Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`COLOR(S) CLAIMED
`(If applicable)
`
`OWNER SECTION (current)
`
`NAME
`
`INTERNAL ADDRESS
`
`STREET
`
`COUNTRY
`
`OWNER SECTION (proposed)
`
`NAME
`
`STREET
`
`CITY
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`The table below presents the data as entered.
`
`Entered
`
`79233156
`
`LAW OFFICE 114
`
`https://tmng-al.uspto.gov/resting2/api/img/79233156/large
`
`CHANGING PHOTOGRAPHY LUMIX G
`
`NO
`
`NO
`
`Color is not claimed as a feature of the mark.
`
`PANASONIC CORPORATION
`
`1006, Oaza Kadoma Kadoma-shi
`
`571-8501 Osaka
`
`Japan
`
`PANASONIC CORPORATION
`
`1006, Oaza Kadoma Kadoma-shi
`
`Osaka
`
`571-8501
`
`Japan
`
`LEGAL ENTITY SECTION (current)
`
`TYPE
`
`APPLICANT ENTERED NO DATA
`
`LEGAL ENTITY SECTION (proposed)
`
`TYPE
`
`STATE/COUNTRY OF INCORPORATION
`
`ARGUMENT(S)
`
`Dear Commissioner:
`
`corporation
`
`Japan
`
`RESPONSE
`
`            
`
`This paper is filed in response to the Office Action dated June 20, 2018.   Applicant respectfully requests a reconsideration
`and advancement of the application to publication.
`
` 
` 
`

`

`REMARKS
`The Office Action refused registration by stating that the applied-for mark so resembles U.S. Registration No. 2675599
`
`           
`
`(the ‘599 Registration) as to be likely to cause confusion, to cause mistake, or to deceive. This issue is addressed below.  
`
`The Refusal Under Section 2(d) Should Be Withdrawn
`
`                        
`
`Applicant states for the record that the owner of the ‘599 Registration, Panasonic Corporation of North America,
`is a wholly-owned subsidiary of Panasonic Corporation.  Applicant further states for the record that Panasonic Corporation
`asserts control over the activities and operations of Panasonic Corporation of North America, including the selection, adoption,
`and use of the trademarks.  A Declaration under 37 CFR § 2.20 of Shigeo Yamamoto, the Authorized Signing Officer at
`
`Intellectual Property Center of Panasonic Corporation, is enclosed herewith.                               
`
`Pursuant to TMEP 1201.07(b)(ii), Applicant submits that the ‘599 application in the name of Panasonic
`Corporation of North America does not preclude registration of Applicant's mark.  Applicant requests that the refusal on this basis
`be withdrawn.
`
`CONCLUSION
`Applicant respectfully requests reconsideration and subsequent withdrawal of the refusal based on the ‘599 Registration.  
`           
`Applicant further requests advancement of its application to publication.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (2 pages)
`
`evi_6413216945-20181205115949764850_._US_Declaration.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\792\331\79233156\xml9\ROA0002.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\792\331\79233156\xml9\ROA0003.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Declaration of Shigeo Yamamoto
`
`GOODS AND/OR SERVICES SECTION (009)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`009
`
`Photographic apparatus; photographic printing apparatus; photographic equipment; photographic instruments; stands for photographic
`apparatus; cameras; digital cameras; digital still cameras; compact digital cameras
`
`GOODS AND/OR SERVICES SECTION (009)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`009
`
`Photographic apparatus; Photographic apparatus, namely, slide transparencies, projectors, and photographic cameras; photographic printing
`apparatus; photographic printing apparatus, namely, photo printers; photographic equipment; photographic equipment, namely, photocopiers,
`photographic filters, and photographic viewfinders; photographic instruments; photographic instruments, namely, cameras and structural and
`replacement parts thereof, camera lenses, photographic viewfinders, photographic filters; stands for photographic apparatus; cameras; digital
`cameras; digital still cameras; compact digital cameras
`
`FINAL DESCRIPTION
`
`Photographic apparatus, namely, slide transparencies, projectors, and photographic cameras; photographic printing apparatus, namely, photo
`printers; photographic equipment, namely, photocopiers, photographic filters, and photographic viewfinders; photographic instruments,
`namely, cameras and structural and replacement parts thereof, camera lenses, photographic viewfinders, photographic filters; stands for
`photographic apparatus; cameras; digital cameras; digital still cameras; compact digital cameras
`
`GOODS AND/OR SERVICES SECTION (016)(no change)
`
`GOODS AND/OR SERVICES SECTION (040)(current)
`
` 
` 
`       
`

