`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`U.S. APPLICATION SERIAL NO. 79150363
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`MARK: V
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`CORRESPONDENT ADDRESS:
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` SAMEJIMA Mutsumi,; Aoyama & Partners
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` Umeda Hankyu Bldg,
` Office Tower, 8-1,
` Osaka 530-0017
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` JAPAN
`APPLICANT: PANASONIC CORPORATION
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`*79150363*
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`CLICK HERE TO RESPOND TO THIS LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
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`CORRESPONDENT’S REFERENCE/DOCKET NO :
`CORRESPONDENT E-MAIL ADDRESS:
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` N/A
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`INTERNATIONAL REGISTRATION NO. 1212051
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`OFFICE ACTION
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`STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR
`EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE
`TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION
`WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
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`In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the
`USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. To do so, enter the U.S. application serial
`number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full
`refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
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`This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application.
`See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
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`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.
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`SUMMARY OF ISSUES that applicant must address:
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`Identification of Goods
`Mark Description Required
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`SEARCH RESULTS
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`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).
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`IDENTIFICATION OF GOODS
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`The wording “computer and computer peripheral devices” in the identification of goods is indefinite and must be clarified because it is not clear
`based on the structure of the identification whether the first reference to “computer” refers to other goods, e.g. “computers.” See TMEP
`§1402.01. Based on the format of the identification, the applicant separated different goods by semi-colon. Applicant must amend the
`identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the
`product and its intended uses. See id.
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`Applicant may adopt the following identification of goods, if accurate:
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`Cameras; digital cameras; camcorders; video cameras; apparatus for recording, transmission or reproduction of sound or images; blank flash
`memory cards; electronic memory card readers; electronic memory card writers; computer software for video editing and video content
`management; computer application software for video editing and video content management; computers; computer peripheral devices
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`See TMEP §1402.01.
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`An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods
`and/or services. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the
`identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World
`Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).
`If an applicant amends an
`identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope
`and those goods and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
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`In addition, in a Section 66(a) application, 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), 1402.01(c). 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
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`C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
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`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 at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.
`DESCRIPTION OF MARK REQUIRED
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`Applicant must submit an accurate and concise description of the literal and design elements in the mark. 37 C.F.R. §2.37; see TMEP §§808.01,
`808.02. The following is suggested, if accurate:
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`The mark consists of a stylized letter “V”.
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`RESPONSE GUIDELINES
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`For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.
`If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should
`register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to
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`requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
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`If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International
`Bureau, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the
`application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§711, 718.01, 718.02. Where the
`application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the
`application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for
`such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
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`WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be
`personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate
`officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or
`her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys
`include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal
`territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all
`responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See
`37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the
`signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
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`In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an
`amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-
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`.03(b), 608.01.
`DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to
`designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37
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`C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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`/Cynthia Rinaldi/
`Trademark Examining Attorney
`Law Office 107
`571-272-4685
`cynthia.rinaldi@uspto.gov
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`TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.
`For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned
`trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
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`All informal e-mail communications relevant to this application will be placed in the official application record.
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`WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the
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`response.
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
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`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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