Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  August 21, 2019

 

 

 

This Office action is in response to applicant’s communication filed on August 1, 2019.

 

The applicant must respond to the following FINAL requirement:

 

Identification of Services – Clarification Required – Class 041 – Partial Requirement - FINAL

 

In its response, the applicant’s proposed amended wording “providing fitness, personal physical fitness training, and exercise facilities; consultation in the field of fitness; providing information in the field of fitness; providing individualized personal training and exercise” in the Class 041 identification of services is indefinite and must be clarified because it is overly broad and unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Specifically, it is unclear whether the wording “providing fitness, personal physical fitness training, and exercise facilities” refers to providing training services or providing facilities services.  If accurate, applicant may use the substitute wording “providing fitness and exercise facilities and personal physical fitness training facilities” for clarification.

 

Also, the wording “consultation in the field of fitness; providing information in the field of fitness” is ambiguous because the type of “fitness” is unclear.  The classification of both consultation and information services is dependent on the subject matter – here, consulting and information services in the field of physical fitness is in Class 041 but consulting and information services in the field of mental fitness in in Class 044.  If accurate, applicant may use the substitute wording “physical fitness” to clarify the subject matter and keep the services in Class 041.

 

Last, the wording “providing individualized personal training and exercise” is overly broad.  If accurate, the substitute wording “providing individualized personal fitness training and conducting exercise classes” may be used for clarification.

 

Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, if accurate: 

 

“Health club and gym services, namely, providing health clubs and gym facilities for physical exercise; [insert clarification of “providing fitness, personal physical fitness training, and exercise facilities,” e.g., providing fitness and exercise facilities and personal physical fitness training facilities]; providing fitness and exercise studio services, namely, providing group fitness classes, providing group exercise facilities, Pilates instruction, group fitness classes featuring cycling, obstacle course training, and group fitness classes with sandbag or other body resistance materials; providing fitness studio services, namely, providing fitness training equipment and cardiovascular training equipment; providing obstacle course training gym facilities; providing educational services, namely, instructional programs in the nature of classes, seminars, conferences, workshops, classes, consultation, training, coaching and instruction in the fields of [insert type of “fitness,” e.g., physical fitness], personal training and exercise; providing information in the fields of [insert type of “fitness,” e.g., physical fitness], personal training and exercise via a global computer network; [insert clarification of “providing individualized personal training and exercise,” e.g., providing individualized personal fitness training and conducting exercise classes], in International Class 041.”

 

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.

 

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).

 

This requirement is made FINAL.

 

Proper Response to Final Office Action – Partial Requirement

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final requirement applies will be deleted from the application by Examiner’s Amendment:  “providing fitness, personal physical fitness training, and exercise facilities; consultation in the field of fitness; providing information in the field of fitness; providing individualized personal training and exercise.”  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following services only:  “Health club and gym services, namely, providing health clubs and gym facilities for physical exercise; providing fitness and exercise studio services, namely, providing group fitness classes, providing group exercise facilities, Pilates instruction, group fitness classes featuring cycling, obstacle course training, and group fitness classes with sandbag or other body resistance materials; providing fitness studio services, namely, providing fitness training equipment and cardiovascular training equipment; providing obstacle course training gym facilities; providing educational services, namely, instructional programs in the nature of classes, seminars, conferences, workshops, classes, training, coaching and instruction in the fields of fitness, personal training and exercise; providing information in the fields of personal training and exercise via a global computer network” in International Class 041.

 

 

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)

 

 

Applicant is encouraged to call or email the assigned attorney below to resolve the issue in this Office action.

 

 

 

/Andrew Rhim/

Examining Attorney

United States Patent & Trademark Office

Law Office 101

(571) 272-9711

andrew.rhim@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 21, 2019 for

U.S. Trademark Application Serial No. 88442110

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Andrew Rhim/

Examining Attorney

United States Patent & Trademark Office

Law Office 101

(571) 272-9711

andrew.rhim@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 21, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”