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