To:
`
`Subject:
`
`Sent:
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`Sent As:
`
`Attachments:
`
`Panasonic Corporation (trademark@hsml.com)
`
`U.S. TRADEMARK APPLICATION NO. 79187613 - PANASONIC AUTOMOTIVE - 8279.1857USI
`
`1/13/2017 9:28:48 AM
`
`ECOM115@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION SERIAL NO.   79187613
`
`           
`
`MARK: PANASONIC AUTOMOTIVE
`
`CORRESPONDENT ADDRESS:
`  
`       Sarah G. Voeller
`  
`       Hamre Schumann Mueller & Larson, P.C.
`         45 South Seventh Street, Suite 2700
`           Minneapolis MN 55402
`    
`   
`APPLICANT: Panasonic Corporation
`
`*79187613*
`
`CLICK HERE TO RESPOND TO THIS LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`    
`CORRESPONDENT’S REFERENCE/DOCKET NO :       
`CORRESPONDENT E-MAIL ADDRESS:       
`
`  8279.1857USI
`
`   
`
`trademark@hsml.com
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.   A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 1/13/2017
`
`INTERNATIONAL REGISTRATION NO. 1299381
`
`Introduction
`
`This Office action is in response to applicant’s communication filed on 12/16/16/ and 12/21/16.
`
`The disclaimer is accepted.  The Class 12 amended identification of goods is accepted.  The Class 9 identification of goods is unacceptable as
`follows, with additional new requirements:
`
`Identification of Goods
`
`THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
`
`Class 9
`
`The Trademark Act requires that a trademark or service mark application must include a “ specification of …the goods [or services]” in
`connection with which the mark is being used or will be used.   15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C.
`§1053.   Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant
`uses or intends to use the mark.”   37 C.F.R. §2.32(a)(6) (emphasis added).   This requirement for a specification of the particular goods and/or
`services applies to applications filed under all statutory bases.   See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R.
`§2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).
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`The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re
`Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d
`1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific,
`definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal.
`
`Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).   
`
`“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the
`relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the
`goods [and/or services].”   In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289,
`93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the
`goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112
`USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954);
`TMEP §1402.01.
`
`An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP
`§1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at
`322.
`
`Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus.
`Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
`
`The wording “multi-function printers for use with computers, namely, those which can be used as a printer, a scanner and a facsimile machine in
`one unit having network connectability; multi-function printers for use with computers; finishers for multi-function printers for use with
`computers; paper feeding stands for multi-function printers for use with computers; paper transporting units for multi-function printers for use
`with computers; hard disk drive units for multi-function printers for use with computers; memory boards for multi-function printers for use with
`computers; printed page counting software for multi-function printers for use with computers; PC/mobile digitized document distribution
`software for multi-function printers for use with computers; waste toner boxes for multi-function printers for use with computers; computer
`hardware and software for verifying stamps for multi-function printers for use with computers; control panels for multi-function printers for use
`with computers; G3 communication units namely communication interface units for multi-function printers for use with computers; Internet
`facsimile units for multi-function printers for use with computers; paper cassette units for multi-function printers for use with computers; catch
`trays for multi-function printers for use with computers; voice mail apparatus for multi-function printers for use with computers; radio frequency
`identification reader/writer for multifunction printers for use with computers; LAN boards for multi-function printers for use with computers;
`empty extension cassette for multi-function printers for use with computers; handset units for multi-function printers for use with computers” is
`indefinite and must be clarified because the term “multi-function printer” does not provide a definite function of the printers.   The function of a
`printer determines its proper classification; a document, video, thermal or photo printer must be classified in Class 9; 3-D printers are classified
`in Class 7.  The distinction must be made here for each instance for proper classification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 
`Applicant may substitute the following wording, if accurate:  “multi-function (specify e.g. document, photo, thermal or video) printers (for each
`instance).”
`
`The wording “downloadable electronic publications in the nature of magazines and books featuring videos, music, and maps” in the
`identification of goods is indefinite and must be clarified because it does not specify the subject matter of the “videos.”   See 37 C.F.R.
`§2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “downloadable electronic publications in the nature
`of magazines and books featuring (specify e.g. educational, entertainment) videos, music, and maps.”
