Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85064864 PRECICE(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85064864) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Office Action rejected the Statement of Use filed January 17, 2012 and refused registration of the mark, alleging that the specimen submitted does not show use of the mark.  A substitute specimen is submitted herewith.  Applicant respectfully submits that the present specimen shows use of the mark, such that the refusal should be withdrawn and that the mark should be approved for registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for medical devices, namely, minimally or non-invasive medical devices in the nature of adjustable orthopedic implants comprised of non-living materials for orthopedic deformity prevention and management
Original Filing Basis:
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.

In International Class 010, the mark was first used at least as early as 12/01/2011 and first used in commerce at least as early as 12/01/2011 .

Proposed: Class 010 for medical devices, namely, minimally or non-invasive medical devices in the nature of adjustable orthopedic implants comprised of non-living materials for orthopedic deformity prevention and management

Deleted Filing Basis: 1(b)
In International Class 010, the mark was first used at least as early as 12/01/2011 . and first used in commerce at least as early as 12/01/2011 .

Applicant hereby submits one(or more) specimen(s) for Class 010 . The specimen(s) submitted consists of an instruction manual featuring the mark that describes how to use the associated goods .
"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:
SPU0-7628159136-143752409_._ELPS-023_US__PRECICE__Instruction_Manual.pdf
Converted PDF file(s) ( 7 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Ellipse Technologies, Inc., a corporation of Delaware, having an address of
      13844 Alton Parkway
      Irvine, California 92618
      United States

      XXXX
Proposed: Ellipse Technologies, Inc., a corporation of Delaware, having an address of
      13900 Alton Parkway, Suite 123
      Irvine, California 92618
      United States
      XXXX

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Blair Walker/      Date: 05/02/2012
Signatory's Name: Blair Walker
Signatory's Position: Chief Technical Officer
Signatory's Phone Number: 949-837-3600


Response Signature
Signature: /Valerie Sarigumba/     Date: 05/02/2012
Signatory's Name: Valerie L. Sarigumba
Signatory's Position: Attorney

Signatory's Phone Number: 949-724-1849

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85064864
Internet Transmission Date: Wed May 02 15:21:37 EDT 2012
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2012050215213797
7114-85064864-490c865eedf3535ca3ec8f7bd6
f8c9cab1-N/A-N/A-20120502143752409644