NOTE TO THE FILE
`
`SERIAL NUMBER:            
`
`79259883
`
`DATE:                               
`
`06/10/2020
`
`NAME:                              
`
`kfoss
`
`NOTE:         
`
`From: Sarah G. Voeller <svoeller@hsml.com>
`Sent: Wednesday, June 10, 2020 11:49 AM
`To: Foss, Katherine <Katherine.Foss@USPTO.GOV>
`Cc: Heidi McCarty <hmccarty@hsml.com>; Yu Guan <yguan@hsml.com>
`Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI
`
`Dear Ms. Foss,
`
`The client accepts the stand alone “film” to be amended to “plastic films for wrapping and packaging.”
`
`Class 16: “Paper and cardboard; printed matter, namely, instruction manual in the field of electronics and electrical
`engineering; bookbinding material; adhesives for stationery or household purposes; paintbrushes; printed instructional
`and teaching materials in the field of electronics and electrical engineering; plastic sheets, films and bags for wrapping
`and packaging; printers' type, printing blocks; office type composing machines; addressing machines; pencil
`sharpening machines, electric or non-electric; sealing machines for offices; typewriters, electric or non-electric; wet
`erase writing boards; chalk boards being blackboards; ink for writing instruments; inking ribbons; thermal paper; electric
`paper staplers for offices; paper staplers for offices; staples for offices; stickers being stationery; writing instruments;
`paper sheets being stationery; printing papers; paper coffee filters; paper shredders for office use; books in the field of
`electronics and electrical engineering; calendars; catalogues in the field of electronics and electrical engineering;
`geographical maps; newsletters in the field of electronics and electrical engineering; newspapers; pamphlets in the field
`of electronics and electrical engineering; pictures; packing cushioning, stuffing materials of paper or cardboard; drawing
`instruments; ink ribbons; plastic films for wrapping and packaging; franking machines for office use; replacement and
`structural parts and fittings for all the aforesaid goods”
`
`Please go ahead and make the examiner’s amendment.
`
`Have a good day!
`
`Sarah
`
`From: Foss, Katherine [mailto:Katherine.Foss@USPTO.GOV]
`Sent: Monday, June 08, 2020 5:34 PM
`To: Sarah G. Voeller
`Cc: Heidi McCarty; Yu Guan
`Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI
`
`Dear Ms. Voeller,
`
` I
`
` am putting together the Examiner’s Amendment, and I wanted to clarify one item prior to issuing any changes.
`
`When I checked my notes, I realized that the chart mistakenly indicates that the issue with the term “films” in Class 16
`appeared in the phrase below. The issue was with the term “film” appearing as a standalone item in this class. The portion
`shown as problematic in the chart is acceptable as-is. The term “film” appears twice in Class 16.
`
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`Plastic sheets, films and bags for wrapping
`and packaging
`
`Please amend the objected item to read as
`"sheets, films and bags made from plastic
`for wrapping and packaging".
`
`Please confirm whether you would prefer this to read as “plastic films for wrapping and packaging”. This wording would be
`consistent with what was provided by your client, but it would not alter the phrase “plastic sheets, films and bags for wrapping
`and packaging” as amendment is not required in that phrase.
`
`Class 16 as a whole would read as follows (additions in bold):
`
`Class 16: “Paper and cardboard; printed matter, namely, instruction manual in the field of electronics and electrical
`engineering; bookbinding material; adhesives for stationery or household purposes; paintbrushes; printed instructional
`and teaching materials in the field of electronics and electrical engineering; plastic sheets, films and bags for wrapping
`and packaging; printers' type, printing blocks; office type composing machines; addressing machines; pencil
`sharpening machines, electric or non-electric; sealing machines for offices; typewriters, electric or non-electric; wet
`erase writing boards; chalk boards being blackboards; ink for writing instruments; inking ribbons; thermal paper; electric
`paper staplers for offices; paper staplers for offices; staples for offices; stickers being stationery; writing instruments;
`paper sheets being stationery; printing papers; paper coffee filters; paper shredders for office use; books in the field of
`electronics and electrical engineering; calendars; catalogues in the field of electronics and electrical engineering;
`geographical maps; newsletters in the field of electronics and electrical engineering; newspapers; pamphlets in the field
`of electronics and electrical engineering; pictures; packing cushioning, stuffing materials of paper or cardboard; drawing
`instruments; ink ribbons; plastic films for wrapping and packaging; franking machines for office use; replacement and
`structural parts and fittings for all the aforesaid goods”
`
`Alternatively, you can delete “film” from the ID or provide a new suggestion.
