| To: | Fitbit, Inc. (trademarks@fenwick.com) |
| Subject: | U.S. Trademark Application Serial No. 88655636 - FITBIT - 33338-70011 |
| Sent: | January 29, 2020 08:58:33 AM |
| Sent As: | ecom114@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88655636
Mark: FITBIT
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Correspondence Address: |
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Applicant: Fitbit, Inc.
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Reference/Docket No. 33338-70011
Correspondence Email Address: |
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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 29, 2020
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).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
IDENTIFICATION OF GOODS AND/OR SERVICES REQUIREMENT
In International Class 9, the wording “cables, namely, charging cables” in the identification of goods is indefinite and must be clarified because it does not specify the nature of the cables. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “cables, namely, electric charging cables” in International Class 9.
The wording “downloadable computer application software for smartphones and mobile devices to support corporate wellness programs” in the identification of goods is indefinite and must be clarified because it does not specify the function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “downloadable computer application software for smartphones and mobile devices for {specify the function of the software, e.g., use in database management} to support corporate wellness programs” in International Class 9.
The wording “computer software development tools” in the identification of goods is indefinite and must be clarified because it does not specify whether the goods are downloadable or not. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “downloadable computer software development tools” in International Class 9.
In International Class 10, the wording “general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying biometric data, body movement, sleep, heart rate, and calories burned” and “general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption” in the identification of goods is indefinite and must be clarified because it does not specify what the monitoring devices consist of. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying biometric data, body movement, sleep, heart rate, and calories burned consisting of heart rate monitors” and “general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption consisting of respiratory monitors” in International Class 10.
In International Class 41, the wording “yoga classes” in the identification of services is indefinite and must be clarified because it does not specify the nature of the services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “yoga instruction, namely, yoga classes” in International Class 41.
In International Class 42, the wording “software as a service (SaaS) that enables users to manage employee accounts, schedule and track employee participation, and facilitate and manage corporate fitness and wellness programs” and “software as a service (SaaS) for use in designing, creating and analyzing data, metrics and reports in the areas of health, fitness, sleep, nutrition and wellness” in the identification of services is indefinite and must be clarified because it does not specify the nature of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “software as a service (SaaS) services featuring software that enables users to manage employee accounts, schedule and track employee participation, and facilitate and manage corporate fitness and wellness programs” and “software as a service (SaaS) services featuring software for use in designing, creating and analyzing data, metrics and reports in the areas of health, fitness, sleep, nutrition and wellness in International Class 42.
In International Class 44, the wording “providing healthcare management services, namely, chronic care management” in the identification of services is indefinite and must be clarified because it does not specify the type of healthcare management services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “providing geriatric healthcare management services, namely, chronic care management” in International Class 44.
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate:
International Class 9: Personal electronic devices used to track fitness goals and statistics; wearable activity trackers; smartwatches; portable digital electronic devices for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; wearable electronic devices, namely, watches, bracelets, and wristbands that are comprised of software that communicates data to personal digital assistants, smart phones, and personal computers through Internet websites and other computer and electronic communication networks; wearable digital electronic devices comprised primarily of software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, audio, image and digital files and display screens; cables, namely, electric charging cables; computer peripheral devices; scales; personal weighing scales; computers; sensors for scientific use to be worn by a human to gather human biometric data; downloadable software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, audio, image and digital files; downloadable computer application software for smartphones and mobile devices in the fields of fitness and exercise featuring personal training services, coaching, workouts and fitness assessments; downloadable mobile application software for creating personalized fitness training programs; downloadable computer application software for smartphones and mobile devices for {specify the function of the software, e.g., use in database management} to support corporate wellness programs; downloadable computer software development tools; pre-recorded video recordings featuring athletic and fitness sessions; computer hardware; electronic devices, namely, portable digital electronic devices for transmitting audio files; headphones; earbuds; earphones; wireless audio devices in the nature of wireless earbuds, earphones and headphones for use with smartwatches and wearable activity trackers; microphones; remote control for controlling mobile devices; sound reproducing apparatus; audio speakers; accessories for mobile, portable and handheld devices, namely, earbuds, earphones and headphones; earphone accessories, namely, earphone cushions, earphone pads, and earphone cases; downloadable software in the nature of a mobile application and desktop applications for facilitating communication between medical facilities, clinicians, caregivers, health coaches, and patients; downloadable software in the nature of a mobile application and desktop applications for facilitating collaborative medical treatment between medical facilities, clinicians, caregivers, health coaches and patients; downloadable software in the nature of a mobile application and desktop applications for communication of medical data between medical facilities, clinicians, caregivers, health coaches and patients; downloadable software in the nature of a mobile application and desktop applications for tracking and maintenance of health and treatment plans; downloadable software in the nature of a mobile application and desktop applications for recording medical data; downloadable computer software for providing health, wellness, healthcare, and medical information; downloadable computer software for providing access to healthcare and health coaching services; downloadable computer software platform for application development for use in the fields of health, wellness, and nutrition; downloadable computer software for retrieving, analyzing, and generating reports on a user's health and wellness from data generated by wearable digital electronic devices; downloadable computer software for use in managing user participation in health challenges in the nature of competitions focused on health and wellness; downloadable computer software in the field of health and wellness for transmission of messages among users; downloadable computer software for enabling social networking among users in the field of health and wellness; downloadable software allowing users to engage in health and wellness challenges with others, to participate in social networking and online discussions with others on medical, healthcare, and wellness issues, to perform health assessments, and to track health and wellness activities, goals, outcomes, and rewards; downloadable software enabling users to receive personalized recommendations in the medical, healthcare, and wellness fields; downloadable software for use by patients, their families, and health care professionals enabling users to provide and receive patient care, patient coaching, and healthcare information; downloadable software that provides information to users regarding health, wellness, and nutrition; downloadable software that allows users to assess their habits in the areas of health, nutrition, and wellness; downloadable software for consumer engagement and behavior change modeling to enable users to improve their health and wellness; downloadable computer software for tracking, collecting and analyzing health data for use in conducting health risk assessments, recommending preventative health measures, condition management, and tracking behavior modification; downloadable software for providing patient engagement, namely, prescription medication adherence and patient health management, through outbound messaging technology
