To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation (trademark@hsml.com)
`
`U.S. Trademark Application Serial No. 88802979 - FACIALIS - 8279.2100US0
`
`March 26, 2020 12:59:28 PM
`
`ecom130@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application
`Serial No.
`88802979
`
`     
`
`Mark:   FACIALIS
`
`    
`   
`
`Correspondence
`Address: 
`SARAH G.
`VOELLER
`HAMRE,
`SCHUMANN,
`MUELLER &
`LARSON, P.C.
`45 SOUTH
`SEVENTH
`STREET, SUITE
`2700
`MINNEAPOLIS,
`MN 55402
`
`Applicant:  
`Panasonic
`Corporation
`
`    
`
`Reference/Docket
`No. 8279.2100US0
`
`Correspondence
`
`Email Address:  
`
`trademark@hsml.com
`
`The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. 
`Respond using the Trademark Electronic Application System (TEAS).   A link to the appropriate TEAS response form appears at the end of this
`
`NONFINAL OFFICE ACTION
`
`Office action.   
`  
`
`Issue date:  March 26, 2020
`
`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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`SEARCH OF USPTO DATABASE OF MARKS
`
`The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar
`registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.
`
`SUMMARY OF ISSUES:
`
`Identification of Goods & Services - Indefinite
`Significance of the Mark – Inquiry
`
`IDENTIFICATION OF GOODS & SERVICES - Indefinite
`
`-          Class 9
`
`The wording “ sensors in the identification of goods for International Class 9 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 vibration sensors
`and the like in International Class 9, biofeedback sensors and the like in International Class 10, bite sensors in International Class 28, etc.
`
`The wording “ gas sensors,” “ electronic sensors,” “ heat sensors,” “ position sensors,” “ light sensors,” “ level sensors,” “ smoke sensors,”
`“ distance sensors,” “ magnetic resistance sensors,” “ sensors, detectors and monitoring instruments,” “ Internet of Things (IoT),” “ measuring
`apparatus,” “ measuring instruments,” “ communication apparatus,”   “ communication instruments,” and “ visual display units” in the
`identification of goods is indefinite and must be clarified because applicant must further clarify the nature, function, intended use, field/subject
`matter, etc., i.e., “ gas sensors for measuring gas concentration, measuring solar radiation, for the detection of explosives, for controlling the
`orientation of solar panels used for the generation of electrical energy, oil level sensors, electric smoke sensors, distance sensors in the nature of
`sensors for the determination of temperatures, positions and distances, for generating and measuring magnetic fields, in the nature of monitoring
`devices for monitoring battery performance characteristics, for local and remote configuration, monitoring, and control for use in connection
`with lighting, hvac, and control for use in connection with lighting, hvac, home monitoring and small appliances, communication transmission
`
`apparatus, etc.”   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  
`
`The wording “ biosensors” and “ scanners” in the identification of goods for International Class 9 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
`include digital input and output scanners, biosensors for use in biomolecular measurement for research purposes, not for medical purposes and
`the like in International Class 9 and biofeedback sensors, X-ray CT scanners, and the like in International Class 10.
`
`The wording “ mobile communication terminals” in the identification of goods is indefinite and must be clarified because applicant must further
`clarify the nature, function, intended use, field/subject matter, etc., i.e., “ mobile data 
`terminal (MDT), etc.”   See 37 C.F.R. §2.32(a)(6); TMEP
`
`§1402.01.  
`
`The identification for “ computer software” and “ computer software applications” in International Class 9 is indefinite and too broad and must
`be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its
`format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and
`recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class
`
`42.  See TMEP §1402.03(d).    
`
`The USPTO requires such specificity 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).
`
`-          Class 42
`
`The wording “ update of computer software” in the identification of services is indefinite and must be clarified because applicant must further
`
`clarify the nature, function, intended use, field/subject matter, etc., i.e., “ updating, etc.”   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  
`
`The identification for “ software as a service (SAAS)” and “ providing temporary use of non-downloadable software” in International Class 42 is
`indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or
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`is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP
`field- specific; and (2) whether its format
`§§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-
`downloadable use is a service in International Class 42; except for 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).
