T-MOBILE USA, INC.

Generated on: This page was generated by TSDR on 2016-08-09 18:02:35 EDT
Mark: SMART FIT

US Serial Number: 76718820 Application Filing Dec. 28, 2015
Date:
Register: Principal
Mark Type: Service Mark
TM5 Common Status LIVE/APPLICATION/Under Examination
Descriptor:
The trademark application has been accepted by the Office (has met the
minimum filing requirements) and that this application has been assigned to
an examiner.

Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional
information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on
the Trademark Document Retrieval link at the top of this page.
Status Date: Apr. 22, 2016

Mark Information
Mark Literal SMART FIT
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 – STANDARD CHARACTER MARK
Type:

Foreign Information
Priority Claimed: Yes
Foreign 49967 Foreign Jun. 23, 2015
Application Application Filing
Number: Date:
Foreign TRINIDAD AND TOBAGO
Application/Registration
Country:

Goods and Services
Note: The following symbols indicate that the registrant/owner has amended the goods/services:

Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.

For: Cellular telecommunications services, namely, transmission of voice, audio, data, text, images, video, digital music, information,
facsimiles, electronic gaming and graphics via cellular telecommunications networks; cellular telecommunications services, namely,
two-way real-time transmission of voice, audio, video and data between wireless telecommunications devices; wireless telephone
telecommunications services, namely, providing wireless calling plans; text messaging and electronic multimedia messaging services;
providing multiple-user access to a global computer network; wireless roaming services, namely, providing access to a cellular
telecommunication network; audio chat services; video chat services; electronic mail services; electronic voice messaging services,
namely, recording and subsequent transmission of data files consisting of audio voice messages; streaming services, namely,
transmission of audio, video, text and multimedia content; telephone communication services, namely, ringback tone services;
streaming of audio, video, and audiovisual material on the Internet, namely, streaming prerecorded music, video, online radio, and
audiovisual content featuring entertainment and cultural events
International 038 – Primary Class U.S Class(es): 100, 101, 104
Class(es):
Class Status: ACTIVE
Basis: 1(b) 44(d)
Basis Information (Case Level)
Filed Use: No Currently Use: No Amended Use: No
Filed ITU: Yes Currently ITU: Yes Amended ITU: No
Filed 44D: Yes Currently 44D: Yes Amended 44D: No
Filed 44E: No Currently 44E: No Amended 44E: No
Filed 66A: No Currently 66A: No
Filed No Basis: No Currently No Basis: No

Current Owner(s) Information
Owner Name: IBSV, LLC
Owner Address: 2000 K Street NW, Suite 500
c/o Bracewell & Giuliani LLP
Washington, DISTRICT OF COLUMBIA UNITED STATES 20006
Legal Entity Type: LIMITED LIABILITY COMPANY State or Country DELAWARE
Where Organized:

Attorney/Correspondence Information
Attorney of Record
Attorney Name: Erin S. Hennessy Docket Number: 085911.TBD
Attorney Primary [email protected] Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Erin S. Hennessy
Name/Address: Bracewell LLP
701 Fifth Avenue
Suite 6200
Seattle, WASHINGTON UNITED STATES 98104
Phone: 206.204.6200 Fax: 206.204.6262
Correspondent e- [email protected] [email protected] Correspondent e- Yes
mail: cewelllaw.com [email protected] mail Authorized:
[email protected] [email protected]
bracewelllaw.com
Domestic Representative – Not Found

Prosecution History
Proceeding
Date Description
Number
Apr. 28, 2016 PETITION TO DIRECTOR DENIED 81093
Apr. 22, 2016 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Apr. 22, 2016 NON-FINAL ACTION E-MAILED 6325
Apr. 22, 2016 NON-FINAL ACTION WRITTEN 92842
Apr. 18, 2016 APPLICANT AMENDMENT PRIOR TO EXAMINATION – ENTERED 88889
Apr. 18, 2016 TEAS VOLUNTARY AMENDMENT RECEIVED
Apr. 18, 2016 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Apr. 14, 2016 ASSIGNED TO EXAMINER 92842
Jan. 14, 2016 TEAS RESPONSE TO PETITION TO DIRECTOR INQUIRY
Jan. 07, 2016 PETITION INQUIRY LETTER MAILED
Jan. 06, 2016 ASSIGNED TO PETITION STAFF 81093
Dec. 28, 2015 PETITION TO DIRECTOR RECEIVED 72574
Jan. 05, 2016 APPLICATION FILING RECEIPT MAILED