`
`Please advise at your earliest convenience.
`
`Kind regards,
`Katie
`
`Katie Foss
`Trademark Examining Attorney | Law Office 125
`571-272-4067 | katherine.foss@uspto.gov
`
`From: Sarah G. Voeller
`Sent: Monday, June 8, 2020 4:02 PM
`To: Foss, Katherine
`Cc: Heidi McCarty ; Yu Guan
`Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI
`
`Thank you
`
`From: Foss, Katherine [mailto:Katherine.Foss@USPTO.GOV]
`Sent: Monday, June 08, 2020 2:48 PM
`To: Sarah G. Voeller
`Cc: Heidi McCarty; Yu Guan
`Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI
`
`Dear Ms. Voeller,
`
`  I
`
` have had a chance to review the proposed changes, and all appear acceptable. Given how specific some of the required
`changes were from our ID group, I was a initially a bit hesitant about the wording “managing” in the phrase "Recorded and
`downloadable computer operating and managing software for use with medical and beauty care apparatus" in Class 9,
`however my senior attorney and I discussed it, and we both agree this wording is acceptable.
`
`  I
`
` will make the changes and issue an Examiner’s Amendment in due course. Thank you very much for your time on this.
`
` 
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`

`

`Kind regards,
`Katie
`
`Katie Foss
`Trademark Examining Attorney | Law Office 125
`571-272-4067 | katherine.foss@uspto.gov
`
`From: Foss, Katherine <Katherine.Foss@USPTO.GOV>
`Sent: Monday, June 8, 2020 11:09 AM
`To: Sarah G. Voeller <svoeller@hsml.com>
`Cc: Heidi McCarty <hmccarty@hsml.com>; Yu Guan <yguan@hsml.com>
`Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI
`
`Dear Ms. Voeller,
`
`Thank you very much for your email. I will review today and get back to you as soon as I am able.
`
`Kind regards,
`Katie
`
`Katie Foss
`Trademark Examining Attorney | Law Office 125
`571-272-4067 | katherine.foss@uspto.gov
`
`From: Sarah G. Voeller <svoeller@hsml.com>
`Sent: Monday, June 8, 2020 10:21 AM
`To: Foss, Katherine <Katherine.Foss@USPTO.GOV>
`Cc: Heidi McCarty <hmccarty@hsml.com>; Yu Guan <yguan@hsml.com>
`Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI
`
`Dear Katie,
`
`Please see the attached spreadsheet regarding the proposed amendments. Hopefully you will be able to make an examiner’s
`amendment.
`
`Kind regards,
`Sarah Voeller
`
`From: Foss, Katherine [mailto:Katherine.Foss@USPTO.GOV]
`Sent: Thursday, June 04, 2020 3:38 PM
`To: Sarah G. Voeller
`Cc: Heidi McCarty; Yu Guan
`Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI
`
`Dear Ms. Voeller,
`Thank you very much for your email. I will hold off on issuing a formal action for as long as I am able. I should be able to wait a
`couple of weeks. In the event my hand is forced and I cannot wait any longer, I will email you in advance.
`In the meantime, should you have any questions, please don’t hesitate to contact me. Again, I am sorry for the
`inconvenience.
