UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`U.S. APPLICATION SERIAL NO.   79206556
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`MARK: I
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`CORRESPONDENT ADDRESS:
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`       SAMEJIMA Mutsumi
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`       AOYAMA & PARTNERS,
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`         Umeda Hankyu Bldg. Office Tower,
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`           Osaka 530-0017
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`    
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`    JAPAN
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`*79206556*
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`CLICK HERE TO RESPOND TO THIS LETTER:
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`http://www.uspto.gov/trademarks/teas/response_forms.jsp
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`APPLICANT: Panasonic Corporation
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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. 1342535
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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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`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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`Although no similar registered or pending mark has been found that would bar registration, Applicant must satisfy/address the following
`Requirement:
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`Requirements to be Addressed
`1.    Description of the Mark
`2.    Identification of Goods and Services
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`Description of the Mark
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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 an incomplete rectangle with an irregular curved corner on the bottom right corner where it does not fully
`connect.  Within the first rectangle is a second smaller rectangle with an irregular and inwardly curved bottom right corner.  Centered
`within the smaller rectangle appears the letter “i”.   In the top left corner of the mark are three stars with four points each.
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`Identification of Goods and Services Requirement
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`Much of the wording used in the identification of goods and/or services in International Classes 9, 11, 38 and 42 is indefinite and overly broad
`and must be clarified because it does not make clear the nature of the goods and/or services and could identify goods and/or services in more
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`than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).  
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`In Class 9:  “Computer software” and “computer software Applications” should specify the function of the software, e.g., use as a spreadsheet,
`word processing, etc. and, if software is content- or field-specific, the content or field of use.  “downloadable image files” should indicate the
`content or subject matter thereof.  “intercommunication apparatus” should provide greater specificity as to the goods.   “ intercommunication
`apparatus,” “projection apparatus,” “optical machines and apparatus,” “photographic machines and apparatus,” “cinematographic machines
`and apparatus” “measuring or testing machines and instruments,” “telecommunication machines” and apparatus,” “electronic machines,
`apparatus and their parts” and “downloadable image files” all need to further specify the goods by common commercial name.   The “electronic
`publications” should indicate the subject matter.
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`In Class 11 “lighting apparatus” should either provide greater specificity as to the goods, or indicate “lighting apparatus installations”.
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`In Class 38 “telecommunication services” should describe the services with greater specificity by common commercial name
`or indicate “ telecommunication access services”.   “Telecommunication other than broadcasting” should further specify the nature of these
`services.
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`In Class 42, with some of the services, greater detail as to the nature of the services and/or the subject matter should be provided.
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`In the identifications use of the alternative term “or” should be replaced with the more definite term “and” as indicated t below.
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`If an identification of goods and/or services contains brackets, generally, Applicants should not use brackets in identifications in their
`applications so as to avoid confusion with the USPTO’s practice of using brackets in registrations to indicate goods and/or services that have
`been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The
`only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter
`immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu
`pieces (abura-age).”   Id.
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`Therefore, Applicant must remove the brackets from the identification and incorporate any bracketed information into the description of the
`goods and/or services or insert parenthesis as is appropriate.
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`In an Application filed under Trademark Act Section 66(a), an Applicant may not change the classification of goods and/or services from that
`assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration.  37 C.F.R.
`§2.85(d); TMEP §§1401.03(d), 1904.02(b).  Therefore, although the goods and/or services may be classified in several international classes, any
`modification to this wording must identify goods and/or services in International Classes 9, 11, 38 and 42 only, the Classes specified in the
`Application for these goods and/or services.  See TMEP §1904.02(c), (c)(ii).
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`Applicant may adopt the following wording in International Classes 9, if accurate:
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`Class 9:
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`Audio-video receivers; bar code readers; blinkers signalling lights; calculating machines; camcorders; cameras photography; cell
`phones; cinematographic cameras; computer game software; computer hardware; computer operating software; computer
`peripheral devices; computer software for___ {specify the function of the software, e.g., use as a spreadsheet, word processing,
`etc. and, if software is content- or field-specific, the content or field of use}; computer software Applications   for ___{specify
`items, e.g., mobile phones, portable media players, handheld computers}, namely, software for___{specify the function of the
`programs, e.g., use in database management, use in electronic storage of data, etc.}; computers; cordless telephones; data
`processing apparatus; digital photo frames; digital signs; downloadable image files containing____{indicate content or subject
`matter}; downloadable music files; electronic agendas; electronic book readers; electronic notice boards; electronic pocket
`translators; facsimile machines; intercommunication apparatus, namely,___{further describe and detail what is intended by
`these goods}; laptop computers; light regulators dimmers, electric; light-emitting diodes LED; lighting ballasts; loudspeakers;
`microphones; mobile telephones; modems; monitors being computer hardware; navigation apparatus for vehicles on-
`board computers; electronic navigational and positioning instruments and apparatus; notebook computers; portable
`media players; projection apparatus for ___{indicate the goods with greater specificity, e.g. transparencies, slides, photographs,
`etc.}; projection screens; radiotelegraphy sets; radiotelephony sets; road signs, luminous or mechanical; screens photography;
`signalling panels, luminous or mechanical; signals, luminous or mechanical; signs, luminous; smartglasses in the nature of
`wearable computers; smartphones; tablet computers; television sets; LCDs liquid crystal displays; digital signage display panels;
`digital signage monitors; computer software to enable the transmission of photographs to mobile telephones; computer software
`and telecommunications apparatus, including modems, to enable connection to databases, computer networks and the Internet;
