Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 27, 2019

 

SEARCH OF OFFICE’S DATABASE OF MARKS:  The trademark examining attorney has searched the Office’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).

 

SUMMARY OF ISSUES: The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

• Amendment Required – Identification of Services
• Multiple-Class Application Requirements

 

 

I.                AMENDMENT REQUIRED – IDENTIFICATION OF SERVICES

 

Applicant must amend the identification of services in International Class 42 for the reasons stated below.

 

Indefinite and Overbroad Wording in Identification

 

Applicant must clarify the wording “application service provider (ASP) services featuring a human performance computer database accessible by a person engaged in an exercise and dietary regime via a website accessible by means of a local area network or the Internet” in the identification of services in International Class 42 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite the nature of the services is unclear.  Further, this wording could identify services in more than one international class.  For example, “providing a database in the field of diet and exercise” is in International Class 41, while “application service provider (ASP) services featuring software for a person engaged in an exercise and dietary regime to access a computer database of human performance statistics via a website that is accessible by means of a local area network or the Internet” would be classified in International Class 42

 

The wording “application service provider (ASP) services featuring…the graphical summary and display of the projected weight gain and weight loss scenarios of one or more individuals participating in exercise, weight loss and obesity or wellness programs” in the identification of services is indefinite and must be clarified because it does not specify that applicant services entail the provision of “software”, and because it does not clearly state the function of that software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “providing an interactive website that enables users to order selected dietary meals and enter, access, track and monitor health and fitness information and reports tailored to the users caloric intake” in the identification of services is indefinite and must be clarified because it does not specify how the website “enables” users, e.g. by “featuring technology”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant must clarify the wording “providing a website allowing users to download exercise programs consisting of music and instruction” in the identification of services in International Class 42 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it is unclear if applicant’s website allows users to download computer “programs”, or “exercise programs” in the nature of a recorded fitness videos.  Further, this wording could identify goods and services in more than one international class.  For example, downloadable computer programs are commonly classified in International Class 9, while “providing a website allowing users to download videos” in International Class 42.

 

Suggested Wording for Identification

 

Applicant may substitute the following wording, if accurate (note that added text is indicated with bold type, deleted text is indicated with a strike through, and suggested text is indicated with braces):

 

“Providing an online database in the field of diet and exercise, namely, a database of human diet and exercise performance data that may be accessed by a person engaged in a dietary and exercise regimen” in International Class 41.

           

“Subscription-based application service provider (ASP) services featuring computer software for estimating and displaying a graphical summary of weight gain and weight loss scenarios arising as a result of an exercise and dietary regime; subscription-based application service provider (ASP) services featuring computer software to be used with a personal digital assistant (PDA) for monitoring caloric expenditure and recording dietary intake; subscription-based application service provider (ASP) services featuring computer software for analyzing and displaying projected weight gain and weight loss scenarios arising as a result of the monitored caloric expenditure and recorded dietary intake; subscription-based application service provider (ASP) services featuring computer software for the display and monitoring of the projected weight gain and weight loss scenarios of one or more individuals participating in exercise, weight-loss and obesity, or wellness programs; subscription-based application service provider (ASP) services featuring computer software for analyzing the functional behaviors of the musculoskeletal and cardiovascular systems of a person engaged in an exercise program; subscription-based application service provider (ASP) services featuring computer software to be used with a personal digital assistant (PDA) for monitoring physical activity and displaying feedback which guides the user through the exercise program; application service provider (ASP) services featuring software for authorizing a human performance computer database accessible by a person engaged in an exercise and dietary regime regimen to access a computer database of human diet and exercise performance data via a website that is accessible by means of a local area network or the Internet;,and application service provider (ASP) services featuring software for viewing a thegraphical summary and display of the projected weight gain and weight loss scenarios of one or more individuals participating in exercise, weight loss and obesity or wellness programs; providing an interactive website featuring technology that enables users to order selected dietary meals and enter, access, track and monitor health and fitness information and reports tailored to the users caloric intake; providing a website allowing users to download exercise programs videos consisting of music and instruction” in International Class 42.

 

Applicant will be required to add International Class 41 should it choose to adopt the above suggested wording.  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) et seq., 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.

 

Advisories – ID Manual and Scope of Amendments

 

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 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).

 

 

II.              MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)       List the 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 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 sufficient for only one class.  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.

 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

• 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.

 

Click HERE to file a response to this non-final Office action

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@uspto.gov

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 27, 2019 for

U.S. Trademark Application Serial No. 88505909

 

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. 

 

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@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 September 27, 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.”