely, {identify services with more specificity, e.g., providing fitness and exercise facilities, providing exercise classes and group fitness classes, providing instruction and equipment in the field of physical exercise}; Provision of training and education in the nature of {specify format of training and education, e.g., classes, seminars, workshops, and personal training, etc.} relating to gym use, weight training, body building, aerobics, physical exercise, physical rehabilitation, diet, nutrition, health and beauty; Instructional services {specify format of training and education, e.g., classes, seminars, workshops, and personal training, etc.} relating to gymnastics, weight training, body building, aerobics, indoor cycling, physical exercise; Personal training services, namely, strength and conditioning training; Instructional services in the nature of {specify format of instruction, e.g., educational courses} relating to diet, nutrition, health and beauty; Information and advisory services relating to the aforesaid services
Class 44: Physical rehabilitation
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A . , 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München , 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Alina Morris/
Examining Attorney, Law Office 117
United States Patent and Trademark Office
571-272-2256
alina.morris@uspto.gov
RESPONSE GUIDANCE