International Class 10: Medical devices for measuring body weight and estimating body fat percentage; general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying biometric data, body movement, sleep, heart rate, and calories burned consisting of heart rate monitors; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption consisting of respiratory monitors
International Class 14: Horological and chronometric instruments; watches; timepieces; watch straps; watch bands; jewelry; bracelets; pendants
International Class 36: providing financial data analytics, reporting, and consulting services in the field of medical claim costs and healthcare spending
International Class 41: Conducting fitness classes; physical fitness conditioning classes; fitness boot camps; yoga instruction, namely, yoga classes; boxing and kickboxing fitness classes; providing classes in the fields of fitness and exercise; providing a website featuring non-downloadable pre-recorded videos featuring athletic and fitness sessions; educational services, namely, conducting seminars, conferences, and workshops in the fields of health and wellness; online journals, namely, blogs featuring commentary, advice and information in the fields of health, wellness, sleep, fitness and nutrition; health coaching services, namely, providing personal coaching services in the fields of diet, nutrition, wellness, fitness, mental health, and chronic medical condition management; health care personal coaching services offering calls or chats, notifications, the ability to track activities, incentive management solutions and wellness challenges; health coaching, namely, physical fitness consultation; providing personal coaching in the field of wellness and health; health coaching services in the nature of personal coaching in the field of wellness promotion, disease and condition management
International Class 42: Online non-downloadable computer software for tracking fitness, health and wellness goals and statistics; online non-downloadable computer software for displaying, aggregating, analyzing and organizing data and information in the fields of health, wellness, fitness, physical activity, weight management, sleep, and nutrition; online non-downloadable software for creating personalized fitness training programs; online non-downloadable software for providing personal training services, workouts and fitness assessments; application service provider, featuring application programming interface (API) software for allowing data retrieval, upload, access, management, tracking, and analyzing of user data; software as a service (SaaS) services featuring software that enables users to manage employee accounts, schedule and track employee participation, and facilitate and manage corporate fitness and wellness programs; software as a service (SaaS) services featuring software for use in designing, creating and analyzing data, metrics and reports in the areas of health, fitness, sleep, nutrition and wellness; designing, creating and maintaining electronic commerce websites for others; providing online non-downloadable software in the field of health and wellness for enabling social networking among users; providing online non-downloadable software that help users maintain and expand health habits; providing online non-downloadable software that allows users to assess their habits in the areas of health, nutrition, and wellness; providing online non-downloadable software for managing user participation in health challenges in the nature of competitions focused on health and wellness; providing online non-downloadable software that allows users to catalog health habits in the areas of nutrition, fitness, health and wellness; providing online non-downloadable software that allows users to interact with other users to form a support network in the areas of nutrition, fitness, health and wellness; providing online non-downloadable software for consumer engagement and behavior change modeling to enable users to improve their health and wellness; providing a web site featuring technology that enables companies and organizations to administer and manage employee incentive award programs to promote employee health; technical support and consultation services for developing computer systems, databases and applications; software as a service (SaaS) services featuring software for facilitating communication between medical facilities, clinicians, health coaches and patients; software as a service (SaaS) services featuring software for facilitating collaborative healthcare treatment between medical facilities, clinicians, caregivers, health coaches and patients; software as a service (SaaS) services featuring software for communication of health data between medical facilities, clinicians, caregivers, health coaches and patients; software as a service (SaaS) services featuring software for tracking and maintaining health and treatment plans; software as a service (SaaS) services featuring software for recording health data; software as a service (SaaS) services featuring software communicating health data between medical facilities, clinicians, caregivers, health coaches and patients; software as a service (SaaS) featuring computer software platforms for providing intelligent analytics in the healthcare field; providing temporary use of non-downloadable software for chronic disease management, diabetes management and health management; software as a service (SaaS) services featuring software for users to aggregate, access and exchange healthcare information, manage diseases and conditions, and manage healthcare costs; design and development of computer hardware and software; scientific research and development
International Class 44: Healthcare services; healthcare services, namely, services to enable effective management of one or more chronic conditions; healthcare services, namely, wellness and prevention programs, healthcare management programs, disease management programs and medical condition management programs; providing geriatric healthcare management services, namely, chronic care management; providing health coaching services in the nature of health counseling; providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; providing information in the fields of health, wellness, and nutrition; providing advice in the fields of health, wellness, and nutrition; individual health assessment services; providing healthcare and wellness services, namely, personal assessments, personalized routines, maintenance schedules, fitness evaluations, and counseling; providing personal lifestyle wellness evaluation and consultation; health counseling; counseling services in the fields of health, nutrition, and wellness, namely, personalized health coaching in the nature of health consultation and behavior change support; providing educational information about healthcare for wellness program coordinators; corporate wellness services, namely, providing assistance and consultation to corporate clients to help their employees make health, fitness, wellness and nutritional changes in their daily living to improve health in the nature of wellness and health-related consulting services; consulting services in the field of health
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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 (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least seven classes; however, applicant submitted a fee(s) sufficient for only six class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 9, 10, 41, 42, and 44; and applicant needs a specimen for classes 14 and 36. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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 and/or requirement 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.
/Drew Ciurpita/
Examining Attorney
Law Office 114
571-272-8002
drew.ciurpita@uspto.gov
RESPONSE GUIDANCE