To:
`
`Subject:
`
`Sent:
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`Sent As:
`
`Attachments:
`
`Panasonic Corporation (DCPTOTrademarkMail@hoganlovells.com)
`
`U.S. Trademark Application Serial No. 88976143 - HOMEX - 1P3518.10855
`
`November 26, 2019 08:02:41 PM
`
`ecom103@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No. 88976143
`
`Mark:   HOMEX
`
`Correspondence Address: 
`Julia Anne Matheson
`HOGAN LOVELLS US LLP
`555 13th Street NW
`Washington, DC 20004
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`Applicant:   Panasonic Corporation
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`    
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`Reference/Docket No. 1P3518.10855
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`Correspondence Email Address:  
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`DCPTOTrademarkMail@hoganlovells.com
`
`FINAL OFFICE ACTION
`
`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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).   A
`
`link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.   
`  
`
`Issue date:  November 26, 2019
`
`INTRODUCTION
`
`This Office action is in response to applicant’s communication filed on October 11, 2019.
`
`In a previous Office action(s) dated April 12, 2019, applicant was required to satisfy the following requirement(s):  amend the identification of
`goods and/or services and provide a copy of applicant’s foreign registration certificate.
`
`Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirement(s) in the summary of issues
`below.  See 37 C.F.R. §2.63(b); TMEP §714.04.
`
`SUMMARY OF ISSUES MADE FINAL that applicant must address:
`Identification of Goods and Services
`Translation of Foreign Certificate Required
`
`IDENTIFICATION OF GOODS AND SERVICES
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`THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODSSPECIFIED THEREIN
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`The requirement for applicant to amend the identification of goods and services is now made FINAL for the reasons set forth below.  See 37
`
`C.F.R. §§2.32(a)(6), 2.63(b); TMEP §1402.01.  
`
`Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R.
`§2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and
`to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or
`services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In
`addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.
`
`In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or
`services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care
`products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods
`
`or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id.  
`
`Further, the wording “wire-based communication machines and apparatus; namely, telephone apparatus and receivers” in the identification of
`goods is indefinite and must be clarified because the inclusion of the semicolon between “wire-based communication machines and apparatus”
`and “namely, telephone apparatus and receivers” creates two separate identifications, thus the nature of the goods is unclear.   See 37 C.F.R.
`
`§2.32(a)(6); TMEP §1402.01.  Applicant may amend the identification to delete the semicolon, as suggested below.  
`
`Similarly, the wording “satellite receiving apparatus; being satellite receivers” in the identification of goods is indefinite and must be clarified
`because the inclusion of the semicolon between “satellite receiving apparatus” and “being satellite receivers” creates two separate
`identifications, thus the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may amend the identification to
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`delete the semicolon, as suggested below.  
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`The wording “stereo components; namely, amplifiers, cables, receivers, tuners” in the identification of goods is also indefinite and must be
`clarified because the inclusion of the semicolon between “stereo components” and “namely, amplifiers, cables, receivers, tuners” creates two
`separate identifications, thus the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may amend the
`
`identification to delete the semicolon, as suggested below.  
`
`Finally, applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 42 for
`“design and development of computer hardware.”   See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be
`advised that the USPTO will remove duplicate entries from the identification prior to registration.
`
`If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the
`goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also,
`generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).
