United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 79262086
Mark: LINKSYMPHOKNEE
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Correspondence Address:
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Applicant: Waldemar Link GmbH & Co. KG
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Reference/Docket No. N/A
Correspondence Email Address: |
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International Registration No. 1474932
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
OFFICE SEARCH
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
The wording listed below from the identification of goods is indefinite and/or too broad and must be clarified for the reasons stated. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
The wording “surgical implants” is indefinite, overly broad and must be clarified because only surgical implants made of artificial materials are properly classified in Class 10; if such implants are made of biological material then they would be in Class 5. Therefore, the artificial nature of the implants should be specified in order to ensure proper classification of the goods.
The wording “endoprothetic implants made of artificial materials” contains a typographical error in the first term, which should be spelled “endoprosthetic” (emphasis added).
The following wording is acceptable in Class 10:
Surgical instruments; prostheses, in particular endoprostheses; artificial acetabulum; artificial hip joints; artificial knee joints;
Principles Governing Identifications in Madrid Protocol Applications
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).
Therefore, any modification to the above-listed wording must identify goods and/or services in the same International Class in which each item is presently classified in the application.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
Suggested Wording
Applicant may adopt the following identification of goods, if accurate (suggested changes shown in bold typeface):
Class 10:
Surgical instruments; surgical implants comprising artificial material; prostheses, in particular endoprostheses; endoprosthetic implants made of artificial materials; artificial acetabulum; artificial hip joints; artificial knee joints;
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
U.S. COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. The application record indicates that applicant’s domicile is outside of the United States in Germany, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §§2.2(o), 2.11(a). Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one. 37 C.F.R. §2.11(a). This application will not proceed to registration without such representation. See id. See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted. Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action
/Wendell S. Phillips III/
Trademark Examining Attorney
Law Office 110
(571) 272-5271
wendell.phillips@uspto.gov
RESPONSE GUIDANCE