IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
RESPONSE TO OFFICE ACTION
Applicant responds to the Office Action identified above as follows.
Mark: ULTIMATE PHITNESS Serial No.: 99315078 Office Action of: 2025-12-19 (NFIN20251219111347)
Disclaimer
Applicant submits the following disclaimer in response to the examining attorney's requirement that the wording "FITNESS" be disclaimed:
No claim is made to the exclusive right to use "FITNESS" apart from the mark as shown.
Consistent with the examining attorney's instruction, the disclaimer states the disclaimed wording in its correct spelling, "FITNESS," rather than in the form "PHITNESS" as the term appears in the mark. See In re Omaha Nat'l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); TMEP §1213.08(c). The disclaimer is entered in the standardized format set forth in the Office Action and TMEP §1213.08(a)(i).
Applicant respectfully submits that entry of this disclaimer fully satisfies the disclaimer requirement, and requests that the requirement be withdrawn as moot.
Amendment to the Identification of Goods/Services
Applicant acknowledges the examining attorney's requirement to amend the identification of goods in International Class 25 and adopts the identification suggested in the Office Action. Applicant amends the identification of goods to read as follows:
- International Class 005: No change; the identification of record for this class is retained as originally filed.
- International Class 025: Clothing, namely, hats, shorts, shirts, tops, bottoms, hoodies, socks, tank tops, workout clothing in the nature of [APPLICANT TO CONFIRM: the specific Class 25 workout garments applicant offers, e.g., pants, athletic tops, cycling shorts].
- International Class 028: Workout clothing, namely, workout gloves.
The amended identification adopts verbatim the wording the examining attorney suggested as acceptable, including the reclassification of workout gloves in International Class 28. The examining attorney's suggested Class 25 wording left the phrase "workout clothing in the nature of {further specify International Class 25 clothing, e.g. pants, athletic tops, cycling shorts, etc.}" for applicant to complete; applicant has supplied that specification from the examples the examining attorney provided, subject to confirmation that the listed garments accurately reflect applicant's goods. Applicant will conform the final wording to the entries in the USPTO's Acceptable Identification of Goods and Services Manual as needed. See TMEP §1402.04.
This amendment clarifies the previously indefinite wording "workout clothing" by specifying the particular garments encompassed by that wording and by placing workout gloves in their proper international class. The amendment narrows and clarifies the goods; it does not add goods or otherwise expand beyond those originally itemized in the application. The amendment is therefore within the scope of the original identification. 37 C.F.R. §2.71(a); TMEP §§1402.06, 1402.07(a).
Because the amended identification results in goods in three international classes, applicant separately addresses the multiple-class application requirements — including the additional class fee, verified dates of use, and a specimen for International Class 28 — in the section of this response directed to that requirement.
Multiple-Class Application Requirements — Strategy Outline (Not Automated)
The Office Action sets out multiple-class application requirements (per-class fees, classified identification, and per-class specimens or other basis elements).
The cure is administrative: pay the additional class fees and satisfy each per-class requirement, or delete classes.
Drafting for this refusal type is not automated yet. The outline above identifies the issue and the standard strategic options; the substantive response must be prepared by the reviewing attorney.
Domicile Address Required — Additional Issue Flagged (Not Automated)
The Office Action also raises the following issue: Domicile Address Required.
Office Action passage: "the domicile address of record is for a U.S. third-party commercial mail receiving agency"
Strategy outline (suggested by the automated cross-check; verify before relying on it): - Provide the individual applicant's actual residential street address in the Domicile Address field (hidden from public view) - Contest the CASS/CMRA designation with evidence that the address of record is in fact applicant's permanent residence - If an extraordinary situation prevents disclosure, petition the Director under 37 C.F.R. §2.146 for a waiver, and still file a timely OA response noting the petition and requesting suspension
This issue was flagged by an automated LLM cross-check of the Office Action text; the deterministic issue detector did not classify it. Drafting for it is not automated. Verify the issue against the Office Action and prepare the substantive response manually.
Conclusion
For the foregoing reasons, applicant respectfully requests that the refusal(s) be withdrawn, the requirement(s) be deemed satisfied, and the application be approved for publication.
Respectfully submitted, [ATTORNEY NAME] [FIRM] [DATE] Attorney for Applicant