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:  January 03, 2020

 

Applicant is encouraged to email the trademark examining attorney at eli.hellman@uspto.gov to resolve the issues raised below.  If the suggestions listed below are acceptable, then the examiner will issue an examiner’s amendment and approve the application for publication.

 

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

 

No Similar Marks to Bar Registration

 

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).

 

1. Clarification of the Identification of Goods

 

REQUIREMENT LIMITED TO THE GOODS SPECIFIED HEREIN

 

The wording “Downloadable mobile applications for exercise, physical fitness, personal training, health, wellness, self-improvement, success, life performance, business performance, motivation, psychology, core virtues, values, mindfulness, mental fitness, emotional fitness, breathing, meditation, visualization, mental skills, emotional skills, mental strength and control, emotional strength and control, self-awareness, self-mastery, pain management, anxiety management, fear management, athletic training, physical fitness training and sports training and journal entry purposes” in the identification of goods is indefinite and must be clarified because it only specifies the subject matter of the software, but fails to specify the function or purpose.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  Applicant may substitute the following wording, if accurate:

 

International Class 009:       Downloadable mobile applications featuring physical exercise routines; Downloadable mobile applications featuring information in the fields of exercise, physical fitness, personal training, health, wellness, self-improvement, success, life performance, business performance, motivation, psychology, core virtues, values, mindfulness, mental fitness, emotional fitness, breathing, meditation, visualization, mental skills, emotional skills, mental strength and control, emotional strength and control, self-awareness, self-mastery, pain management, anxiety management, fear management, athletic training, physical fitness training and sports training and journal entry purposes; downloadable mobile applications to help organizations improve employee and worker health, productivity, culture and teamwork; downloadable mobile applications for individual and group challenges in the fields of health, fitness, mindfulness, movement, breathing, habits, wellness, nutrition and hydration, and for measuring, tracking, score keeping, survey-taking and reporting of associated and related information and data; downloadable podcasts in the field of exercise, physical fitness, personal training, health, wellness, self-improvement, success, life performance, business performance, motivation, psychology, core virtues, values, mindfulness, mental fitness, emotional fitness, breathing, meditation, visualization, mental skills, emotional skills, mental strength and control, emotional strength and control, self-awareness, self-mastery, pain management, anxiety management, fear management, athletic training, physical fitness training and sports training; downloadable mobile applications that allow users to track and retrieve information and data about breathing, calories consumed, calories burned, weight, foods eaten and hydration; downloadable mobile applications that allow users to track, retrieve and utilize results, information and data about fitness and exercise workouts; audio and video recordings featuring information, tips and instruction about health, wellness, fitness and exercise; audio recordings featuring information and instruction 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; video recordings featuring information and instruction 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; downloadable computer software for social networking and for enabling transmission, uploading, downloading, posting, displaying, sharing and distribution of photographs, text, messages, digital files, electronic files, data, information, graphics, images, audio, videos, audio-visual content, audio-visual files, electronic media and other content; downloadable electronic publications in the nature of articles and magazines and downloadable e-books, all 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 

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

Failure to Respond Will Result in the Abandonment of Particular Goods

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application:  Downloadable mobile applications for exercise, physical fitness, personal training, health, wellness, self-improvement, success, life performance, business performance, motivation, psychology, core virtues, values, mindfulness, mental fitness, emotional fitness, breathing, meditation, visualization, mental skills, emotional skills, mental strength and control, emotional strength and control, self-awareness, self-mastery, pain management, anxiety management, fear management, athletic training, physical fitness training and sports training and journal entry purposes. 

 

The application will then proceed with the remaining goods.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

RESPONDING TO THIS OFFICE ACTION

 

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.

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Eli J. Hellman/

Trademark Examining Attorney

Law Office 102

United States Patent and Trademark Office

571.272.8276

eli.hellman@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 January 03, 2020 for

U.S. Trademark Application Serial No. 88617546

 

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. 

 

 

/Eli J. Hellman/

Trademark Examining Attorney

Law Office 102

United States Patent and Trademark Office

571.272.8276

eli.hellman@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 January 03, 2020, 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.”