To: | Orthofix S.R.L. (alhtrademarks@lalaw.com) |
Subject: | U.S. Trademark Application Serial No. 90524371 - LIGHTFIXVISTA - O2013-2035 |
Sent: | August 03, 2021 08:18:24 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90524371
Mark: LIGHTFIXVISTA
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Correspondence Address:
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Applicant: Orthofix S.R.L.
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Reference/Docket No. O2013-2035
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: August 03, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE RECORDS – ADVISORY
However, applicant must respond to the following.
The following description is suggested, if accurate: The mark consists of the wording “LIGHTFIXVISTA” with the letter “S” appearing as a circle surrounded by two curved bands.
IDENTIFICATION UNACCEPTABLE - REQUIREMENT
Applicant has identified the following:
“Surgical, medical and dental apparatus and instruments; surgical instruments for use in orthopaedic surgery; orthopaedic articles; orthopaedic implants; fixation devices; parts and fittings for all the aforesaid goods” in Class 010.
Unfortunately, the italicized wording above is insufficiently definite for registration purposes. See TMEP §1402.01.
Applicant must identify the particular common commercial name of the medical and dental apparatus and instruments or must specifically state their purpose and function, e.g., medical instruments for fusing the spinal column.
The common commercial name of the orthopaedic articles and fixation devices must be specified, e.g., orthopaedic bandages, surgical devices for orthopedic implant fixation.
The material composition of the implants must be specified, e.g., orthopedic implants comprising living tissue (Class 005 goods), orthopedic implants comprising artificial materials (Class 010 goods).
The common commercial name of the fixation devices must be specified, e.g., fixation devices being surgical instruments for fixing implants to the spine.
The common commercial name of each part and fitting must be specified or applicant may specify that they are replacement parts and replacement fittings.
Applicant may adopt the following, if accurate:
“Surgical, medical and dental apparatus and instruments being, specify, e.g., surgical instruments for use in orthopaedic surgery}; surgical instruments for use in orthopaedic surgery; orthopaedic articles being {specify, e.g., orthopedic bandages}; orthopaedic implants comprised of artificial materials; fixation devices being surgical devices for implant fixation to the spine; replacement parts and replacement fittings for all the aforesaid goods” in Class 010.
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).
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Trademark Act Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
How to respond. Click to file a response to this nonfinal Office action.
/SeanCrowley/
Examining Attorney
Law Office 116
U.S. Patent and Trademark Office
571.272.8851
sean.crowley@uspto.gov
RESPONSE GUIDANCE