To:
`
`Subject:
`
`Sent:
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`Sent As:
`
`Attachments:
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`Panasonic Corporation (trademark@hsml.com)
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`U.S. TRADEMARK APPLICATION NO. 88429870 - SUSPECT FINDER - 20651.78US01
`
`6/10/2019 12:37:37 PM
`
`ECOM125@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*88429870*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   88429870
`
`           
`
`MARK: SUSPECT
`FINDER
`
`CORRESPONDENT
`ADDRESS:
`  
`       SARAH G.
`VOELLER
`  
`       HAMRE,
`SCHUMANN,
`MUELLER & LARSON,
`P.C.
`         45 SOUTH
`SEVENTH STREET,
`SUITE 2700
`           MINNAPOLIS, MN
`55402
`    
`   
`APPLICANT: Panasonic
`Corporation
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`   
`
`NO:       
`
`  20651.78US01
`CORRESPONDENT E-
`
`MAIL ADDRESS:   
`
`trademark@hsml.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: 6/10/2019
`
`The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to
`the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
`
`SEARCH OF OFFICE’S DATABASE OF MARKS
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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
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`would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).
`
`SUMMARY OF ISSUES:
`IDENTIFICATION OF GOODS AND SERVICES
`FOREIGN REGISTRATION CERTIFICATE REQUIRED
`OPTION TO DELETE FILING BASES
`
`IDENTIFICATION OF GOODS AND SERVICES
`
`Applicant has applied for SUSPECT FINDER for “ Digital cameras; surveillance cameras; video cameras; computer hardware; computer
`software; computer software for image recognition; computer software for image retrieval; computer software for image management; computer
`software that enables users to request, share, upload, view, discover, and analyze data and information obtained from electronic devices;
`downloadable computer software for database management, data analysis, document management, document analysis, video management,
`analysis; Computer software namely, a search engine for video, image, document and other data” in International Class 9, and “Computer
`software design, programming and maintenance of computer software in the field of image recognition, retrieval and management; web site
`design; rental of computers; providing computer programs on data networks in the field of image recognition, retrieval and management; cloud
`computing featuring software for use in image recognition, retrieval and management; rental of electronic memory space on the Internet;
`software as a service (SAAS) service featuring software for image recognition, retrieval and management; rental of server memory space;
`Software as a service (SAAS) featuring computer software for uploading, browsing, viewing, classifying, managing and sharing digital video,
`image or documents; Platform as a service (PAAS) services featuring a platform for uploading, browsing, viewing, classifying, managing and
`sharing digital video, image or documents; Computer software design, namely, design and customization for others of computer software for use
`in data management; Computer programming, design and development of computer software and computer programs; Cloud computing
`featuring software for database management, data analysis, document management, document analysis, video management, analysis; Technical
`support services, namely, troubleshooting of computer software problems; Software as a service (SAAS) services, namely, hosting software for
`use by others in the field of information security and for the encryption, decryption and authentication of data, for digital certificate issuance,
`verification, and management, and for the verification and management of digital keys and credentials; Computer services, namely, providing a
`search engine for video, image, document and other data via the cloud database to view digital evidence and upload evidence, log events,
`bookmark and classify incidents captured in the foregoing files; Platform as a Service (PAAS) featuring non-downloadable software that enables
`users to request, share, upload, view, discover, and analyze data and information obtained from electronic devices” in International Class 42 .
`
`International Class 9
`
`The identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not
`make clear the nature of the software and could identify goods and/or services in three international classes – as a product in International
`Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Applicant must specify
`the purpose or function of the software, and if content- or field-specific, the content or field of use of the software.  TMEP §1402.03(d). 
`The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the
`application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In
`re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
`
`Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and
`thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line
`non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software
`provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).
`
`For example, the following are acceptable identifications for software in International Class 9:  “desktop publishing software,”
`“downloadable software for word processing,” and “ downloadable mobile applications for managing bank accounts.”   Additionally, the
`following are acceptable identifications for software in International Class 42:  “providing temporary use of on-line non-downloadable
`software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”  
`Finally, the following are acceptable identifications for non-downloadable game software in International Class 41:  “providing online
`non-downloadable game software” and “providing temporary use of non-downloadable game software.”   For assistance with software
`classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services
`Manual.