`Kind regards,
`Katie
`Katie Foss
`Trademark Examining Attorney | Law Office 125
`571-272-4067 | katherine.foss@uspto.gov
`From: Sarah G. Voeller
`Sent: Thursday, June 4, 2020 4:33 PM
`To: Foss, Katherine
`Cc: Heidi McCarty ; Yu Guan
`Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI
`
` 
` 
` 
` 
` 
` 
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` 
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`

`

`Dear Katherine,
`It had been very difficult to obtain our client's confirmation of the proposed amendments during this difficult time. We do not
`expect a reply from them for some time. If you could wait a little longer, it would be appreciated.
`Kind regards,
`Sarah Voeller
`From: Foss, Katherine [mailto:Katherine.Foss@USPTO.GOV]
`Sent: Thursday, May 28, 2020 12:41 PM
`To: Trademark
`Cc: Heidi McCarty
`Subject: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI
`WARNING:This email originated outside of HSML.
`DO NOT CLICK any links or attachments unless you recognize the sender and trust the content is safe.
`
`Dear Ms. Voeller,
`I hope you are well. I recently approved this application for publication, however, upon further review our ID class group
`determined that certain wording remains unclear. Despite my best efforts to capture every issue in this lengthy 38 class
`identification, additional changes must be made prior to publication. I sincerely apologize for the inconvenience.
`My hope is that we can resolve these small issues informally via Examiner’s Amendment, and get this application in position
`for publication as soon as possible. I have been assured that the full application has been reviewed, and that these issues are
`all that remain to be corrected.
`Below are details regarding each individual issue, as well as suggested amendments. Some suggestions show only the
`relevant goods as the entire class would make the email exceedingly long. I am happy to discuss any of these suggestions
`and amend suggestions based on your feedback. Additions are shown in bold, and deletions in strikethrough.
`Class 4:
`In Class 4, “dust… wetting… compositions” is indefinite. Please clarify the nature of these goods. “Dust binding compositions”
`and “dust absorbing compositions” are acceptable in Class 4. If the “wetting” is actually a part of the “binding” perhaps this
`wording is extraneous and may be deleted. If not, I am happy to discuss.
`In addition, “… and illuminants in the nature of lighting” is indefinite and could include candles in Class 4 or electrical lighting
`fixtures in Class 11. Please clarify the nature of these goods. Because this application was filed under Trademark Act 66§(a),
`the goods may only be amended to identify goods in the class in which they were originally filed. Please amend the goods
`accordingly.
`Class 4: “Industrial oils and greases; industrial lubricants; dust absorbing , wetting and binding compositions; fuels,
`namely, gasoline and illuminants in the nature of lighting fuels, namely, gasoline and illuminants in the nature of
`lighting, namely, candles; candles and wicks for lighting; industrial oil; lubricating oil”
`Class 9:
`“Recorded and downloadable computer software for use with medical and beauty care apparatus” appears in Class 9 and is
`indefinite. The field of use is indicated but not the function. Software IDs must specify the software function. See TMEP
`1402.03(d). Please specify the software function. See 009-5430 009 Recorded software for {specify the function of software,
`e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-
`specific, the content or field of use}.
`“Downloadable software featuring electronic maps” appears in Class 9 and is indefinite. The software function must be
`specified under U.S. policy requiring specific IDs. The software has not been identified with sufficient specificity to enable third
`parties to make 2(d) determinations. Does the software create maps, display maps, etc.? TMEP §1402.03(d). Applicant must
`clarify the function of the software.
`“Computer hardware and recorded and downloadable software for internet of things (IoT) sold as a unit” appears in Class 9.
`The software function must be specified under U.S. policy requiring specific IDs and the current guidance in the ID Manual.
`The software has not been identified with sufficient specificity to enable third parties to make 2(d) determinations. TMEP
`§1402.03(d). Applicant must clarify. See, e.g., 009-5181 009 Downloadable software for connecting, operating, and managing
`networked {indicate devices, e.g., cars, kitchen appliances, HVAC systems, etc.} in the internet of things (IoT). The software
`may also be computer software designed to operate the hardware.
`Class 9 (relevant goods shown only, rest of class remains unchanged): “Recorded and downloadable computer
`operating software for use with medical and beauty care apparatus; Downloadable software featuring display of
`electronic maps; Computer hardware and recorded and downloadable computer operating software for internet of
`things (IoT) sold as a unit”
`Class 11:
`In Class 11, please clarify the nature of the goods identified as “flashlights torches” and please amend “heat water heaters”
`to “hot water heaters,” if accurate.
