To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation (DCPTOTrademarkMail@hoganlovells.com)
`
`U.S. Trademark Application Serial No. 88858485 - HEARTMOTIVE - 1P3518010937
`
`May 13, 2020 12:27:23 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. 88858485
`
`Mark:   HEARTMOTIVE
`
`Correspondence Address: 
`Julia Anne Matheson
`HOGAN LOVELLS US LLP
`555 13TH STREET, NW
`WASHINGTON DC 20004
`
`     
`    
`   
`
`Applicant:   Panasonic Corporation
`
`    
`
`Reference/Docket No. 1P3518010937
`
`Correspondence Email Address:  
`
`DCPTOTrademarkMail@hoganlovells.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:  May 13, 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, 2.65(a); TMEP §§711, 718.03.
`
`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 and/or services requirement
`Foreign registration certificate requirement
`
`PROCEDURAL ISSUES
`
`Identification of Goods and/or Services Requirement
`
`THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND/OR SERVICES SPECIFIED THEREIN
`
`The identification of goods and/or services contains parentheses.  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 and/or services 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 parentheses from the identification and incorporate any parenthetical or bracketed information into the
`description of the goods and/or services.
`
`The identification of goods and/or services is indefinite and must be clarified because various elements in the wording are excessively broad
`and/or may include goods/services in multiple international classes.  The examining attorney notes below in bold where additional
`
`specification/clarification is needed.  See TMEP §§1402.01, 1402.03(a).  
`Applicant may adopt the following identification, if accurate.  
`
`·       Class 007:  Electric motors other than for land vehicles; Electricity generators; AC generators; DC generators; Compressors for
`machines.
`·       Class 009:  Electric wires and cables; Downloadable computer software for use in vehicle navigation featuring electronic maps; Computer
`software platforms, downloadable, for operation and control of autonomous-driving vehicles; personal digital assistants; Cameras;
`Batteries; Dry cells; Rechargeable batteries; Electric accumulators; Batteries for vehicles; Electric batteries for powering electric vehicles;
`Battery chargers; Nickel-cadmium storage batteries; Lithium ion batteries; Solar batteries; Antennas; Remote monitoring apparatus,
`namely a remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images to a
`remote location; Radios; Digital audio players; Audio speakers; Car audio apparatus namely car stereos; Audio and visual equipment for
`vehicles, namely, radios, audio and video players, televisions, displays in the nature of {specify type, e.g., flat panel display screens,
`liquid crystal displays, etc.} and {specify type, e.g., audio, bass, loud, etc.} speakers; Rearview cameras for vehicles; Rearview video
`monitors for vehicles; Subwoofers; Subwoofers for vehicles; Liquid crystal displays; LCD panels; DVD players; In-vehicle cameras;
`Electronic downloadable publications namely, operating guides and manuals in the field of operating and controlling autonomous-driving
`vehicles; Optical disc players; Global Positioning System (GPS) apparatus; Navigation apparatus for vehicles namely on-board
`computers; Remote controllers for navigation apparatus; Remote controls for {indicate specific devices, e.g. radios, televisions,
`stereos}; Electronic power controllers; Downloadable computer software for use in vehicle navigation featuring electronic maps; Vehicle
`{specify type, e.g., laser, motion, etc.} detectors for use in electronic toll collection systems; In-vehicle devices in the nature of an
`encoded electronic chip cards for use in electronic toll collection; Electric sensors; Optical sensors; Touch panels; Wireless
`communication devices for {specify purpose, e.g., transmitting images taken by a camera, voice, data or image transmission, etc.};
`Wireless communication devices for voice, data or image transmission; Electric relays; Computer hardware and {specify nature, e.g.,
`downloadable} software {the wording “software” is broad enough to include “downloadable software” in Class 009 as well as
`“online non-downloadable software” in Class 042} for operating electronic driving assistance systems; Electronic control units for
`vehicles, namely, electronic controls for driving electric vehicles; Electronic control units for operating in-vehicle cameras; Integrated
`dynamics-control modules for electronic control of vehicles; Head-up displays for vehicles; electronic keys {specify type, e.g., cards} for
`vehicles; event recorders; remote control apparatus for opening and closing vehicle doors; Remote controls for operating vehicle alarms;
`Power switches; Electric switches;
`·       Class 011:  Lighting apparatus, namely, {specify type, e.g., lighting apparatus for vehicles, flat panel lighting apparatus, etc.} and
`lighting installations; Head torches; Miniature light bulbs; Electric flashlights; Air purifying apparatus and machines; Air conditioners;
`Air conditioning installations for vehicles; Taillights for vehicles; Ionisation apparatus for the treatment of air; Vehicle dynamo lamps.
