To: | Zimmer Surgical, Inc. (tmdocket@zimmerbiomet.com) |
Subject: | U.S. Trademark Application Serial No. 90028178 - CLARO - N/A |
Sent: | October 06, 2020 11:15:22 AM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90028178
Mark: CLARO
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Correspondence Address: 1800 WEST CENTER STREET, MAIL STOP: 5211
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Applicant: Zimmer Surgical, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 06, 2020
SEARCH OF USPTO DATABASE OF MARKS
· Incorrect Classification of Goods
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s mark is CLARO for use with “overhead operating room theater lights suspended from the ceiling by booms for use during surgical procedures” in International Class 10.
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1209.03(g). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Highlights for Children, Inc., 118 USPQ2d at 1271.
Applicant’s mark is in Spanish, which is a common, modern language in the United States. Ricardo Media, Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355 (TTAB 2019) (Spanish). The ordinary American purchaser would likely stop and translate the mark because the Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States.
The attached evidence shows that the term “CLARO” translates to “bright” when used in the context of light. See attached http://www.spanishdict.com/translate/claro. The term “bright” merely describes the intensity of lighting apparatuses. See attached http://www.amazon.com/Carex-Sunlite-Bright-Light-Therapy/dp/B00F6WRMV2, http://www.gearpatrol.com/deals/a443513/poppin-limber-desk-lamp-deal/, and http://www.wellandgood.com/light-therapy-desk-lamp/. The evidence shows that the term “bright” merely describes a characteristic of the lighting goods. By extension, the Spanish equivalent “CLARO” is also merely descriptive of the lighting goods.
Because applicant’s mark is merely descriptive of the goods, registration is refused under Section 2(e)(1) of the Trademark Act.
Response to Section 2(e)(1) Refusal
Advisory – Supplemental Register Not Available Until Filing of Acceptable Amendment to Allege Use
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
INCORRECT CLASSIFICATION OF GOODS
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Jacob Vigil/
Trademark Examining Attorney
Law Office 103
571-270-3586
jacob.vigil@uspto.gov
RESPONSE GUIDANCE