United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application
`Serial No.
`79260518
`
`     
`
`Mark:  
`EXPERIENCE
`FRESH
`
`Correspondence
`Address: 
`YAMAO
`Norihito
`AOYAMA &
`PARTNERS,
`Umeda Hankyu
`Bldg. Office
`Tower,
`Osaka 530-0017
`JAPAN
`Applicant:  
`Panasonic
`Corporation
`
`    
`
`Email Address:      
`
`Reference/Docket
`No. N/A
`
`Correspondence
`
`International Registration No. 1455071
`
`Notice of Provisional Full Refusal
`
`NONFINAL OFFICE ACTION
`
`Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent
`to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned.  To confirm the mailing date, go to the
`USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S.
`application serial number in the blank text box, and click on “Documents.”   The mailing date used to calculate the response deadline is the
`
`“Create/Mail Date” of the “IB-1rst Refusal Note.”   
`
`Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).   A link to the appropriate TEAS response
`form appears at the end of this Office action.
`
`Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the
`international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a),
`
`1141h(c).  
`
`INTRODUCTION
`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.
`
`SUMMARY OF ISSUES
`Identification of Goods Requires Amendment
`Transliteration and Translation Requires Amendment
`Mark Description Requires Amendment
`Mark Significance Inquiry
`
` 
` 
`  
` 
` 
` 
` 
` 
`

`

`U.S. Counsel Required
`
`SEARCH OF OFFICE’S DATABASE OF MARKS
`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).
`
`IDENTIFICATION OF GOODS REQUIRES AMENDMENT
`The wording “ electric coffee mills for household purposes” in the identification of goods is indefinite and Applicant must specify the nature and
`purpose of the coffee mills e.g., coffee grinder.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the
`
`common commercial or generic name of the goods.  See TMEP §1402.01.  
`
`The wording “ electric cooking utensils” in the identification of goods is indefinite and Applicant must specify the nature of the goods because
`cooking utensils can include goods in other international classes such as wire baskets and grills in Class 21. However, in an application filed
`under Trademark Act Section 66(a), an applicant may not change the classification of goods 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 in International Class 11 only, the class specified in the application for these goods.   See TMEP §1904.02(c), (c)(ii).
`
`The identification of goods contains brackets.  Generally, applicants should not use parentheses and brackets in identifications in their
`applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or
`services that have been deleted from registrations or in an affidavit of incontestability to indicate goods 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. Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed
`information into the description of the goods and/or services.
`
`In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and services from that
`assigned by the International Bureau of the World Intellectual Property Organization (International Bureau) in the corresponding international
`registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Therefore, any modification to this wording must identify goods and services
`in International Class 7 and 11, the classification assigned by the International Bureau for these goods and services.
`
`Applicant may substitute the following wording, if accurate:  
`
`Class 7
`Electric food mixers; electric kitchen mixers; electric food processors; Electric coffee grinders, namely, electric coffee mills for household
`purposes; electric juice extractors for household purposes; electric juicers for household purposes; electric meat grinders for household purposes;
`electric food blenders for household purposes
`
`Class 11
`Electric rice cookers; electric coffee makers; electric cooking stoves; electric toasters; electric kettles; electric refrigerators; electric cooking
`ovens; microwave ovens [cooking apparatus]; electromagnetic induction cookers; hot plates for household purposes; automatic electric bread-
`making machines for domestic use; electric pressure cookers; electric roasters; electric deep fryers; electric cooking utensils, namely, {specify
`type e.g., electric pressure cookers, electric cooking ovens, electric toasters, electric griddles}; electric frying pans; electric sandwich makers
`
`Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond
`those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services
`
`may not later be reinserted.  See 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 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 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.
`
`TRANSLATION AND TRANSLITERATION REQUIRES AMENDMENT
`Applicant’s proffered transliteration appears to be incorrect. Therefore, applicant must submit (1) a statement translating the non-English
`wording in the mark, see attached translation evidence; and (2) a statement transliterating any non-Latin characters in the mark, with either a
`translation of the corresponding non-English wording or a statement that the transliterated term has no meaning in a foreign language.  See 37
`C.F.R. §§2.32(a)(10), 2.61(b); TMEP §809.  A transliteration is the phonetic spelling, in Latin characters, of the terms in the mark that are in non-
`Latin characters.
`
`If the transliterated wording has an English translation, applicant should submit the following translation and transliteration statement, if
`accurate:
`
`The non-Latin characters in the mark transliterate to “[ insert transliteration statement]” and this means “FISH SHEEP” in English.
`
`See attached evidence.
`
`MARK DESCRIPTION REQUIRED
`The applied-for mark is not in standard characters and applicant did not provide a description of the mark with the initial application. 
`Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal
`
`elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).  
`
`Therefore, applicant must provide a description of the applied-for mark.  The following is suggested:
`
`The mark consists of two Japanese characters inside of a polygon next to the English wording “EXPERIENCE FRESH”.
`
`STATEMENT REQUIRED
`To permit proper examination of the application, applicant must provide all the following information:
`
`(1)  Explain the meaning of the transliteration in the mark and provide evidence of the meaning of the transliteration.
`
`See 37 C.F.R. §2.61(b); TMEP §814.  
`
`Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels
`of trade. Conclusory statements will not satisfy this requirement for information.
`
`Failure to comply with a request for information is grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651 (citing In re
`Cheezwhse.com, Inc., 85 USPQ2d at 1919; In re DTI P’ship LLP , 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814).  Merely stating that
`information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record.  
`See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
`
`APPLICANT WITH FOREIGN STREET ADDRESS – U.S.-LICENSED ATTORNEY REQUIRED
`Applicant must be represented by a U.S.-licensed attorney.  The application record indicates that applicant’s domicile is outside of the
`United States in Japan, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has
`been appointed to represent the applicant in this matter.  All applicants whose permanent legal residence or principal place of business is not
`within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o), 2.11(a).  Thus,
`applicant is required to be represented by a U.S.-licensed attorney and must appoint one.  37 C.F.R. §2.11(a).  This application will not proceed
`to registration without such appointment and representation.  See id.  See Hiring a U.S.-licensed trademark attorney for more information.
`
`To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic
`Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly
`notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the
`attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form
`and sign it as applicant’s attorney.   See 37 C.F.R. §2.17(b)(1)(ii).
`
`RESPONSE GUIDELINES
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail
`communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this
`Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further,
`
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office
`action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
`
`How to respond.   Click to file a response to this nonfinal Office action                                                                                                                                               
`
`/Cristel John/
`Trademark Examining Attorney
`Law Office 125
`(571) 272-5412
`cristel.john@uspto.gov
`
`RESPONSE GUIDANCE
`Missing the response deadline to this letter will cause the application to abandon.   A response or notice of appeal must be received by
`the USPTO before midnight Eastern Time of the last day of the response period.   TEAS and ESTTA maintenance or unforeseen
`
`circumstances could affect an applicant’s ability to timely respond.   
`
`Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an
`attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic
`applicant.  If applicant has an attorney, the response must be signed by the attorney.
`
`If needed, find contact information for the supervisor of the office or unit listed in the signature block.
`
` 
` 
` 
` 
`

