Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88447671 PERFORM(Standard Characters, see http://uspto.report/TM/88447671/mark.png) has been amended as follows:

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

The Examining Attorney refused registration asserting that the specimen of use does not show the mark in the drawing. The Examining Attorney states that the mark in the drawing shows the mark as "AEQUALIS PERFORM REVERSED. Applicant submits that the specimen as submitted is acceptable. AEQUALIS is a separate mark, registered by applicant under Reg. No. 2055775. A copy of the TESS record for this registration is attached. The PERFORM product is one of a number of different products in the AEQUALIS line of prostheses. A product, and therefore a specimen of use, may display more than one mark. In addition to the PERFORM product, applicant offers a number of products in the AEQUALIS line, including "FLEX REVIVE," "REV II," "REVERSED FX," and others. The PERFORM mark identifies one product in the AEQUALIS line of products, and the specimen indicates as much by identifying AEQUALIS(TM) as a separate mark. As to the term "REVERSED," this term is not part of the mark, but part of the phrase "REVERSED Glenoid," which identifies the type of prosthesis. Applicant has attached an article form the American Academy of Orthopedic Surgeons OthoInfo website describing the reversed glenoid procedure. As the article indicates, the "glenoid" is the shoulder socket. More particularly, the glenoid is the socket portion of the ball-and-socket shoulder joint. In the typical shoulder replacement surgery, a plastic "cup" replaces the glenoid socket, and a metal ball is attached to the top of the upper arm bone (humerus), which is the normal shoulder anatomy. In a reversed glenoid procedure, the ball component of the joint is attached to the glenoid socket, and the cup is affixed to the upper end of the humerus - the ball and socket are reversed. The phrase "reversed glenoid" is not part of the mark but identifies the type of prosthesis ? a reversed glenoid prosthesis. The phrase can also identify the type of surgical procedure. For the foregoing reasons, applicant respectfully submits that the specimen of use is appropriate to show use of the PERFORM mark, and requests that the Examining Attorney withdraw the objection to the specimen.

EVIDENCE
Evidence in the nature of TESS record for applicant's registration for AEQUALIS and article explaining the "reverse glenoid" procedure has been attached.
Original PDF file:
evi_21620015371-20200224175351230733_._PERFORM_Evidence.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 010 for Medical and surgical apparatus and instruments for use in orthopedic surgery; orthopedic joint implants made of artificial materials; shoulder prostheses and related instrumentation; orthopedic fixation devices
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/00/2012 and first used in commerce at least as early as 12/00/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Medical and surgical apparatus and instruments for use in orthopedic surgery; orthopedic joint implants made of artificial materials; shoulder prostheses and related instrumentation; orthopedic fixation devices; orthopedic fixation devices used in orthopedic transplant and/or implant surgeryClass 010 for Medical and surgical apparatus and instruments for use in orthopedic surgery; orthopedic joint implants made of artificial materials; shoulder prostheses and related instrumentation; orthopedic fixation devices used in orthopedic transplant and/or implant surgery
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/00/2012 and first used in commerce at least as early as 12/00/2012 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Tornier, Inc., a corporation of Delaware, having an address of
      10801 Nesbitt Avenue South
      Bloomington, Minnesota 55437
      United States

Proposed: Tornier, Inc., a corporation of Delaware, having an address of
      10801 Nesbitt Avenue South
      Bloomington, Minnesota 55437
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Barbara J Grahn. Barbara J Grahn of FOX ROTHSCHILD LLP, is located at

      SUITE 2000
      222 SOUTH NINTH ST
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 204000.02270.
      The phone number is 612-607-7325.
      The fax number is 612-607-7100.
      The email address is bgrahn@foxrothschild.com

The owner's/holder's proposed attorney information: Barbara J Grahn. Barbara J Grahn of FOX ROTHSCHILD LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 2000
      222 SOUTH NINTH ST
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 204000.02270.
      The phone number is 612-607-7325.
      The fax number is 612-607-7100.
      The email address is bgrahn@foxrothschild.com

Barbara J Grahn submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      BARBARA J GRAHN
      PRIMARY EMAIL FOR CORRESPONDENCE: bgrahn@foxrothschild.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ipdocket@foxrothschild.com; drodrigue@foxrothschild.comm

The docket/reference number is 204000.02270.
Correspondence Information (proposed):
      Barbara J Grahn
      PRIMARY EMAIL FOR CORRESPONDENCE: bgrahn@foxrothschild.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ipdocket@foxrothschild.com; drodrigue@foxrothschild.comm

The docket/reference number is 204000.02270.

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: /bjg/     Date: 02/24/2020
Signatory's Name: Barbara J Grahn
Signatory's Position: a

Signatory's Phone Number: 6126077325

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:    BARBARA J GRAHN
   FOX ROTHSCHILD LLP
   SUITE 2000
   222 SOUTH NINTH ST
   MINNEAPOLIS, Minnesota 55402
Mailing Address:    Barbara J Grahn
   FOX ROTHSCHILD LLP
   SUITE 2000
   222 SOUTH NINTH ST
   MINNEAPOLIS, Minnesota 55402
        
Serial Number: 88447671
Internet Transmission Date: Mon Feb 24 17:57:55 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202002241757551
50481-88447671-710f6b89216373d66ce2d0e1d
9b5e0ebfd1a47e29a9d1a655e3e0755bccc6a7-N
/A-N/A-20200224175351230733