TEAS Request Reconsideration after FOA

FITBIT

Fitbit, Inc.

TEAS Request Reconsideration after FOA

PTO- 1960
Approved for use through 11/30/2023. OMB 0651-0050
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Request for Reconsideration after Final Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88655636
LAW OFFICE ASSIGNED LAW OFFICE 114
MARK SECTION
MARK FILE NAME http://uspto.report/TM/88655636/mark.png
LITERAL ELEMENT FITBIT
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
ARGUMENT(S)
Applicant hereby submits its verified substitute specimen for class 14, which is a screenshot of Applicant's online store, showing bracelets designed by fashion designer Kim Shui for Fitbit, purchasable through the "SHOP NOW" buttons. The substitute specimen was in use in commerce at least as early as the filing date of the application. This statement is made under declaration per 37 C.F.R. Section 2.20. Applicant also notes that the revised description in Class 42, "providing a website featuring data analytics reporting and data analytics related to medical claim costs and healthcare spending," does not exceed the scope of the original description, as it limits the way in which data analytics and data analytics reporting are provided. The original description covers "providing data analytics, data analytics reporting, and data analytics consulting services in the field of medical claim costs and healthcare spending." The way in which data analytics and data analytics reporting are provided is the reason this description belongs in Class 42, as it is through a website that offers and provides this functionality. Accordingly, the description as revised should be acceptable in Class 42. In light of the foregoing, Applicant requests acceptance of the application for publication.
GOODS AND/OR SERVICES SECTION (009) (no change)
GOODS AND/OR SERVICES SECTION (010) (current)
INTERNATIONAL CLASS 010
DESCRIPTION
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; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 01/00/2016
        FIRST USE IN COMMERCE DATE At least as early as 01/00/2016
GOODS AND/OR SERVICES SECTION (010) (proposed)
INTERNATIONAL CLASS 010
TRACKED TEXT DESCRIPTION
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; 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 monitoring apparatus; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption consisting of respiratory sensors to be worn on a person for the purpose of estimating maximal oxygen consumption
FINAL DESCRIPTION
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 monitoring apparatus; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption consisting of respiratory sensors to be worn on a person for the purpose of estimating maximal oxygen consumption
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 01/00/2016
       FIRST USE IN COMMERCE DATE At least as early as 01/00/2016
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
GOODS AND/OR SERVICES SECTION (014) (current)
INTERNATIONAL CLASS 014
DESCRIPTION
Horological and chronometric instruments; watches; timepieces; watch straps; watch bands; jewelry; bracelets; pendants
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 01/00/2016
        FIRST USE IN COMMERCE DATE At least as early as 01/00/2016
GOODS AND/OR SERVICES SECTION (014) (proposed)
INTERNATIONAL CLASS 014
DESCRIPTION
Horological and chronometric instruments; watches; timepieces; watch straps; watch bands; jewelry; bracelets; pendants
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 01/00/2016
       FIRST USE IN COMMERCE DATE At least as early as 01/00/2016
       STATEMENT TYPE "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"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
       SPECIMEN FILE NAME(S)
       ORIGINAL PDF FILE SPU2-839136204-2021022217 2341830737_._Cl_14_Spec.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\886\556\88655636\xml4\ RFR0002.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\886\556\88655636\xml4\ RFR0003.JPG
       SPECIMEN DESCRIPTION screenshot of Applicant's online store showing use of the mark in connection with bracelets for purchase
        WEBPAGE URL http://www.fitbit.com/designer-collections/kim-shui
        WEBPAGE DATE OF ACCESS 11/02/2019