`
`   Applicant may substitute the following wording, if accurate (suggested changes in bold):  
`
`Class 9:  Rotary converters; phase shifters for communication apparatus; telephone apparatus; wire-based communication machines and
`apparatus;, namely, telephone apparatus and receivers; open-wire transmission machines and apparatus for telecommunication;
`broadcasting machines and apparatus namely, cable broadcasting machines and apparatus; radio communication machines and apparatus,
`namely, walkie talkies; radio machines and apparatus, namely, radio pagers, radio receivers and transmitters; remote control telemetering
`machines and instruments; audio frequency devices and apparatus, namely audio-frequency transformers; video frequency devices and
`apparatus, namely, video cameras, camcorders, videodisc players, videodisc recorders, digital video players, digital video recorders,
`digital video disc players, and digital video disc recorders; parts and accessories for telecommunication machines and apparatus, namely,
`electric capacitors, electric resistors, electrical transformers; computers and their peripherals; electrostatic copying machines; electronic
`desk calculators; downloadable electronic dictionaries; word processors; electron tubes; semi-conductor elements, namely, semi-
`conductor memories and memory units; electronic circuits; photographic machines and apparatus in the nature of photographic cameras
`and accessories therefor; cinematographic machines and apparatus; optical machines and apparatus, namely, optical code readers;
`spectacles; 3D spectacles; satellite receiving apparatus; being satellite receivers; downloadable electronic publications in the nature of
`ebooks in the field of math, science, medical, music, art, literature, culture and cooking; cameras; digital photo frames; dry cells;
`rechargeable batteries; electrical adapters; bathroom scales; pedometers; electric calorie consumption measuring apparatus, namely,
`wearable computers in the nature of smartwatches for tracking calorie intake; electronic measuring apparatus for exercise intensity,
`namely, wearable activity tracker; electrical terminal blocks for televisions; chargers for electric batteries; flash lamps for cameras; digital
`still cameras; apparatus for reproduction of sound; radio receivers; audio cassette players and recorders; optical disk players and
`recorders; optical disc drives and their parts; lens cleaning disk for optical disk players; hard disk media players and hard disk recorders;
`cd players; portable audio players; MP3 players; audio speakers; parts for audio speakers, namely, subwoofers; stereo tuners; audio
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`amplifiers; power amplifiers; microphones; non-slip mats specially adapted for turntables being record players; digital voice recorders;
`digital sound processors; headphones; earphones; stereo components;, namely, amplifiers, cables, receivers, tuners; audio mixers;
`magnetic head cleaners; magnetic tape cleaners; machines and apparatus for the reproduction, recordal of sound and images; television
`receivers; plasma display panels; LCD large-screen displays; LCD display panels; antennas; video tuners being television tuners; LCD
`projectors; video tape recorders; video tape players; video cameras; camcorders; video surveillance cameras; DVD video recorders; DVD
`video players; audio speakers for home theater systems; playing devices for home theater systems, namely, DVD players; remote
`controllers for machines and apparatus for the reproduction, recordal of sound and images; video encoders; head cleaning tapes for video
`recorders; head cleaning tapes for audio cassette recorders; organic electro-luminescent (EL) displays
`
`Class 42:  Consultancy relating to design, programming and maintenance of computer software; computer software design; creating and
`maintaining web sites for others; hosting the websites of others on a computer server for a global computer network; maintenance of
`computer software; monitoring of computer systems by remote access to ensure proper functioning; rental of computer software;
`consultancy in the field of design and development of hardware and software for connection to, management of, operating and using
`computer networks; software as a service (SAAS) services featuring online application software for use in database management;
`providing a web hosting platform for electronic commerce; technical support relating to the design, programming and maintenance of
`software, namely, troubleshooting of computer software problems; technical support relating to the design, programming and
`maintenance of software, namely, 24/7 monitoring of network systems and notification of related events and alerts; design, programming
`and maintenance of computer programs for electronic calculators; designing of machines, apparatus, instruments or systems composed of
`such machines, apparatus and instruments; design and development of computer hardware; design and development of computer
`hardware; testing the functionality of machines and research on machines
`
`Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or services 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 and/or services 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).
`
`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.
`
`TRANSLATION OF FOREIGN CERTIFICATE REQUIRED
`
`In response to the previous Office action, applicant submitted a copy of its foreign registration certificate.  Applicant also indicated that an
`English translation was submitted along with the registration certificate, however, there is no translation of the goods and services in the foreign
`registration certificate.  Thus, the applicant must submit an English translation of the foreign registration in full.  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 SECTION 1(b) BASIS – ADVISORY
`
`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 solely on the foreign registration under Section 44(e)
`
`as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  
`
`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).
