Response to Office Action

PTO- 1957

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

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PTO- 1957

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90206376 LILY(Standard Characters, see http://uspto.report/TM/90206376/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Monitoring devices not for medical purposes used to monitor body movements and speed; GPS tracking devices; monitoring devices for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns; apparatus or instruments for calculating, monitoring, tracking, recording or display purposes, namely, activity trackers; devices incorporating a horological function and being used for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns, namely, activity trackers; apparatus or instruments incorporating a horological function for calculating, monitoring, tracking, recording or display purposes, namely, activity trackers; wearable digital electronic devices in the form of a wrist smartwatch for providing software and display screens for viewing, sending and receiving texts, emails, data and information; electronic devices in the form of a wristband or bracelet incorporating a display screen and/or software for viewing, sending and/or receiving texts, emails, data or other information, namely, activity trackers; Global Positioning Systems (GPS); software and hardware for use in navigation or for use in GPS; GPS incorporating a watch, GPS incorporating watches or horologic instruments; GPS incorporating watches or horologic instruments; and parts of and fittings for the aforesaid goods
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.


Proposed:

Tracked Text Description: Monitoring devices not for medical purposes used to monitor body movements and speed; GPS tracking devices; monitoring devices for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns; apparatus or instruments for calculating, monitoring, tracking, recording or display purposes, namely, activity trackers; devices incorporating a horological function and being used for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns, namely, activity trackers; apparatus or instruments incorporating a horological function for calculating, monitoring, tracking, recording or display purposes, namely, activity trackers; Wearable digital electronic devices in the form of a wrist smartwatch for providing software and display screens for viewing, sending and receiving texts, emails, data and information; electronic devices in the form of a wristband or bracelet incorporating a display screen and/or software for viewing, sending and/or receiving texts, emails, data or other information, namely, activity trackers; Global Positioning Systems (GPS); software and hardware for use in navigation or for use in GPS; recorded software and hardware for use in navigation or for use in GPS; GPS incorporating a watch, GPS incorporating watches or horologic instruments; GPS incorporating watches or horologic instruments; and parts of and fittings for the aforesaid goodsClass 009 for Monitoring devices not for medical purposes used to monitor body movements and speed; GPS tracking devices; monitoring devices for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns; apparatus or instruments for calculating, monitoring, tracking, recording or display purposes, namely, activity trackers; devices incorporating a horological function and being used for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns, namely, activity trackers; apparatus or instruments incorporating a horological function for calculating, monitoring, tracking, recording or display purposes, namely, activity trackers; Wearable digital electronic devices in the form of a wrist smartwatch for providing software and display screens for viewing, sending and receiving texts, emails, data and information; electronic devices in the form of a wristband or bracelet incorporating a display screen and/or software for viewing, sending and/or receiving texts, emails, data or other information, namely, activity trackers; Global Positioning Systems (GPS); recorded software and hardware for use in navigation or for use in GPS; GPS incorporating a watch, GPS incorporating watches or horologic instruments; GPS incorporating watches or horologic instruments; and parts of and fittings for the aforesaid goods
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

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

Correspondence Information (current):
      DAVID V. AYRES
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@garmin.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 701.1430.
Correspondence Information (proposed):
      David V. Ayres
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@garmin.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 701.1430.

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)
Response Signature
Signature: /David V Ayres/     Date: 06/07/2021
Signatory's Name: David V. Ayres
Signatory's Position: Attorney of record, Kansas bar member

Signatory's Phone Number: 913-397-8200 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.

Mailing Address:    DAVID V. AYRES
   GARMIN INTERNATIONAL, INC.
   LEGAL DEPARTMENT - IP
   1200 E. 151ST STREET
   OLATHE, Kansas 66062
Mailing Address:    David V. Ayres
   GARMIN INTERNATIONAL, INC.
   LEGAL DEPARTMENT - IP
   1200 E. 151ST STREET
   OLATHE, Kansas 66062
        
Serial Number: 90206376
Internet Transmission Date: Mon Jun 07 17:13:36 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2021060717133698
3987-90206376-7805aa1e6e2a1ce8d7ffd8dd4c
71ea5da24c6c8f62ee8f13b7f179d9028cafa-N/
A-N/A-20210607152203262857