`·       Class 012:  AC motors and DC motors for land vehicles, not including their parts; aircraft and their {specify type, e.g., structural} parts
`and fittings in the nature of {specify type by common commercial name in Class 012}; Electric vehicles, namely, {indicate specific
`type of vehicle}; automobiles; Two-wheeled motor vehicles, bicycles; Carts; Engines for land vehicles; Motors, electric, for land
`vehicles; Motorcycles; Autonomous emergency brake systems for vehicles; Brake systems for vehicles; Vehicle side view mirrors and
`rearview mirrors; Anti-theft devices for vehicles; Anti-theft alarms for vehicles; Driving motors for land vehicles; Speed change gears for
`land vehicles; Remotely controlled land vehicle for transport; Driverless cars; Automotive interior trim.
`·       Class 037:  Maintenance of computer hardware systems
`·       Class 040:  Technical support services, namely, providing technical advice related to the manufacture of automobiles
`·       Class 042:  Providing on-line non-downloadable software for operation and control of autonomous-driving vehicles; Computer software
`design; Computer programming; Maintenance of computer software; Computer system design; Configuration, namely, {specify type,
`e.g., design, etc.} of computer systems; Rental of computers; Cartography and mapping services featuring geophysical maps; Technical
`advice relating to operation and control of autonomous-driving vehicles, namely, {specify type by common commercial name in Class
`042}; Design, development and maintenance of computer systems {the wording “maintenance of computer systems” is broad enough to
`include Class 037 as well as Class 042 services depending on the matter making up the “systems} consisting primarily of {specify
`matter, e.g., software} and software for operation and control of autonomous-driving vehicles; Software as a service (SAAS) featuring
`software for operation and control of autonomous-driving vehicles; Cloud computing featuring software for use {specify the function
`of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is
`content- or field-specific, the field of use}; Consultancy relating to design, programming and maintenance of computer software;
`Technical advice relating to performance, operation of computers, {specify nature, e.g., design, development, etc.} automobiles and
`
` 
` 
`

`

`{specify nature, e.g., design, development, etc.} other machines that require high levels of personal knowledge, skill or experience of
`the operators to meet the required accuracy in operating them; providing temporary use of online non-downloadable software for
`operating electronic driving assistance systems
`
`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.
`
`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 limit scope,
`and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).
`
`If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to add
`International Classes 037 and 040.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
`
`Multiple Class Application Requirements
`
`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 Sections 1(b) and 44:
`
`(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 seven classes; however, applicant submitted a fee(s)
`sufficient for only five 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the
`Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
`
`Foreign Registration Certificate Requirement
`
`The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a
`foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been
`provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.   See 15 U.S.C.
`§1126(e).
`
`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, an 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.
`
`Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.   TMEP
`§1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office
`in applicant’s country of origin.   TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of
`extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the
`international registration has been extended to applicant’s country of origin.   TMEP §1016.  In addition, applicant must also provide an English
`translation if the foreign registration is not written in English.  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).
`
`If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English
`translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until
`a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).
`
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely
`on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the
`mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15
`U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as
`of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis,
`
`provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).  
`
`Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b)
`basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37
`C.F.R. §2.34(a)(3); TMEP §806.01(d).
`
`RESPONSE GUIDELINES
`
`Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark
`examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name,
`address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
`
`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.  
`
`The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a
`foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been
`provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.   See 15 U.S.C.
`§1126(e).
`
`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, an 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.
`
`Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.   TMEP
`§1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office
`in applicant’s country of origin.   TMEP §1004.01.   If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of
`extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the
`international registration has been extended to applicant’s country of origin.   TMEP §1016.  In addition, applicant must also provide an English
`translation if the foreign registration is not written in English.  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).
`
`If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English
`translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until
`a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).
`
`If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely
`on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the
`mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15
`U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as
`of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis,
`
`provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).  
`
`Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b)
`basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37
`C.F.R. §2.34(a)(3); TMEP §806.01(d).
`
`How to respond.   Click to file a response to this nonfinal Office action.       
`
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`/mvaghani/
`Mayur Vaghani
`Trademark Examining Attorney
`Law Office 130
`Phone: (571) 272-1615
`mayur.vaghani@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.
`
` 
`  
` 
` 
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation (DCPTOTrademarkMail@hoganlovells.com)
`
`U.S. Trademark Application Serial No. 88858485 - HEARTMOTIVE - 1P3518010937
`
`May 13, 2020 12:27:26 PM
`
`ecom130@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on May 13, 2020 for
`U.S. Trademark Application Serial No. 88858485
`
`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.   
`
`/mvaghani/
`Mayur Vaghani
`Trademark Examining Attorney
`Law Office 130
`Phone: (571) 272-1615
`mayur.vaghani@uspto.gov
`
`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 May 13, 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.”
`
` 
` 
` 
` 
` 
` 
` 
` 
`   
` 
` 
`   
`