`
`The USPTO requires such specificity 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).  
`
`The wording “ cloud computing,” “ technological research,” “ technological consultancy,” “ technical testing,” “ clinical trials” and “ quality
`assessment” in the identification of services is indefinite and must be clarified because applicant must further clarify the nature, function,
`intended use, field/subject matter, etc., i.e., “ field of computer hardware systems, testing of computers, conducting clinical trials for others,
`
`quality control for others, etc.”   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  
`
`-          Class 44
`
`The wording “ medical examinations” and “ medical analysis” in the identification of services is indefinite and must be clarified because
`applicant must further clarify the nature, function, intended use, field/subject matter, etc., i.e., “ conducting medical examinations for insurance
`
`purposes, for diagnosis of cancer, etc.”   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  
`
`The wording “ consultancy relating to health care” and “ information relating to psychology” in the identification of services for International
`Class 44 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 business management consulting for the health care industry, information
`about psychological testing for the selection of personnel and the like in International Class 35, psychological research information and the like in
`International Class 42 and consulting on various medical conditions, information about psychological counseling and treatment and the like in
`International Class 44.
`
`Applicant may substitute the following wording, if accurate:
`
`“ Vibration sensors; Electrical sensors; Gas sensors for measuring gas concentration; Electronic sensors for measuring solar radiation;
`Infrared sensors; Ultrasonic sensors; Heat sensors for the detection of explosives;  LED position sensors; Light sensors for controlling
`the orientation of solar panels used for the generation of electrical energy;  oil level sensors; electric smoke sensors; Photoelectric
`sensors; Optical sensors; Pressure sensors; Temperature sensors; electronic Measuring sensors for measuring solar radiation; Distance
`sensors in the nature of sensors for the determination of temperatures, positions and distances; Humidity sensors; Motion sensors;
`Thermal sensors, namely, (thermostats); Fire sensors; Liquid level sensors; Magnetic resistance sensors for generating and measuring
`magnetic fields; Sensors for determining acceleration; Sensors, detectors and monitoring instruments in the nature of monitoring devices
`for monitoring battery performance characteristics; Internet of Things (IoT) sensors for local and remote configuration, monitoring,
`and control for use in connection with lighting, hvac, home monitoring and small appliances; Sensors for measuring chemical levels
`in aqueous solutions, (measurement apparatus), other than for medical use; Accelerometers; pressure measuring apparatus; height
`measuring instruments; Communication transmission apparatus; Communication instruments, namely, optical data links; Cameras;
`Digital cameras; Digital video cameras; Video cameras; Video surveillance cameras; Visual display units in the nature of electronic
`LCD display unit with multi-networking (TCP/IP) capabilities; Video display units; Bio- sensors for use in biomolecular measurement
`for research purposes, not  for medical purposes; Biometric scanners;  digital input and output scanners; Mobile communication
`terminals in the nature of a mobile data terminal (MDT); Mobile computers; Smartphones; Personal digital assistants (PDAs); Tablet
`computers; downloadable computer software for use in computer access control; downloadable computer software applications for
`database management; Recorded or downloadable computer software for use in collecting, testing, measuring and evaluating
`physiological expressions and signals; Recorded or downloadable computer software for use in controlling, managing and operating
`electric or electronic devices by means of collected physiological expressions and signals; Computers; Computer peripheral devices,” in
`International Class 9;
`
`“ Biofeedback sensorsl X-ray CT scanners,” in International Class 10; - ADDED CLASS
`
`“Consultancy relating to health case in the nature of consulting services in the cost management of health care; provision of
`information relating to psychology in the nature of information about psychological testing for the selection of personnel,” in
`International Class 35; - ADDED CLASS
`
`“Computer programming; Computer software design; Maintenance of computer software; Updat ing of computer software; Installation of
`computer software; Rental of computers; Software as a service (SaaS) featuring software for use in collecting, testing, measuring and
`evaluation physiological expressions and signals; Providing temporary use of non-downloadable software for database management;
`Providing temporary use of non-downloadable software for use in collecting, testing, measuring and evaluating physiological expressions
`
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`and signals; Providing temporary use of non-downloadable software for use in controlling, managing and operating electric or electronic
`devices by means of collected physiological expressions and signals; Rental of web servers; consulting in the field of cloud computing;
`Rental of computer software; Electronic data storage; Technological research in the field of computer hardware systems; Technological
`consultancy in the field of computer hardware systems; Technical testing of computers; conducting clinical trials for others; Quality
`assessment in the nature of quality control for others; provision of information relating to psychology in the nature of information
`about psychological research,” in International Class 42; and
`
`“Medical information; conducting medical examinations for insurance purposes; Medical analysis services for the diagnosis of cancer;
`Behavioural analysis for medical purposes; Services of a psychologist; Mental health screening services; Medical screening; Consultancy
`relating to health care in the field of occupational therapy for persons with disabilities; Information services relating to health care;
`Provision of information relating to psychology, namely, information in the field of psychological counseling and treatment,” in
`International Class 44.