`

`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`040
`
`Photographic film development; printing; photographic printing; lithographic printing; framing of works of art; processing of photographic and
`cinematographic films; photographic image processing; rental of photographic printing apparatus; providing information relating to
`photographic printing services
`
`GOODS AND/OR SERVICES SECTION (040)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`040
`
`Photographic film development; printing; photographic printing; lithographic printing; framing of works of art; processing of photographic
`and cinematographic films; photographic image processing; photographic image processing, namely, composition, correction, modification,
`alteration, retouching and printing of photographic images; rental of photographic printing apparatus; providing information relating to
`photographic printing services
`
`FINAL DESCRIPTION
`
`Photographic film development; printing; photographic printing; lithographic printing; framing of works of art; processing of photographic and
`cinematographic films; photographic image processing, namely, composition, correction, modification, alteration, retouching and printing of
`photographic images; rental of photographic printing apparatus; providing information relating to photographic printing services
`
`GOODS AND/OR SERVICES SECTION (041)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`041
`
`Entertainment; cultural activities; videotaping; rental of video tapes; videotape production; video production; video editing; videotape editing;
`arranging of contests; arranging of cultural events; arranging of educational events; conducting of entertainment events; production of
`cinematographic films; rental of video cameras; rental of cameras; organisation of exhibitions for cultural and educational purposes;
`photography; photography services; photography instruction; photographic reporting; demonstration of photographic equipment [for training
`purposes]; training in the use of photographic equipment; education services relating to photographic printing; education services relating to
`photographic developing
`
`GOODS AND/OR SERVICES SECTION (041)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`041
`
`Entertainment; Entertainment services in the nature of arranging, operating and conducting of events, competitions, contests and parties in the
`field of photography; cultural activities; cultural activities in the nature of organizing cultural events; videotaping; rental of video tapes;
`videotape production; video production; video editing; videotape editing; arranging of contests; arranging of cultural events; arranging of
`educational events; arranging of educational exhibitions in the field of photography; conducting of entertainment events; conducting of social
`entertainment events; production of cinematographic films; rental of video cameras; rental of cameras; organisation of exhibitions for cultural
`and educational purposes; photography; photography services; photography instruction; photographic reporting; demonstration of
`photographic equipment [for training purposes]; education services, namely, demonstration of photographic equipment for training purposes;
`training in the use of photographic equipment; education services relating to photographic printing; education services in the nature of
`conducting courses relating to photographic printing; education services relating to photographic developing; education services in the nature
`of conducting courses relating to photographic developing
`
`FINAL DESCRIPTION
`
`Entertainment services in the nature of arranging, operating and conducting of events, competitions, contests and parties in the field of
`photography; cultural activities in the nature of organizing cultural events; videotaping; rental of video tapes; videotape production; video
`production; video editing; videotape editing; arranging of contests; arranging of cultural events; arranging of educational exhibitions in the
`field of photography; conducting of social entertainment events; production of cinematographic films; rental of video cameras; rental of
`cameras; organisation of exhibitions for cultural and educational purposes; photography; photography services; photography instruction;
`photographic reporting; education services, namely, demonstration of photographic equipment for training purposes; training in the use of
`photographic equipment; education services in the nature of conducting courses relating to photographic printing; education services in the
`nature of conducting courses relating to photographic developing
`
`ADDITIONAL STATEMENTS SECTION
`
`COLOR(S) CLAIMED
`
`The color(s) red and black is/are claimed as a feature of the mark.
`
`

`

`(If applicable)
`
`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`The mark consists of the wording "CHANGING PHOTOGRAPHY" in black capital
`letters inside a red plain single line rectangle with curved corners and an opening at
`the bottom center where the word "LUMIX" appears in black capital letters followed
`by a red capital letter "G".
`
`/Sarah G. Voeller/
`
`Sarah G. Voeller
`
`Attorney of record, MN bar member
`
`612.455.3800
`
`12/05/2018
`
`YES
`
`Wed Dec 05 17:00:07 EST 2018
`
`USPTO/ROA-XX.XXX.XXX.XX-2
`0181205170007522270-79233
`156-61064274fe976a27488f6
`64e4507dd766a065dc6172f33
`9faf08c9f8be65c62532-N/A-
`N/A-20181205115949764850
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 79233156 CHANGING PHOTOGRAPHY LUMIX G (Stylized and/or with Design, see https://tmng-
`al.uspto.gov/resting2/api/img/79233156/large) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`RESPONSE
`
`Dear Commissioner:
`
`            
`
`This paper is filed in response to the Office Action dated June 20, 2018.   Applicant respectfully requests a reconsideration
`and advancement of the application to publication.
`
`REMARKS
`The Office Action refused registration by stating that the applied-for mark so resembles U.S. Registration No. 2675599 (the
`
`           
`
`‘599 Registration) as to be likely to cause confusion, to cause mistake, or to deceive. This issue is addressed below.  
`
`The Refusal Under Section 2(d) Should Be Withdrawn
`
`                        
`
`Applicant states for the record that the owner of the ‘599 Registration, Panasonic Corporation of North America, is a
`
` 
` 
`

