To: | MyAbilities Technologies Inc. (trademarks@varnumlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88506069 - MYTRAK - Ridout T17US |
Sent: | September 27, 2019 04:50:19 PM |
Sent As: | ecom126@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88506069
Mark: MYTRAK
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Correspondence Address: Varnum, Riddering, Schmidt & Howlett LLP 39500 High Pointe Blvd., Suite 350
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Applicant: MyAbilities Technologies Inc.
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Reference/Docket No. Ridout T17US
Correspondence Email Address: |
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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.
I. AMENDMENT REQUIRED – IDENTIFICATION OF SERVICES
Indefinite and Overbroad Wording in Identification
Applicant must clarify the wording “subscription access to the use of a computerized system for continuously analyzing the functional behaviours of the musculoskeletal and cardiovascular systems of a person engaged in an exercise program, featuring a personal digital assistant (PDA) for monitoring physical activity and displaying feedback on the screen of the PDA which guides the user through the exercise program” 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 the nature of the services is unclear, and because the component of the identified “system” are unspecified. Further, this wording could identify services in more than one international class. For example, “downloadable computer software” of various kinds is classified in International Class 9, “providing access to user programs in data networks”, “providing access to global computer networks”, and providing access to databases” are in International Class 38, “providing temporary use of online, non-downloadable software” is classified in either International Class 41 or 42 based upon the software’s function, and “rental of computer hardware, computer peripherals, and computer software” is 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):
“Downloadable software for estimating and displaying a graphical summary of weight gain and weight loss scenarios arising as a result of an exercise and dietary regimen; Downloadable software for monitoring caloric expenditure and recording dietary intake, 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; Downloadable software for displaying, 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; Downloadable software for continuously analyzing the functional behaviours of the musculoskeletal and cardiovascular systems of a person engaged in an exercise program; Downloadable software for monitoring physical activity and displaying feedback on the screen of personal digital assistant (PDA) which guides the user through the exercise program” in International Class 9.
“Providing subscription-based multiple-user access to a computer data network containing computer programs for estimating and displaying a graphical summary of weight gain and weight loss scenarios arising as a result of an exercise and dietary regimen, for monitoring caloric expenditure and recording dietary intake, 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, for displaying, 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, for continuously analyzing the functional behaviours of the musculoskeletal and cardiovascular systems of a person engaged in an exercise program, and for monitoring physical activity and displaying feedback on the screen of personal digital assistant (PDA) which guides the user through the exercise program” in International Class 38.
“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.
“Providing subscription-based application service provider (ASP) services featuring software for
Subscription access to the use of a computerized system for estimating and displaying a graphical summary of weight gain and weight loss scenarios arising as a result of an exercise and
dietary regimen regime;, Providing subscription-based application service provider (ASP) services featuring software
for featuring a personal digital assistant (PDA) for monitoring caloric expenditure and recording dietary intake, 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;, Providing subscription-based application
service provider (ASP) services featuring software for and a computer network permitting access to, displaying, 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; Rental of computer peripherals in the nature of a personal
digital assistant (PDA) for monitoring caloric expenditure and recording dietary intake; Providing subscription-based application service provider (ASP) services featuring
software for subscription access to the use of a computerized system for continuously analyzing the functional behaviours of the musculoskeletal and cardiovascular systems of a person
engaged in an exercise program;, Providing subscription-based application service provider (ASP) services featuring software for featuring a
personal digital assistant (PDA) for monitoring physical activity and displaying feedback on the PDA screen which guides the user through the exercise program; Rental of
computer peripherals in the nature of a personal digital assistant (PDA) for monitoring physical activity and displaying feedback on the PDA screen 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” in International Class 42.
Applicant will be required to add International Classes 9, 38, and 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.
II. 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 already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least four 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.
Click HERE to file a response to this non-final Office action
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