To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Panasonic Corporation (trademark@hsml.com)
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`U.S. TRADEMARK APPLICATION NO. 79187613 - PANASONIC AUTOMOTIVE - 8279.1857USI
`
`6/14/2017 10:09:00 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
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`   
`
`trademark@hsml.com
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`OFFICE ACTION
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`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: 6/14/2017
`
`THIS IS A FINAL ACTION.
`
`INTERNATIONAL REGISTRATION NO. 1299381
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`Introduction
`
`This Office action is in response to applicant’s communication filed on 5/22/17.
`
`The amended Class 9 identification of goods includes unacceptable items and the requirement to amend is made FINAL as follows:
`
`Identification of Goods
`
`Class 9
`
`THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
`
`The wording “finishers for multi-function document and photo printers for use with computers” in the identification of goods is indefinite and
`must be clarified because the term “finishers” could indicate a finishing chemical preparation in another class of goods.  See 37 C.F.R.
`§2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “electronic printing finisher apparatus for multi-
`function document and photo printers for use with computers.”
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`The wording “magnetic bead cores for EMI filtering in the nature of electronic components; magnetic bead arrays for EMI filtering in the nature
`of electronic components” in the identification of goods is indefinite and must be clarified because the wording “in the nature of electronic
`components” does not provide a field of use for the “filtering” and implies that the goods are not bead cores and arrays, but rather some type of
`un-stated electronic component, which is indefinite and overbroad.  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 (or specify other field in which the EMI
`filtering takes place e.g. radio transmitters, wireless routers, computer networks); magnetic bead arrays for EMI filtering in electronic
`components (or specify other field in which the EMI filtering takes place e.g. radio transmitters, wireless routers, computer networks).”
`
`The wording “electric laser marking gauges for measuring purposes” in the identification of goods is indefinite and must be clarified because
`the field of measuring or item measured must be stated, for instance gauges for measuring rainfall.  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 (specify item to be measured or field
`of use e.g. computer chips, integrated circuits).”
`
`The wording “oscillators in the nature of electronic components for CO2 laser soldering, jointing, and processing of materials” in the
`identification of goods is indefinite and must be clarified because the new wording broadens the scope of the original - the wording CO2 laser
`oscillators has been broadened to just oscillators.  This would encompass oscillators other than or in addition to the original CO2 laser oscillators
`and so it is beyond the scope of the original.  Further, the terms “in the nature of electronic components” suggests that the goods are not
`oscillators, but rather some type of un-stated electronic device, perhaps used as a component of some other product, also un-stated.  Finally, the
`wording retains the previously unacceptable references to soldering and jointing, which, in the case of soldering, places the goods squarely in
`Class 7 and in the case of jointing could likewise place the goods in Class 7, which is unacceptable in this section 66 Madrid application.  As
`stated in the previous Office action, the terms “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.”
`
`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
`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
`
`Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final refusal(s)
`and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  finishers for multi-function document and photo
`printers for use with computers; magnetic bead cores for EMI filtering in the nature of electronic components; magnetic bead arrays for EMI
`filtering in the nature of electronic components; electric laser marking gauges for measuring purposes; oscillators in the nature of electronic
`components for CO2 laser soldering, jointing, and processing of materials in Class 9.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
`
`The application will then proceed for the following goods:  the remainder of Class 9 (complete listing omitted here for brevity) and Class 12.  
`
`Applicant may respond by providing one or both of the following:
`
`(1)      
`
`(2)      
`
`a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements
`and/or resolves all outstanding refusals; and/or
`
`an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA)
`with the required filing fee of $200 per class.
`
`37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
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`In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review
`procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee
`required for filing a petition.  37 C.F.R. §2.6(a)(15).
`
`       
`
`/Howard B. Levine/
`Howard B. Levine
`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
`
`6/14/2017 10:09:01 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 6/14/2017 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 6/14/2017, 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.
`
`  
`