`Class 11 (relevant goods shown only, rest of class remains unchanged): “flashlights being torches; heat hot water heaters”
`Class 16:
`In Class 16, “film” is indefinite and overbroad and must be clarified. “Film” potentially identifies goods in multiple classes, for
`example, unexposed camera film in Class 1 (see Term ID 001-93), plastic films for wrapping and packaging in Class 16 (see
`
`

`

`Term ID 016-2416), and plastic film for packing, cushioning, or stuffing purposes in Class 17 (see Term ID 017-737), etc.
`Please clarify the nature of the film in Class 16 only, the class assigned by the IB. See TMEP §1402.01(c).
`Class 16 (relevant goods shown only, rest of class remains unchanged): “ Plastic films for wrapping and packaging”
`Class 35:
`In Class 35, “retail or wholesale services for nursing care products” is indefinite. Specifically, applicant must specify the
`format of wholesale and retail services, e.g., "wholesale distributorships featuring nursing care products” or "retail store
`services featuring nursing care products." Without such indication, the ID as written includes a wide variety of services related
`to retailing, such as accounting, product supply, advertising, etc. See TMEP §§1402.01, 1402.03.
`Additionally, for all other instances where applicant identifies its services as “retail or wholesale store services”, Applicant
`and wholesale store services.” As currently
`should elect either “retail” or “wholesale” or indicate that it offers both “retail
`written it is indefinite as to whether applicant is offering one service or the other.
`Class 35 (relevant services shown only, rest of class remains unchanged): “retail store or and wholesale services for nursing
`care products”
`Class 41:
`In Class 41, “production and distribution of educational and instructional materials” is indefinite and overbroad and must be
`clarified. The form of material must be further specified in Class 41 only, for example, as videos, films, or movies. Without
`identifying the material further, the ID is broad enough to include distribution of hard goods, such as video tapes, which may
`refer to retailing activities in Class 35 or transport and delivery services in Class 41. Please see, e.g., Term ID 041-1321, and
`the notes contained therein. For example, the ID may be clarified as “production and distribution of educational and
`instructional materials in the nature of movies and films,” which would be definite and classified in Class 41.
`Next, “providing digital images or movies” is indefinite and overbroad and must be clarified. First, the use of “or” makes it
`unclear whether applicant is providing both images and movies or only one of the two. “Or” must be replaced with “and” or
`the ID must be rewritten with “or” deleted and the services specified in a definite manner. See TMEP §1402.03(a). In
`addition, “providing digital images or movies” potentially identifies downloadable digital images and movies in Class 9 (see
`Term IDs 009-4234 and 009-4787), retail store services featuring downloadable images and movies in Class 35 (see Term ID
`035-1089), or the providing of online, non-downloadable digital images and movies in Class 41 (see Term IDs 041-1711 and
`041-1754).
`In addition, “providing publishing electronic publications, not downloadable” is ambiguously worded. Does this mean
`“publishing OF electronic publications?” Please clarify the services.
`Class 41 (relevant services shown only, rest of class remains unchanged): “production and distribution of educational
`and instructional materials in the nature of movies and films; providing online, non-downloadable digital images or
`and movies; providing publishing of electronic publications, not downloadable”
`Again, my apologies for the inconvenience. I am confident we can get this resolved quickly. I would also be happy to provide a
`full, revised listing of all classes as they would be upon publication prior to issuing any Examiner’s Amendment, if you like.
`I am out of the office much of today and tomorrow, but I will be in the office all of next week. I am happy to discuss on the
`phone as well.
`Kind regards,
`Katie
`Katie Foss
`Trademark Examining Attorney | Law Office 125
`571-272-4067 | katherine.foss@uspto.gov
`
`Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in
`accordance with 37 C.F.R. §2.191 and TMEP §§709.04 -.05
`
` 
`