`

`wholly-owned subsidiary of Panasonic Corporation.  Applicant further states for the record that Panasonic Corporation asserts
`control over the activities and operations of Panasonic Corporation of North America, including the selection, adoption, and use of
`the trademarks.  A Declaration under 37 CFR § 2.20 of Shigeo Yamamoto, the Authorized Signing Officer at Intellectual Property
`
`Center of Panasonic Corporation, is enclosed herewith.                               
`
`Pursuant to TMEP 1201.07(b)(ii), Applicant submits that the ‘599 application in the name of Panasonic Corporation
`of North America does not preclude registration of Applicant's mark.  Applicant requests that the refusal on this basis be withdrawn.
`
`CONCLUSION
`Applicant respectfully requests reconsideration and subsequent withdrawal of the refusal based on the ‘599
`           
`Registration.  Applicant further requests advancement of its application to publication.
`
`EVIDENCE
`Evidence in the nature of Declaration of Shigeo Yamamoto has been attached.
`Original PDF file:
`evi_6413216945-20181205115949764850_._US_Declaration.pdf
`Converted PDF file(s) ( 2 pages)
`Evidence-1
`Evidence-2
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 009 for Photographic apparatus; photographic printing apparatus; photographic equipment; photographic instruments; stands for
`photographic apparatus; cameras; digital cameras; digital still cameras; compact digital cameras
`Original Filing Basis:
`Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
`
`Proposed:
`Tracked Text Description: Photographic apparatus; Photographic apparatus, namely, slide transparencies, projectors, and photographic
`cameras; photographic printing apparatus; photographic printing apparatus, namely, photo printers; photographic equipment; photographic
`equipment, namely, photocopiers, photographic filters, and photographic viewfinders; photographic instruments; photographic instruments,
`namely, cameras and structural and replacement parts thereof, camera lenses, photographic viewfinders, photographic filters; stands for
`photographic apparatus; cameras; digital cameras; digital still cameras; compact digital cameras
`
`Class 009 for Photographic apparatus, namely, slide transparencies, projectors, and photographic cameras; photographic printing apparatus,
`namely, photo printers; photographic equipment, namely, photocopiers, photographic filters, and photographic viewfinders; photographic
`instruments, namely, cameras and structural and replacement parts thereof, camera lenses, photographic viewfinders, photographic filters; stands
`for photographic apparatus; cameras; digital cameras; digital still cameras; compact digital cameras
`
`Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
`
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 040 for Photographic film development; printing; photographic printing; lithographic printing; framing of works of art;
`processing of photographic and cinematographic films; photographic image processing; rental of photographic printing apparatus; providing
`information relating to photographic printing services
`Original Filing Basis:
`Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
`
`Proposed:
`Tracked Text Description: Photographic film development; printing; photographic printing; lithographic printing; framing of works of art;
`processing of photographic and cinematographic films; photographic image processing; photographic image processing, namely, composition,
`correction, modification, alteration, retouching and printing of photographic images; rental of photographic printing apparatus; providing
`information relating to photographic printing services
`
`Class 040 for Photographic film development; printing; photographic printing; lithographic printing; framing of works of art; processing of
`photographic and cinematographic films; photographic image processing, namely, composition, correction, modification, alteration, retouching
`and printing of photographic images; rental of photographic printing apparatus; providing information relating to photographic printing services
`
` 
` 
`