`
`RESPONSE GUIDELINES
`
`If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final
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`requirement(s) apply will be deleted from the application by Examiner’s Amendment:   
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`Class 9:  wire-based communication machines and apparatus; namely, telephone apparatus and receivers; satellite receiving apparatus;
`being satellite receivers; stereo components; namely, amplifiers, cables, receivers, tuners
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`37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
`
`In such case, the application will proceed for the following goods and services only:  
`
`Class 9:  Rotary converters; phase shifters for communication apparatus; telephone apparatus; open-wire transmission machines and
`apparatus for telecommunication; broadcasting machines and apparatus namely, cable broadcasting machines and apparatus; radio
`communication machines and apparatus, namely, walkie talkies; radio machines and apparatus, namely, radio pagers, radio receivers and
`transmitters; remote control telemetering machines and instruments; audio frequency devices and apparatus, namely audio-frequency
`transformers; video frequency devices and apparatus, namely, video cameras, camcorders, videodisc players, videodisc recorders, digital
`video players, digital video recorders, digital video disc players, and digital video disc recorders; parts and accessories for
`telecommunication machines and apparatus, namely, electric capacitors, electric resistors, electrical transformers; computers and their
`peripherals; electrostatic copying machines; electronic desk calculators; downloadable electronic dictionaries; word processors; electron
`tubes; semi-conductor elements, namely, semi-conductor memories and memory units; electronic circuits; photographic machines and
`apparatus in the nature of photographic cameras and accessories therefor; cinematographic machines and apparatus; optical machines and
`apparatus, namely, optical code readers; spectacles; 3D spectacles; downloadable electronic publications in the nature of ebooks in the
`field of math, science, medical, music, art, literature, culture and cooking; cameras; digital photo frames; dry cells; rechargeable batteries;
`electrical adapters; bathroom scales; pedometers; electric calorie consumption measuring apparatus, namely, wearable computers in the
`nature of smartwatches for tracking calorie intake; electronic measuring apparatus for exercise intensity, namely, wearable activity
`tracker; electrical terminal blocks for televisions; chargers for electric batteries; flash lamps for cameras; digital still cameras; apparatus
`for reproduction of sound; radio receivers; audio cassette players and recorders; optical disk players and recorders; optical disc drives and
`their parts; lens cleaning disk for optical disk players; hard disk media players and hard disk recorders; cd players; portable audio players;
`MP3 players; audio speakers; parts for audio speakers, namely, subwoofers; stereo tuners; audio amplifiers; power amplifiers;
`microphones; non-slip mats specially adapted for turntables being record players; digital voice recorders; digital sound processors;
`headphones; earphones; audio mixers; magnetic head cleaners; magnetic tape cleaners; machines and apparatus for the reproduction,
`recordal of sound and images; television receivers; plasma display panels; LCD large-screen displays; LCD display panels; antennas;
`video tuners being television tuners; LCD projectors; video tape recorders; video tape players; video cameras; camcorders; video
`surveillance cameras; DVD video recorders; DVD video players; audio speakers for home theater systems; playing devices for home
`theater systems, namely, DVD players; remote controllers for machines and apparatus for the reproduction, recordal of sound and images;
`video encoders; head cleaning tapes for video recorders; head cleaning tapes for audio cassette recorders; organic electro-luminescent
`(EL) displays
`
`Class 42:  Consultancy relating to design, programming and maintenance of computer software; computer software design; creating and
`maintaining web sites for others; hosting the websites of others on a computer server for a global computer network; maintenance of
`computer software; monitoring of computer systems by remote access to ensure proper functioning; rental of computer software;
`consultancy in the field of design and development of hardware and software for connection to, management of, operating and using
`computer networks; software as a service (SAAS) services featuring online application software for use in database management;
`providing a web hosting platform for electronic commerce; technical support relating to the design, programming and maintenance of
`software, namely, troubleshooting of computer software problems; technical support relating to the design, programming and
`maintenance of software, namely, 24/7 monitoring of network systems and notification of related events and alerts; design, programming
`and maintenance of computer programs for electronic calculators; designing of machines, apparatus, instruments or systems composed of
`such machines, apparatus and instruments; design and development of computer hardware; testing the functionality of machines and
`research on machines
`
`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.   
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`How to respond.   Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and
`refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
`
`/Chioma (Bata) Oputa/
`
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`

`

`Examining Attorney
`Law Office 103
`571-272-5234
`chioma.oputa@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.
`
`  
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`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation (DCPTOTrademarkMail@hoganlovells.com)
`
`U.S. Trademark Application Serial No. 88976143 - HOMEX - 1P3518.10855
`
`November 26, 2019 08:02:43 PM
`
`ecom103@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on November 26, 2019 for
`U.S. Trademark Application Serial No. 88976143
`
`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.   
`
`/Chioma (Bata) Oputa/
`Examining Attorney
`Law Office 103
`571-272-5234
`chioma.oputa@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 November 26, 2019, 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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