`digital cameras; digital projectors; lighting control apparatus; video surveillance cameras; point-of-sale POS terminals; computer
`software for controlling self-service terminals; optical sensors; wireless POS (point of service) devices; electronic equipment for
`point-of-sales (POS) systems, namely, point-of-sale terminals, bar code readers, optical readers, advertisement display monitors,
`keyboards, printers, scanners, radio transmitters, radio receivers, computer hardware, and computer operating software;
`interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software;
`customer self-service electronic checkout stations for point of sale; electronic cash registers; computer software for use in the
`field of VLC (visible light communications) for the transmission of electronic data, namely, video, music, image, text and sound;
`railway signal apparatus, luminous or mechanical; vehicle breakdown warning triangles; luminous or mechanical road signs;
`cash registers; coin counting or sorting machines; electric sign boards for displaying target figures, current outputs or the like;
`photographic machines and apparatus, namely,____{further describe the goods by common commercial name};
`cinematographic machines and apparatus, namely,____{further describe the goods by common commercial name}; optical
`machines and apparatus, namely,____{further describe the goods by common commercial name}; measuring or testing
`machines and instruments, namely,____{further describe the goods by common commercial name}; telecommunication
`machines and apparatus, namely,____{further describe the goods by common commercial name}; electronic machines,
`apparatus and their parts, namely,____{further describe the goods by common commercial name}; computer programs;
`phonograph records; downloadable music files; downloadable image files containing___{indicate the subject matter}; recorded
`video discs and video tapes; power distribution or control machines and apparatus; rotary converters; phase modifiers; electronic
`publications
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`Class 11:
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`Automobile lights; bicycle lights; ceiling lights; Chinese lanterns; electric lanterns; electric lamps; light bulbs; LED light bulbs;
`flares; lighting fixtures; flashlights torches; headlights for automobiles; lamps; lamps for directional signals of automobiles; light-
`emitting diodes LED lighting apparatus being lighting installations; lighting apparatus installations; lighting apparatus for
`vehicles; lighting installations for air vehicles; street lamps; light-emitting diode LED luminaires; lighting apparatus for
`showcases; lighting apparatus for refrigerating or freezing showcases; flat panel lighting apparatus; lighting installations for air
`vehicles; electric lamps and other lighting apparatus installations.
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`Class 38:
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`Communications by computer terminals; communications by cellular phones; computer aided transmission of messages and
`images; electronic bulletin board services being telecommunications services; information about telecommunication; message
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`sending; providing telecommunications connections to a global computer network; providing user access to global computer
`networks; radio communications; rental of modems; rental of telecommunication equipment; transmission of digital files; data
`transmission and telecommunication access services; electronic and digital transmission of voice, data, images, signals and
`messages; electronic transmission and streaming of digital media content for others via global and local computer networks;
`electronic transmission of audio, video and other data and documents among computers; electronic transmission of encrypted
`data; electronic transmission of sound, images and other data and information of all kinds via the Internet; consultancy,
`information and advisory services in the field of telecommunications; telecommunication access services using visible light
`communication (VLC) technologies; consultancy relating to telecommunication services using visible light communication
`(VLC) technologies; technical consultation in the field of data communications and telecommunications; telecommunication,
`namely,___{further specify the telecommunications services being offered by common commercial name} other than
`broadcasting; broadcasting of___{indicate what is being broadcast, e.g. radio, television, etc.}; rental of telecommunication
`equipment including telephones and facsimile apparatus.
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`Class 42:
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`Cloud computer services, namely, cloud hosting provider services; computer programming; computer software creation
`consultancy; computer software design; creating and maintaining web sites for others; hosting computer web sites on the
`internet; maintenance of computer software; monitoring of computer systems by remote access to ensure proper functioning;
`rental of computer software; rental of web servers; consultancy in connection with hardware and software for connection to,
`management of, operating and using computer networks; technical consultancy relating to the design of computer hardware,
`software and computer peripherals; computer technology consultancy; software as a service (SaaS) services featuring software
`for____{specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word
`processing, etc. and, if software is content - or field-specific, the field of use}; hosting ____{further describe and detail what is
`intended by “platforms”} platforms on the Internet; platform as a service (PAAS) featuring computer software platforms for
`industrial or commercial purposes in the field of VLC (visible light communications) for the transmission of electronic data
`namely video, music, images, text and sound; technical support services relating to computer software, telecommunications and
`the Internet, namely,____{further detail the nature of the “technical support” e.g. monitoring technological functions of
`computer network systems}; computer software design, computer programming, and maintenance of computer software;
`designing of machines, apparatus, instruments including the parts to instruments and systems composed of such machines,
`apparatus and instruments; design and development of computer hardware; research on building construction or city planning;
`testing or research on prevention of pollution; testing or research on electricity; testing or research on civil engineering; testing or
`research on machines, apparatus and instruments; rental of computers; providing online data networks featuring computer
`programs.
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`In a Trademark Act Section 66(a) Application, classification of goods and/or services may not be changed from that assigned by the
`International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally,
`classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) Application.  37 C.F.R.
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`§2.85(d); TMEP §1401.03(d).  
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`For assistance with identifying and classifying goods and/or services in trademark Applications, please see the online searchable Manual of
`Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.
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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 U.S.
`commonwealths or U.S. territories.  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
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`§§602.03-.03(b), 608.01.  
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`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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`/Thomas M. Manor/
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`Trademark Examining Attorney
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`Law Office 110
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`Phone: (571) 270-1519
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`Fax. No. (571) 273-1519
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`Thomas.Manor@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
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`the response.  
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`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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