`
`The wording “digital broadcasting systems which consists of video cameras for digital broadcast, switchers, outside broadcast vans” in the
`identification of goods is indefinite and must be clarified because the wording “outside broadcast vans” implies that some type of truck is being
`specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “digital broadcasting
`systems which consist of video cameras for digital broadcast and switchers for use in outside broadcast vans”
`
`The wording “computer printers” in the identification of goods is indefinite and must be clarified because, as stated above, computer printers
`may be classified in Class 9 (document, photo, thermal, video) or Class 7 (3-D printers).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant
`may substitute the following wording, if accurate:  “computer (specify e.g. document, photo, thermal, video) printers.”
`
`The wording “computer network” in the identification of goods is indefinite and must be clarified because it appears to be a typographical error.  
`See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “computer network servers.”
`
`The wording “Counters, namely, LED counters for industrial use” in the identification of goods is indefinite and must be clarified because the
`type of LED counter must be specified, or what is being counted by the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may
`substitute the following wording, if accurate:  “Counters, namely, LED (specify e.g. thread, pill) counters for industrial use.”
`
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`The wording “thermal cutoffs” in the identification of goods is indefinite and must be clarified because it is unclear.   See 37 C.F.R. §2.32(a)(6);
`TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “photovoltaic thermal cutoff modules.”
`
`The wording “bead cores for EMI filtering in the nature of electronic components; bead arrays for EMI filtering in the nature of electronic
`components” in the identification of goods is indefinite and must be clarified because the type of bead cores and arrays must be specified to
`classify in Class 9; the wording “in the nature of electronic components” is unclear.   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant
`may substitute the following wording, if accurate: magnetic bead cores for EMI filtering in electronic components; magnetic bead arrays for EMI
`filtering in electronic components.”
`
`The wording “electric laser marking gauges” in the identification of goods is indefinite and must be clarified because it is not clear that the
`goods are not for medical use, which would require, classification in Class 10.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may
`substitute the following wording, if accurate:  “electric laser marking gauges for measuring purposes.”
`
`The wording “apparatus for measuring moisture content of the skin for scientific, laboratory, or personal use” in the identification of goods is
`indefinite and must be clarified because the terms “personal use” could place the goods in Class 10 as a medical or therapeutic device, like a
`vital sign monitor.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “apparatus for
`measuring moisture content of the skin for scientific and laboratory use.”
`
`The wording “3-D profilometer” in the identification of goods is indefinite and must be clarified because it does not specify the field of use.   See
`37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “3-D profilometer for use in (specify field
`of use e.g. the electronics manufacturing industry).”
`
`The wording “CO2 laser oscillators for soldering, jointing and processing” in the identification of goods is indefinite and must be clarified
`because lasers for industrial use are classified in Class 7.  For instance, laser welding machines and laser engraving machines are classified in
`Class 7.  Moreover, soldering apparatus are classified in Class 7.  The term “jointing and processing” are indefinite and the items “jointed and
`processed” must be stated – these may or may not be sufficient to classify part of the ID in Class 9.   In any event, any laser for soldering
`purposes must be classified in Class 7 and so should be deleted from this Sec. 66 application.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 
`Applicant may substitute the following wording, if accurate:  “CO2 laser oscillators for (specify e.g. creating joints in computer assemblies and
`for processing integrated circuits).”
`
`With respect to the above two items and the applicant’s arguments that they have been accepted in a previous registration, please note that
`trademark examining attorneys are not bound by the actions of past examining attorneys in prior registrations, even if the registrations have
`some characteristics similar to the application at issue; each case is decided on its own merits.  In re Manwin/RK Collateral Trust, 111 USPQ2d
`1311, 1315 (TTAB 2014) (citing In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).
`
`The wording “hardware and software for processing images” in the identification of goods is indefinite and must be clarified because it must
`state that the goods are computer hardware.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if
`accurate:  “computer hardware and software for processing images.”
`
`The wording “testers for use in inspection of appearances of products” in the identification of goods is indefinite and must be clarified because
`it does not provide the nature of the “tester.”   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if
`accurate:  “{Indicate type of testers, e.g., voltage, amperage, optical, telephone lines, continuity} testers for use in the inspection of the
`appearance of products before shipping.”