TM Staff and Location Information
TM Staff Information
TM Attorney: RAJA, AMER YASIN Law Office LAW OFFICE 121
Assigned:
File Location
Current Location: PETITIONS OFFICE Date in Location: May 02, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE

U. S. APPLICATION SERIAL NUMBER: 76/718820

U. S. REGISTRATION NUMBER:
*76718820*
CORRESPONDENCE ADDRESS: RETURN ADDRESS:

Erin S. Hennessy Commissioner for Trademarks
Bracewell & Giuliani, LLP P.O. Box 1451
701 Fifth Avenue Alexandria, VA 22313-1451
Suite 6200
Seattle, WA 98104
MARK: ISSUE/MAILING DATE:
SMARTFIT April 28, 2016

APPLICANT/REGISTRANT:
IBSV, LLC

CORRESPONDENT’S REFERENCE/DOCKET NO :
085911.TBD

CORRESPONDENT’S EMAIL ADDRESS :
[email protected]

DECISION ON PETITION TO DIRECTOR

IBSV, LLC (petitioner) has petitioned the Director of the United States Patent and Trademark Office (Director) to grant a filing date to an
application having a deficient fee. Petitioner has also requested a filing date earlier than the date the application was received. The Director has
the authority to review petitioner’s request. See 37 C.F.R. §2.6(a), 2.21(a), and 2.146(a)(5). The petition is granted as to the request to receive a
filing date. The petition is denied as to the request to receive a filing date prior to receipt of the application.

FACTS

On December 22, 2015, the United States Patent and Trademark Office (USPTO) headquarters experienced a major power outage resulting in
damaged equipment that required the subsequent shutdown of the Trademark Electronic Application System (TEAS) through December 27,
2015. On December 23, 2015, petitioner placed the above-identified application in the United States Postal Service (USPS) First Class Mail
(Certified), along with a certificate of mailing. On December 28, 2015, the USPTO received the above-identified application for registration on
the Principal Register, for one class of services, based on intent to use under Trademark Act Section 1(b) and a claim of priority under Section
44(d). 15 U.S.C. §§1051(b), 1126(d). The application, filed on paper, included a $325.00 fee, which is $50 less than the required fee for paper
filings. See 37 C.F.R. §2.6(a)(1)(i).

On January 7, 2016, the USPTO sent an inquiry letter requesting the remainder of the deficient fee and inquiring about the facts surrounding the
filing of the initial application on paper. On January 14, 2016, petitioner filed a response to the inquiry letter and declared that the above-
identified application was filed on paper due to the unavailability of TEAS resulting from the extraordinary circumstance of the power outage.
Petitioner further declared that she inadvertently omitted the additional $50 required for paper filings. In the response to the inquiry letter,
petitioner further requested that the filing date be amended to December 23, 2015, the date the application was deposited in the USPS along with
a certificate of mailing.

DISCUSSION

Under Trademark Rule 2.21(a), 37 C.F.R. §2.21(a), the USPTO will grant a filing date to an application under §1 of the Trademark Act if it
includes the name of the applicant, a name and address for correspondence, a clear drawing of the mark, a listing of goods or services and the
filing fee for at least one class of goods or services, required by Trademark Rule 2.6. 37 C.F.R. §2.6. Trademark Rule 2.6(a)(1)(i) requires a fee
in the amount of $375 per class for applications filed on paper.