`

`1:26 41 PM 8I10l‘2019
`Hips Jl'trarfihle gouge caWepropdrarsththia-flextfish
`
`Google Translate
`
`7A Text
`
`. Documents
`
`
`
`DEFECT LANGUAGE
`
`JAPANESE
`
`ENGLISH
`
`
`CHINESE
`
`V
`
`C’
`
` JAPANESE
`
`ENGLISH
`
`CHINESE [SlMPLlFlED)
`
`V
`
`fish
`
`I19
`
`Definitions of fish
`
`Noun
`
`9
`
`X
`
`v
`
`4/5000
`
`% (6
`
`Sakana
`
`49
`
`Translations of fish
`
`Noun
`5i
`7 4’ ‘y >1
`?Lt
`
`Verb
`€4T§
`
`llsh
`fish
`fish
`
`fish
`
`H] —)L
`
`trawl, fish. catch fish, go fishing, net, bait a hook
`
`3°?
`
`iLIl / <2
`
`Frequency (3
`I.-
`nu-
`_
`
`__
`
`-
`
`{ ] F
`
`a limbless coldrbiooded vertebrate animal with gills and fins and living
`wholly in water.
`“the sea is thick With fish"
` a flat plate of metal, wood, or another material that is fixed on a beam or
`across a joint in order to give additional strength, especially on a ship‘s
`damaged mast or spar as a temporary repair.
`
`3] ‘;
`
`catch or try to catch fish, typically by using a net or hook and line.
`“he was fishing for blueflsh"
`Synonyms:
`gofishing
`
`angle
`
`cast
`
`trawl
`
`troll
`
`seine
`
`2 I mend or strengthen (a beam, joint, mast, etc.) with a fish.
`
`Examples of fish
`
`

`

`i<§
`
`Frequency @
`
`1:27 00 PM 8I10I2019
`MijMmshIegooghcumfiwmopdramhtMtfiafitm
`
`Google Translate
`
`3A Text
`
`I Documents
`
`DEfECT LANGUAGE
`
`JAPANESE
`
`ENGLISH
`
`
`CHINESE
`
`V
`
`<3
`
`
`
`JAPANESE ENGLISH
`
`CHINESE (SIMPLIFIED)
`
`i H
`
`itsuji
`
`«a
`
`G
`
`X
`
`-
`
`5/5000
`
`Translations of sheep
`Noun
`3?
`1A I‘D
`
`sheep
`mutton, sheep
`
`sheep
`
`SHEp
`
`q,
`
`19
`
`Definitions of sheep
`Noun
`
`1 a domesticated ruminant animal with a thick woolly coat and (typically only
`in the male) curving horns. It is kept in flocks for its wool or meat, and is
`proverbial for its tendency to follow others in the flock.
`“Chickens and turkeys were kept both for their eggs and meat just as sheep provided
`wool and meat."
`
`Synonyms:
`rarn
`ewe
`
`lamb
`
`wether
`
`bellwether
`
`a person who is too easily influenced or led.
`“the party members had become sheep, and she refused to be taken in”
`
` a person regarded as a protected folEower of God.
`
`“And amid all this we are to preach the gospel of salvation, gathering in the lost sheep
`of Christ till the church is complete."
`
`Examples of sheep
`
`