`
`The wording “phase modifiers” in the identification of goods is indefinite and must be clarified because it does not provide a field of use and a
`phase modifier for a musical instrument would be classified in Class 15.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute
`the following wording, if accurate:  “phase modifiers for telecommunications use.”
`
`The duplicative “encoders” must be deleted.
`
`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 narrowed.   See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).   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 narrowed.   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).  
`Additionally, for applications 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); and
`the classification of goods and/or services may not be changed from that assigned by the International Bureau.   37 C.F.R. §2.85(d); TMEP
`§§1401.03(d), 1904.02(b).   Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred
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`from one existing class to another.   37 C.F.R. §2.85(d); TMEP §1401.03(d).
`
`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.
`
`Response
`
`If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International
`
`Class(es) 9 will be deleted from the application:  
`
`multi-function printers for use with computers, namely, those which can be used as a printer, a scanner and a facsimile machine in one unit
`having network connectability; multi-function printers for use with computers; finishers for multi-function printers for use with computers; paper
`feeding stands for multi-function printers for use with computers; paper transporting units for multi-function printers for use with computers;
`hard disk drive units for multi-function printers for use with computers; memory boards for multi-function printers for use with computers;
`printed page counting software for multi-function printers for use with computers; PC/mobile digitized document distribution software for multi-
`function printers for use with computers; waste toner boxes for multi-function printers for use with computers; computer hardware and software
`for verifying stamps for multi-function printers for use with computers; control panels for multi-function printers for use with computers; G3
`communication units namely communication interface units for multi-function printers for use with computers; Internet facsimile units for multi-
`function printers for use with computers; paper cassette units for multi-function printers for use with computers; catch trays for multi-function
`printers for use with computers; voice mail apparatus for multi-function printers for use with computers; radio frequency identification
`reader/writer for multifunction printers for use with computers; LAN boards for multi-function printers for use with computers; empty extension
`cassette for multi-function printers for use with computers; handset units for multi-function printers for use with computers;
`
`downloadable electronic publications in the nature of magazines and books featuring videos, music, and maps;
`
`digital broadcasting systems which consists of video cameras for digital broadcast, switchers, outside broadcast vans;
`
`computer printers;
`
`computer network;
`
`Counters, namely, LED counters for industrial use;
`
`thermal cutoffs;
`
`bead cores for EMI filtering in the nature of electronic components; bead arrays for EMI filtering in the nature of electronic components;
`
`electric laser marking gauges;
`
`apparatus for measuring moisture content of the skin for scientific, laboratory, or personal use;  
`
`3-D profilometer;
`
`CO2 laser oscillators for soldering, jointing and processing;
`
`hardware and software for processing images;
`
`testers for use in inspection of appearances of products;
`
`phase modifiers;
`
`encoders (duplicative).
`
`The application will then proceed with the following goods and/or services in International Class(es) 9 and 12 only: 
`and all of Class 12.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
`
`the remainder of Class 9
`
`    
`
`/Howard B. Levine/
`Howard B. Levine
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`Examining Attorney
`Law Office 115
`(571) 272-9188
`howard.levine@uspto.gov
`
`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.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`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
`
`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/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
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`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation (trademark@hsml.com)
`
`U.S. TRADEMARK APPLICATION NO. 79187613 - PANASONIC AUTOMOTIVE - 8279.1857USI
`
`1/13/2017 9:28:49 AM
`
`ECOM115@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 1/13/2017 FOR U.S. APPLICATION SERIAL NO. 79187613
`
`Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an
`official letter to which you must respond.  Please follow these steps:
`
`(1)  READ THE LETTER by clicking on this link or going to http://tsdr.uspto.gov/, entering your U.S. application serial number, and clicking
`on “Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`
`hours of this e-mail notification.  
`(2)  RESPOND WITHIN 6 MONTHS (or sooner if specified in the Office action), calculated from 1/13/2017, using the Trademark Electronic
`Application System (TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.  A response transmitted through
`TEAS must be received before midnight Eastern Time of the last day of the response period.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions.  
`(3)  QUESTIONS about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your
`application, identified below.  
`
`/Howard B. Levine/
`Howard B. Levine
`Examining Attorney
`Law Office 115
`(571) 272-9188
`howard.levine@uspto.gov
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.  
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`
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`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
`
`  
`