`
`If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes9,
`10, 35, 42 and/or 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
`
`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.
`
`MULTIPLE-CLASS APPLICATION REQUIREMENTS - Advisory
`
`The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below
`for each international class based on Trademark Act Section 1(b):
`
`(1)       
`
`(2)       
`
`List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest
`numbered class.
`
`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 and/or services that are classified in at least 5+ 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.
`
`See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
`
`For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark
`Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
`
`SIGNIFICANCE OF THE MARK – Inquiry
`
`To permit proper examination of the application, applicant must provide the following information:
`
`(1)  Explain whether the wording “FACIALIS” in the mark has any meaning or significance in the industry in which the goods and/or
`services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a
`
`term of art within applicant’s industry.   
`(2)  Explain whether this wording identifies a geographic place or has any meaning in a foreign language.  
`
`(3)  Submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling of the pronunciation, in
`
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`Latin characters) of all non-Latin characters in a mark.  If the wording does not have meaning in a foreign language, applicant should so
`
`specify.    
`The format for an English translation:  “ The English translation of “FACIALIS” is “ {specify}”.   
`The format for when there is no English translation:  “ The wording “FACIALIS” has no meaning in a foreign language.   
`See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.  
`
`Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016);
`TMEP §814.
`
`RESPONSE GUIDELINES
`
`Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot
`provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. 
`
`See TMEP §§705.02, 709.06.  
`
`The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in
`
`the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  
`How to respond.   Click to file a response to this nonfinal Office action.        
`
`/Erin Z. Dyer/
`Erin Zaskoda Dyer
`Trademark Examining Attorney
`Law Office 130/TM Innovation Lab
`(571) 272-9740
`erin.dyer@uspto.gov (preferred)
`
`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.
`
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`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation (trademark@hsml.com)
`
`U.S. Trademark Application Serial No. 88802979 - FACIALIS - 8279.2100US0
`
`March 26, 2020 12:59:32 PM
`
`ecom130@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on March 26, 2020 for
`U.S. Trademark Application Serial No. 88802979
`
`Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has
`issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the
`steps below.
`
`(1)  Read the official letter.
`
`(2)   Direct questions about the contents of the Office action to the assigned attorney below.   
`
`/Erin Z. Dyer/
`Erin Zaskoda Dyer
`Trademark Examining Attorney
`Law Office 130/TM Innovation Lab
`(571) 272-9740
`erin.dyer@uspto.gov (prefer
`
`Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your
`application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center
`(TAC).
`
`(3)  Respond within 6 months (or earlier, if required in the Office action) from March 26, 2020, using the Trademark Electronic
`Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the
`response period.  See the Office action for more information about how to respond
`
`GENERAL GUIDANCE
`·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid
`missing critical deadlines.
`
`·        
`
`Update your correspondence email address,
`application.
`
`if needed,
`
`to ensure you receive important USPTO notices about your
`
`·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with
`the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices –
`most of which require fees.   All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”
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