The Director may waive or suspend a rule “in an extraordinary situation, when justice requires and no other party is injured.” 37 C.F.R.
§§2.146(a)(5), 2.148; see TMEP §1708. To waive a rule, the Director must determine that all three conditions are satisfied. See TMEP §1708.
In this case, the Director finds that a waiver or suspension of Rule 2.21(a) and 2.6 (a)(1)(i) is appropriate. Petitioner’s attempt to file the
application during an unprecedented multi-day power outage establishes an extraordinary circumstance. Further, the Director can conclude that
no other party will be injured and justice requires a waiver of the rules. See TMEP §§807.10, 1708. Because petitioner inadvertently paid the
electronic filing fee rather than the paper filing fee due to the extraordinary circumstance of the USPTO power outage, the office accepts the
remainder of the fee and assigns a filing date of December 28, 2015.

Priority Maintained

Petitioner’s application includes a claim of priority under Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d),based on Trinidad and
Tobago application number 49967, filed on June 23, 2015. In light of the emergency situation created by the power outage, the USPTO declared
each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia”
under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196. Any action or fee due on these days was considered timely for the
purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064, and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action was
taken, or the fee paid, on the next succeeding business day on which the USPTO was open (37 C.F.R. §§ 1.7(a) and 2.196). As December 25,
2015 was also a previously declared Federal holiday leading into the weekend, the next business day was December 28, 2015. To be eligible for
a claim of priority under Section 44(d), an applicant must file a claim of priority within six months of the filing date of the first-filed foreign
application. 15 U.S.C. §1126(d)(1); 37 C.F.R. §§2.34(a)(4)(i), 2.35(b)(5). Here, the six month deadline fell on December 23, 2015. As the
USPTO declared this day a holiday and the next business day was December 28, 2015, the day upon which the paper application was received,
petitioner’s claim of priority is timely.

Request for Earlier Filing Date Denied

Trademark Rules 2.197 provides that certain correspondence is considered filed with the USPTO on the date deposited in the USPS with a
certificate of mailing. Certificates of mailing, however, do not apply to the filing of new applications. 37 C.F.R. § 2.197(a)(2)(i). Petitioner
requests that Trademark Rule 2.197 be waived to allow a filing date for the new application to be based on the date it was deposited with a
certificate of mailing, namely December 23, 2015. Petitioner acknowledges that certificates of mailing are “not normally honored as a means of
securing a filing date for a new trademark application” and requests that “an exception be made here given the extraordinary circumstances and
the priority deadline.” (Petition 2).

As noted above, the Director may waive or suspend a rule “in an extraordinary situation, when justice requires and no other party is injured.” 37
C.F.R. §§2.146(a)(5), 2.148; see TMEP §1708. To waive a rule, the Director must determine that all three conditions are satisfied. See TMEP
§1708. In this case, although the Director finds the power outage established an extraordinary circumstance, the Director cannot conclude that
justice requires or that no other party will be injured. See TMEP §§807.10, 1708. Third parties must rely on the filing date reflected in the
USPTO database for purposes of determining priority among potentially conflicting applications. Accordingly, third parties would be potentially
harmed if the filing date were amended.

After a filing date has been assigned, the USPTO will normally not vacate the filing date or physically alter the designation of the original filing
date in the Trademark database, except where the application as originally filed was erroneously accorded a filing date. See TMEP §205. Here,
the filing date was properly assigned as of the date the application was received in the USPTO. Petitioner argues that the certificate of mailing
should be honored as a method of securing a mailing date in view of the power outage. However, the Trademark rules expressly prohibit use of a
certificate of mailing for securing a filing date for a new application because of the importance of providing notice to third parties who rely on the
USPTO records. See 37 C.F.R. §2.197 (a) (2)(i). Because the Director finds that there is potential third party harm and that the priority claim
under Section 44(d) of the Trademark Act is retained, the request to accord an earlier filing date is denied.

DECISION

The petition is granted, in part. The Director will accord a filing date of December 28, 2015 to the above-identified application filed under
Trademark Act Section 1(b) and a timely claim of priority under Section 44(d). 15 U.S.C. §§1051(b), 1126(d).

The petition is denied as to the request for an earlier filing date. The application will proceed to examination in due course.

/Sharon R. Marsh/

Sharon R. Marsh
Deputy Commissioner
for Trademark Examination Policy

SRM:CK

For general and other useful information about trademarks, you are encouraged to visit the USPTO web site at
http://www.uspto.gov/main/trademarks.htm.