To:
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`Subject:
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`Sent:
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`Sent As:
`
`Attachments:
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`Panasonic Corporation (DCPTOTrademarkMail@hoganlovells.com)
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`U.S. TRADEMARK APPLICATION NO. 87827084 - HOMEX - 1P3518.TBA
`
`1/2/2019 3:29:06 PM
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`ECOM116@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION SERIAL NO.  
`87827084
`
`           
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`MARK: HOMEX
`
`CORRESPONDENT ADDRESS:
`  
`       ANNA KURIAN SHAW
`  
`       HOGAN LOVELLS US LLP
`         555 13TH STREET NW
`           WASHINGTON, DC 20004
`    
`   
`
`APPLICANT: Panasonic Corporation
`
`    
`
`*87827084*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`CORRESPONDENT’S
`
`   
`
`  1P3518.TBA
`CORRESPONDENT E-MAIL
`
`REFERENCE/DOCKET NO:       
`ADDRESS:       
`
`DCPTOTrademarkMail@hoganlovells.com
`
`OFFICE ACTION
`
`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.
`
`ISSUE/MAILING DATE: 1/2/2019
`
`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 incurring
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`this additional fee.   
`
`This letter responds to applicant’s communications filed November 2, 2018 and December 4, 2018 in which applicant amended the identification
`of goods and services and submitted a foreign registration.
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`Office records confirm that application Serial No. 87542806 has abandoned and thus this application no longer presents a potential bar to
`registration.
`
`The advisory regarding a potential likelihood of confusion with the mark in Serial No. 87542768  is maintained and continued.
`
`Upon review of the foreign registration, the following new issue is raised.
`
`The requirement for clarification of the identification of goods and services is maintained and continued.
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`GOODS OUTSIDE SCOPE OF FOREIGN REGISTRATION
`
`Particular wording in the U.S. application’s identification of goods has been found to exceed the scope of goods in the foreign registration upon
`which the U.S. application relies for a Section 44(e) filing basis.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S.
`application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or
`services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the
`identification of goods in the U.S. application for the Section 44(e) filing basis, and only the remaining wording in the identification is operative
`for purposes of future amendment for that basis.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).
`
`In this case, the U.S. application identifies the particular goods as follows:  “apparatus for lighting, heating, steam generating, cooking,
`
`refrigerating, drying, ventilating, water supply and sanitary purposes, namely, refrigerators, freezers, clothes dryers, cooking ranges.”   
`
`However, the foreign registration identifies the following goods in Class 11:  “Toilet bowls and seats sold as a unit; prefabricated bathrooms sold
`as a unit; electric lamps and other lighting apparatus; household electrothermic appliances; toilet stool units with a washing water squirter; air
`conditioners.”
`
`These goods in the U.S. application exceed the scope of goods in the foreign registration because refrigerators and freezers are not types of toilet
`bowls and seats, prefabricated bathrooms, electric lamps and other lighting apparatus, household electrothermic appliances, toilet stool units with
`a washing water squirter or air conditioners and, while clothes dryers and cooking ranges can be types of household electrothermic appliances,
`the current language does not limit them to household use.  Thus, these goods in the U.S. application are not acceptable for the Section 44(e)
`filing basis and cannot be amended to correspond with the goods in the foreign registration.
`
`Applicant may respond to this issue by satisfying one of the following:
`
`(1)           
`
`Amending the identification of goods in the U.S. application for the Section 44(e) filing basis to correspond with the goods
`identified in the foreign registration, if possible, to ensure that all goods beyond the scope of the foreign registration are deleted
`from the U.S. application; or
`
`(2)           
`
`Deleting the Trademark Act Section 44 basis for the goods beyond the scope of the foreign registration and relying solely on the
`
`Section 1 basis for those goods.    
`
`See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB
`1989); TMEP §§806.02, 806.04, 1402.01(b).
`
`Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S.
`application.
`
`IDENTIFICATION OF GOODS AND SERVICES – MAINTAINED AND CONTINUED
`
`The wording in the identification of goods and services must be clarified because it indefinite.  See TMEP §§1402.01, 1402.03.  
`
`In Class 9, applicant must further specify the function of its monitoring apparatus.
`
`In Class 42, applicant must specify the function of the API programs.