GOODS AND/OR SERVICES SECTION (041) (no change)
GOODS AND/OR SERVICES SECTION (042) (current)
INTERNATIONAL CLASS 042
DESCRIPTION
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 helps 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; providing data analytics, data analytics reporting, and data analytics consulting services in the field of medical claim costs and healthcare spending; design and development of computer hardware and software; scientific research and development
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 01/00/2016
        FIRST USE IN COMMERCE DATE At least as early as 01/00/2016
GOODS AND/OR SERVICES SECTION (042) (proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
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 helps 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; providing data analytics, data analytics reporting, and data analytics consulting services in the field of medical claim costs and healthcare spending; providing technology consulting in the field of data analytics related to medical claim costs and healthcare spending; providing a website featuring data analytics reporting and data analytics related to medical claim costs and healthcare spending; design and development of computer hardware and software; scientific research and development
FINAL DESCRIPTION
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 helps 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; providing technology consulting in the field of data analytics related to medical claim costs and healthcare spending; providing a website featuring data analytics reporting and data analytics related to medical claim costs and healthcare spending; design and development of computer hardware and software; scientific research and development
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 01/00/2016
       FIRST USE IN COMMERCE DATE At least as early as 01/00/2016
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
GOODS AND/OR SERVICES SECTION (044) (current)
INTERNATIONAL CLASS 044
DESCRIPTION
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 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
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 01/00/2016
        FIRST USE IN COMMERCE DATE At least as early as 01/00/2016
GOODS AND/OR SERVICES SECTION (044) (proposed)
INTERNATIONAL CLASS 044
TRACKED TEXT DESCRIPTION
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 healthcare management services, namely, chronic care management; providing healthcare management services, namely, healthcare services in the field of 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
FINAL DESCRIPTION
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 healthcare management services, namely, healthcare services in the field of 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
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 01/00/2016
       FIRST USE IN COMMERCE DATE At least as early as 01/00/2016
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
CORRESPONDENCE INFORMATION (current)
NAME Karen A. Webb
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarks@fenwick.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) driggio@fenwick.com
DOCKET/REFERENCE NUMBER 33338-70011
CORRESPONDENCE INFORMATION (proposed)
NAME Karen A. Webb
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarks@fenwick.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) driggio@fenwick.com
DOCKET/REFERENCE NUMBER 33338-70011
SIGNATURE SECTION
DECLARATION SIGNATURE /moira lion/
SIGNATORY'S NAME Moira C. Lion
SIGNATORY'S POSITION Attorney of record, California Bar member
SIGNATORY'S PHONE NUMBER (650) 988-8500
DATE SIGNED 02/22/2021
SIGNATURE METHOD Sent to third party for signature
RESPONSE SIGNATURE /moira lion/
SIGNATORY'S NAME Moira C. Lion
SIGNATORY'S POSITION Attorney of record, California Bar member
DATE SIGNED 02/22/2021
ROLE OF AUTHORIZED SIGNATORY Authorized U.S.-Licensed Attorney
SIGNATURE METHOD Sent to third party for signature
CONCURRENT APPEAL NOTICE FILED NO
FILING INFORMATION SECTION
SUBMIT DATE Mon Feb 22 21:04:06 ET 2021
TEAS STAMP USPTO/RFR-X.XX.XXX.XXX-20
210222210406946633-886556
36-770a185e1e8758d3aa6970
462482b9cb1916875e7927986
af221fba07f98a6cd13-N/A-N
/A-20210222192846051100