`
`Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the
`identification of goods/services.  The curly brackets, e.g. {  }, contain instructions to be followed and/or suggested wording.  Brackets (or
`instructions) should not be a part of the amended, final ID.  If there is wording in applicant’s version of the identification of goods/services that
`should be removed, it will be shown with a line through it such as this: strikethrough.  Applicant should enter its amendments in standard font.
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`Applicant may substitute the following wording, if accurate:  
`
`Class 9:          “ Digital cameras; surveillance cameras; video cameras; computer hardware; downloadable computer software for _____
`{specify function of the software, e.g., use in database management, and, if software is content- or field-specific, the
`field of use}; downloadable computer software for image recognition; downloadable computer software for image
`retrieval; downloadable computer software for image management; downloadable computer software that enables users
`to request, share, upload, view, discover, and analyze data and information obtained from electronic devices;
`downloadable computer software for database management, data analysis, document management, document analysis,
`video management, analysis; downloadable computer software, namely, a search engine for video, image, documents and
`other digital data” ;
`
`Class 42:       “
`
`Computer software design, programming and maintenance of computer software in the field of image recognition,
`retrieval and management; web site design; rental of computers; providing temporary use of non-downloadable
`computer programs on online data computer networks in the field of image recognition, retrieval and management; cloud
`computing featuring temporary use of non-downloadable software for use in image recognition, retrieval and
`management; rental of electronic server memory space on the Internet; software as a service (SAAS) service featuring
`software for image recognition, retrieval and management; rental of server memory space; Software as a service (SAAS)
`featuring computer software for uploading, browsing, viewing, classifying, managing and sharing digital video, image or
`documents; Platform as a service (PAAS) services featuring a software platform for uploading, browsing, viewing,
`classifying, managing and sharing digital video, image or documents; Computer software design, namely, design and
`customization for others of computer software for use in data management; Computer programming, design and
`development of computer software and computer programs; Cloud computing featuring temporary use of non-
`downloadable software for database management, data analysis, document management, document analysis, video
`management, analysis; Technical support services, namely, troubleshooting of computer software problems; Software as a
`service (SAAS) services, namely, hosting software for use by others in the field of information security and for the
`encryption, decryption and authentication of data, for digital certificate issuance, verification, and management, and for the
`verification and management of digital keys and credentials; Computer services, namely, providing an online search
`engine for video, image, document and other data via the cloud database to view digital evidence and upload evidence, log
`events, bookmark and classify incidents captured in the foregoing files; Platform as a Service (PAAS) featuring non-
`downloadable software that enables users to request, share, upload, view, discover, and analyze data and information
`obtained from electronic devices”
`
`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).
`
`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.
`
`FOREIGN REGISTRATION CERTIFICATE REQUIRED
`
`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.
`
`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.
`
`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).
`
`OPTION TO DELETE FILING BASES
`
`The application specifies a use basis under Trademark Act Section 1(a), an intent-to-use basis under Trademark Act Section 1(b), and a reliance
`on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(a), 1126(e); 37 C.F.R. §2.34(a)(1), (a)(3).  However, the foreign
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`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 sole basis, applicant can request deletion of the Section 1(a) basis.  See 37 C.F.R.
`
`§2.35(b)(1); TMEP §806.04.  
`
`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.
`
`Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on Sections 1(a), 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).
`
`RESPONSE GUIDELINES
`
`Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining
`attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with
`additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does
`not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. 
`
`See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  
`
`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
`
`this additional fee.     
`
`/Katie Foss/
`Trademark Examining Attorney
`Law Office 125
`571-272-4067
`katherine.foss@uspto.gov
`
`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/.
`
`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. 88429870 - SUSPECT FINDER - 20651.78US01
`
`6/10/2019 12:37:41 PM
`
`ECOM125@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 6/10/2019 FOR U.S. APPLICATION SERIAL NO. 88429870
`
`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 6/10/2019 (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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