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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. 87712475 - REGI-ROBO - 20651.50US01
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`3/20/2018 5:12:13 PM
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`ECOM102@USPTO.GOV
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`*87712475*
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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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`VIEW YOUR APPLICATION FILE
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`U.S. APPLICATION
`SERIAL NO. 87712475
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`
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`MARK: REGI-ROBO
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`CORRESPONDENT
`ADDRESS:
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` SARAH G.
`VOELLER
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` HAMRE,
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`SCHUMANN,
`MUELLER & LARSON,
`P.C.
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` 45 SOUTH
`SEVENTH STREET,
`SUITE 2700
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` MINNEAPOLIS, MN
`55402
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`APPLICANT: Panasonic
`Corporation
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`CORRESPONDENT’S
`REFERENCE/DOCKET
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`NO:
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` 20651.50US01
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`CORRESPONDENT
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`E-MAIL ADDRESS:
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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.
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`ISSUE/MAILING DATE: 3/20/2018
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`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application
`online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to
`Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address;
`and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b),
`2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of
`$125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations,
`TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without
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`incurring this additional fee.
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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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`Summary of Issues
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`1) Identification of Goods
`2) Multi-Class Application Advisory
`3) Foreign Registration
`4) Option to Delete Filing Basis
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`Search of Office Database
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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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`Identification of Goods
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`The identification of goods for Classes 7 and 9 is acceptable as written.
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`The wording “ shopping baskets; plastic shopping baskets” in the identification of goods for International Class 20 must be clarified because it
`is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this
`wording could encompass plastic hand-held shopping baskets in Class 21.
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`Applicant may substitute the following wording, if accurate:
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`“Shopping baskets for transporting goods for commercial purposes” in Class 20; and/or
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`“Plastic hand-held shopping baskets” in Class 21.
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`Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted. See
`TMEP §1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of
`permissible amendments may not exceed the scope of the goods identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v.
`Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012,
`1402.01(b).
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`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.
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`Multi-Class Application Advisory
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`The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each
`international class based on Trademark Act Sections 1(b) and 44:
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`(1)
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`(2)
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`List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest
`numbered class.
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`Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).
`The application identifies goods that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3
`class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to
`the number of classes covered by the fees already paid.
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`See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
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`See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the
`Trademark Electronic Application System (TEAS) form.
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`Foreign Registration
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`The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration. An
`application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an
`applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.
`In addition, the applicant’s
`country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend
`reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
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`A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the
`applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates
`of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the
`international registration has been extended to the applicant’s country of origin. TMEP §1016.
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`Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written
`in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be
`signed by the translator. TMEP §1004.01(b).
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`Option to Delete Filing Basis
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`The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section
`44(e). See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3). However, the foreign registration alone may serve as a basis for obtaining a
`U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d). If applicant wants to rely on the foreign registration under Section 44(e) as the
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`sole basis, applicant can request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04.
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`Alternatively, as applicant has not yet submitted the foreign registration or otherwise perfected the Section 44(e) basis, applicant can amend the
`application to rely solely on the Section 1 basis and request deletion of the Section 44(e) basis.
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`Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark
`may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on
`Section 1(b).
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` A
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` prompt response to this Office action will expedite prosecution.
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`/Aisha Y. Salem/
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`Aisha Y. Salem
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`Trademark Examining Attorney
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`Law Office 102
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`571-272-8492
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`Aisha.Salem@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 the
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`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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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation (trademark@hsml.com)
`
`U.S. TRADEMARK APPLICATION NO. 87712475 - REGI-ROBO - 20651.50US01
`
`3/20/2018 5:12:15 PM
`
`ECOM102@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 3/20/2018 FOR U.S. APPLICATION SERIAL NO. 87712475
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`Please follow the instructions below:
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`(1) TO READ THE LETTER: Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click 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.
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`(2) TIMELY RESPONSE IS REQUIRED: Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period. Your response deadline will be calculated from 3/20/2018 (or sooner if specified in the Office action). 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. For information regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`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.
`Instead,
`the USPTO recommends that you respond online using the TEAS response form located at
`http://www.uspto.gov/trademarks/teas/response_forms.jsp.
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`(3) QUESTIONS: For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney. For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
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`WARNING
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`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.
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`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
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`closely resemble the USPTO and their solicitations may look like an official government document. Many solicitations require that you pay
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`“fees.”
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`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
`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.
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