`

`Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
`
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 041 for Entertainment; cultural activities; videotaping; rental of video tapes; videotape production; video production; video
`editing; videotape editing; arranging of contests; arranging of cultural events; arranging of educational events; conducting of entertainment
`events; production of cinematographic films; rental of video cameras; rental of cameras; organisation of exhibitions for cultural and educational
`purposes; photography; photography services; photography instruction; photographic reporting; demonstration of photographic equipment [for
`training purposes]; training in the use of photographic equipment; education services relating to photographic printing; education services
`relating to photographic developing
`Original Filing Basis:
`Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
`
`Proposed:
`Tracked Text Description: Entertainment; Entertainment services in the nature of arranging, operating and conducting of events, competitions,
`contests and parties in the field of photography; cultural activities; cultural activities in the nature of organizing cultural events; videotaping;
`rental of video tapes; videotape production; video production; video editing; videotape editing; arranging of contests; arranging of cultural events;
`arranging of educational events; arranging of educational exhibitions in the field of photography; conducting of entertainment events; conducting
`of social entertainment events; production of cinematographic films; rental of video cameras; rental of cameras; organisation of exhibitions for
`cultural and educational purposes; photography; photography services; photography instruction; photographic reporting; demonstration of
`photographic equipment [for training purposes]; education services, namely, demonstration of photographic equipment for training purposes;
`training in the use of photographic equipment; education services relating to photographic printing; education services in the nature of
`conducting courses relating to photographic printing; education services relating to photographic developing; education services in the nature of
`conducting courses relating to photographic developing
`
`Class 041 for Entertainment services in the nature of arranging, operating and conducting of events, competitions, contests and parties in the field
`of photography; cultural activities in the nature of organizing cultural events; videotaping; rental of video tapes; videotape production; video
`production; video editing; videotape editing; arranging of contests; arranging of cultural events; arranging of educational exhibitions in the field
`of photography; conducting of social entertainment events; production of cinematographic films; rental of video cameras; rental of cameras;
`organisation of exhibitions for cultural and educational purposes; photography; photography services; photography instruction; photographic
`reporting; education services, namely, demonstration of photographic equipment for training purposes; training in the use of photographic
`equipment; education services in the nature of conducting courses relating to photographic printing; education services in the nature of
`conducting courses relating to photographic developing
`
`Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
`
`APPLICANT AND/OR ENTITY INFORMATION
`Applicant proposes to amend the following:
`Current: PANASONIC CORPORATION having an address of
`            1006, Oaza Kadoma Kadoma-shi571-8501 Osaka
`
`      ,
`      Japan
`
`Proposed: PANASONIC CORPORATION, a corporation of Japan, having an address of
`            1006, Oaza Kadoma Kadoma-shi
`
`      Osaka, 571-8501
`      Japan
`
`ADDITIONAL STATEMENTS
`Color Claim
`The color(s) red and black is/are claimed as a feature of the mark.
`
`Description of mark
`The mark consists of the wording "CHANGING PHOTOGRAPHY" in black capital letters inside a red plain single line rectangle with curved
`corners and an opening at the bottom center where the word "LUMIX" appears in black capital letters followed by a red capital letter "G".
`
`SIGNATURE(S)
`Response Signature
`Signature: /Sarah G. Voeller/     Date: 12/05/2018
`Signatory's Name: Sarah G. Voeller
`
`

`

`Signatory's Position: Attorney of record, MN bar member
`
`Signatory's Phone Number: 612.455.3800
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney
`or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is
`concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
`representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's
`appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 79233156
`Internet Transmission Date: Wed Dec 05 17:00:07 EST 2018
`TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2018120517000752
`2270-79233156-61064274fe976a27488f664e45
`07dd766a065dc6172f339faf08c9f8be65c62532
`-N/A-N/A-20181205115949764850
`
`        
`

`

`IN THE UNITED STATES TRADEMARK AND PATENT OFFICE
`
`Applicant:
`
`Panasonic Corporation
`
`Application No.: 79/233 156
`
`Exam Atty:
`
`Shaila E. Lewis
`
`Filed:
`Mark:
`
`Law Ofiice:
`January 31, 2018
`CHANGING PHOTOGRAPHY LUlvflX G
`
`114
`
`Ref. No.:
`
`08279.1986USIB
`
`DECLARATION OF SHIGEO YAMAMOTO
`
`1.
`
`I am the Authorized Signing Officer at Intellectual Property Center of Panasonic
`
`Corporation and possess the knowledge and authority to make the following
`
`statements regarding Panasonic Corporation’s relationship to Panasonic Corporation of
`
`North America.
`
`2.
`
`Panasonic Corporation of North America is a wholly-owned subsidiary of
`
`Panasonic Corporation.
`
`3.
`
`Panasonic Corporation asserts control over the activities and operations of
`
`Panasonic Corporation of North America, including the selection, adoption and use of
`
`the trademarks.
`
`

`

`4.
`
`Accordingly, there is no likelihood of confusion as to source presented by the
`
`simultaneous use and registration of the CHANGING PHOTOGRAPHY LUMIX G
`
`mark and the LUMIX mark as the unity of control over the above marks is a single
`
`source.
`
`The undersigned, being hereby warned that willful false statements and the like so made are
`
`punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false
`
`statement may jeopardize the validity of this document, declares that s/he is properly authorized
`
`to execute this document on behalf of the owner, and all statements made of his/her own
`
`knowledge are true and that all statements made on information and belief are believeé to be true.
`
`2,
`
`g
`
`25‘
`
`Signature of Authorized Person
`
`Shigeo YAMAMOTO
`
`Date: November 26 , 2018
`
`