`
`The following wording is suggested, if accurate:
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`“Electrical communication machines and instruments, namely, telephone, intercoms, portable telephones, cell phones, televisions, portable radio
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`communication machines, navigation apparatus for vehicles, portable audio players, DVD players, DVD recorders, optical disk player, optical
`disk recorder, media players, Set-top boxes, digital audio and video recorders and players, digital photo frames, videocameras, digital cameras,
`headphones, microphones for telecommunication apparatus, monitoring apparatus other than for medical purposes in the nature of [applicant
`must specify, e.g., wireless controllers to monitor and control the functioning of other electronic devices], personal digital assistants in the shape
`of a watch, smartglasses, modems, smart rings; Home automation hubs using artificial intelligence comprised of voice-activated speakers,
`computer hardware, and software for controlling networked devices in the internet of things (IoT), operating internet-enabled and connected
`lighting apparatus and home security alarms; electronic machines, apparatus and their parts, namely, computers, display units for computers,
`tablet computers and laptop computers; Computer programs for remotely monitoring environment and condition and controlling devices within a
`building, facility and designated separate area; Computer program for remotely controlling lighting devices within a building, facilities and
`designated separate area; Computer program for the purpose of remotely monitoring and controlling electric appliance; Computer program for
`displaying advertisement; Computer programs for allowing users to remotely interact with, monitor, and control the operation of electric
`appliances; computer program for use to connect and control internet of things (Iot) electronic devices; computer programs and software for
`image processing used for mobile phones; computer programs for accessing and using the internet; computer programs for enabling access or
`entrance control; computer operating program; Computer program for the processing and analysis of pattern recognition data using artificial
`intelligence and natural language processing; Computer program for use as an application programming interface (API); Software development
`kits (SDKs) consisting of computer software for the development, use, and interoperability of APIs that are used by electronic devices, systems;
`Computer program for providing personal concierge services for others via a mobile phone, computer, tablet, smart phone, handheld computer,
`portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders and making restaurant, travel, and hotel
`reservations; computer program for personal information management; computer program for providing consumer assistant for searching,
`locating and providing directions for the purchase, consumption and use of a wide range of consumer products, services and information over a
`global communications network; power distribution or control machines and apparatus, namely, electrical power distribution units, power
`controllers, cell switches, electrical switches, electrical outlets, distribution consoles, distribution boards, automatic time switches, electric light
`regulators; computer software for remotely monitoring or controlling electronic machines and electronic locks; electronic lock assemblies” in
`International Class 9
`
`“Computer software design; computer programming or maintenance of computer software; providing computer programs on data networks,
`namely, providing temporary use of online non-downloadable software for remotely monitoring environment and condition and controlling
`devices within a building, facility and designated separate area; providing computer programs on data networks, namely, providing temporary
`use of online non-downloadable software for remotely controlling lighting devices within a building, facilities and designated separate area;
`providing computer programs on data networks, namely, providing temporary use of online non-downloadable software for the purpose of
`remotely monitoring and controlling electric appliance; providing computer programs on data networks, namely, providing temporary use of
`online non-downloadable software for displaying advertisement; providing computer programs on data networks, namely, providing temporary
`use of online non-downloadable software for proposing adequate operation candidate of electric appliance; providing computer programs on data
`networks, namely, providing temporary use of online non-downloadable software for use to connect and control internet of things (Iot) electronic
`devices; providing computer programs on data networks, namely, providing temporary use of online non-downloadable software for image
`processing used for mobile phones; providing computer programs on data networks, namely, providing temporary use of online non-
`downloadable software for accessing and using the internet; providing computer programs on data networks, namely, providing temporary use of
`online non-downloadable software for enabling access or entrance control; providing computer programs on data networks, namely, providing
`temporary use of online non-downloadable software for the processing and analysis of pattern recognition data using artificial intelligence and
`natural language processing; providing computer programs on data networks, namely, providing temporary use of online non-downloadable
`software for providing personal concierge services for others via a mobile phone, computer, tablet, smart phone, handheld computer, portable
`computer, namely, adding and accessing calendar appointments, alarms, timers, reminders and making restaurant, travel, and hotel reservations;
`providing computer programs on data networks, namely, providing temporary use of online non-downloadable software for personal information
`management; providing computer programs on data networks, namely, providing temporary use of online non-downloadable software for
`providing consumer assistant for searching, locating and providing directions for the purchase, consumption and use of a wide range of consumer
`products, services and information over a global communications network; rental of computers; cloud computing, namely, providing virtual
`computer systems and virtual computer environments through cloud computing, Application service provider featuring application programming
`interface (API) software for [applicant must specify the function of the API programs, e.g., integration of video content into websites];
`Application service provider featuring software development kits (SDKs) consisting of computer software for the development, use, and
`interoperability of APIs that are used by electronic devices, systems; rental of web servers” in International Class 42
`
`Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as
`acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language
`or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods
`and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope
`of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the
`wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limitscope,
`and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).
`
`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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`Please note that the identification of goods in Class 11 is acceptable as amended.
`
`PRIOR PENDING APPLICATION
`
`The filing date of pending U.S. Application Serial No. 87542768 precedes applicant’s filing date.  See attached referenced application.  If the
`mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a
`likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of
`applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced
`application.
`
`In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict
`between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits
`applicant’s right to address this issue later if a refusal under Section 2(d) issues.
`
`/Kristina Morris/
`Examining Attorney
`Law Office 116
`571-272-5895
`kristina.morris@uspto.gov (informal queries only)
`
`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.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`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
`
`response.  
`
`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 (DCPTOTrademarkMail@hoganlovells.com)
`
`U.S. TRADEMARK APPLICATION NO. 87827084 - HOMEX - 1P3518.TBA
`
`1/2/2019 3:29:07 PM
`
`ECOM116@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 1/2/2019 FOR U.S. APPLICATION SERIAL NO. 87827084
`
`Please follow the instructions below:
`
`(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.
`
`(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 1/2/2019 (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.
`
`(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.
`
`WARNING
`
`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.
`
`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
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`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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