PTO- 1960
Approved for use through 11/30/2023. OMB 0651-0050
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Request for Reconsideration after Final Action


To the Commissioner for Trademarks:

Application serial no. 88655636 FITBIT (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8865563 6/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant hereby submits its verified substitute specimen for class 14, which is a screenshot of Applicant's online store, showing bracelets designed by fashion designer Kim Shui for Fitbit, purchasable through the "SHOP NOW" buttons. The substitute specimen was in use in commerce at least as early as the filing date of the application. This statement is made under declaration per 37 C.F.R. Section 2.20. Applicant also notes that the revised description in Class 42, "providing a website featuring data analytics reporting and data analytics related to medical claim costs and healthcare spending," does not exceed the scope of the original description, as it limits the way in which data analytics and data analytics reporting are provided. The original description covers "providing data analytics, data analytics reporting, and data analytics consulting services in the field of medical claim costs and healthcare spending." The way in which data analytics and data analytics reporting are provided is the reason this description belongs in Class 42, as it is through a website that offers and provides this functionality. Accordingly, the description as revised should be acceptable in Class 42. In light of the foregoing, Applicant requests acceptance of the application for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for 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; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2016 and first used in commerce at least as early as 01/00/2016 , and is now in use in such commerce.


Proposed:

Tracked Text Description: 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; 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 monitoring apparatus; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption consisting of respiratory sensors to be worn on a person for the purpose of estimating maximal oxygen consumptionClass 010 for 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 monitoring apparatus; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption consisting of respiratory sensors to be worn on a person for the purpose of estimating maximal oxygen consumption
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2016 and first used in commerce at least as early as 01/00/2016 , and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Applicant proposes to amend the following:

Current:
Class 014 for Horological and chronometric instruments; watches; timepieces; watch straps; watch bands; jewelry; bracelets; pendants
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2016 and first used in commerce at least as early as 01/00/2016 , and is now in use in such commerce.


Proposed:
Class 014 for Horological and chronometric instruments; watches; timepieces; watch straps; watch bands; jewelry; bracelets; pendants
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2016 and first used in commerce at least as early as 01/00/2016 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 014. The specimen(s) submitted consists of screenshot of Applicant's online store showing use of the mark in connection with bracelets for purchase.
"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"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU2-839136204-2021022217 2341830737_._Cl_14_Spec.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2


Webpage URL: http://www.fitbit.com/designer-collections/kim-shui
Webpage Date of Access: 11/02/2019

Applicant proposes to amend the following:

Current:
Class 042 for 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 helps 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; providing data analytics, data analytics reporting, and data analytics consulting services in the field of medical claim costs and healthcare spending; design and development of computer hardware and software; scientific research and development
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2016 and first used in commerce at least as early as 01/00/2016 , and is now in use in such commerce.


Proposed:

Tracked Text Description: 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 helps 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; providing data analytics, data analytics reporting, and data analytics consulting services in the field of medical claim costs and healthcare spending; providing technology consulting in the field of data analytics related to medical claim costs and healthcare spending; providing a website featuring data analytics reporting and data analytics related to medical claim costs and healthcare spending; design and development of computer hardware and software; scientific research and developmentClass 042 for 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 helps 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; providing technology consulting in the field of data analytics related to medical claim costs and healthcare spending; providing a website featuring data analytics reporting and data analytics related to medical claim costs and healthcare spending; design and development of computer hardware and software; scientific research and development
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2016 and first used in commerce at least as early as 01/00/2016 , and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Applicant proposes to amend the following:

Current:
Class 044 for 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 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
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2016 and first used in commerce at least as early as 01/00/2016 , and is now in use in such commerce.


Proposed:

Tracked Text Description: 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 healthcare management services, namely, chronic care management; providing healthcare management services, namely, healthcare services in the field of 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 healthClass 044 for 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 healthcare management services, namely, healthcare services in the field of 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
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2016 and first used in commerce at least as early as 01/00/2016 , and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information (current):
      Karen A. Webb
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@fenwick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): driggio@fenwick.com

The docket/reference number is 33338-70011.
Correspondence Information (proposed):
      Karen A. Webb
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@fenwick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): driggio@fenwick.com

The docket/reference number is 33338-70011.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.



Signature: /moira lion/      Date: 02/22/2021
Signatory's Name: Moira C. Lion
Signatory's Position: Attorney of record, California Bar member
Signatory's Phone Number: (650) 988-8500

Signature method: Sent to third party for signature

Request for Reconsideration Signature
Signature: /moira lion/     Date: 02/22/2021
Signatory's Name: Moira C. Lion
Signatory's Position: Attorney of record, California Bar member
Signature method: Sent to third party for signature

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Karen A. Webb
   FENWICK & WEST LLP
   SILICON VALLEY CENTER
   801 CALIFORNIA STREET
   MOUNTAIN VIEW, California 94041
Mailing Address:    Karen A. Webb
   FENWICK & WEST LLP
   SILICON VALLEY CENTER
   801 CALIFORNIA STREET
   MOUNTAIN VIEW, California 94041
        
Serial Number: 88655636
Internet Transmission Date: Mon Feb 22 21:04:06 ET 2021
TEAS Stamp: USPTO/RFR-X.XX.XXX.XXX-20210222210406946
633-88655636-770a185e1e8758d3aa697046248
2b9cb1916875e7927986af221fba07f98a6cd13-
N/A-N/A-20210222192846051100


TEAS Request Reconsideration after FOA [image/jpeg]

TEAS Request Reconsideration after FOA [image/jpeg]


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