To:
`Subject:
`Sent:
`Sent As:
`
`Sandra Epp Ryan(trademark@hsml.com)
`U.S. Trademark Application Serial No. 97237679 - X-AREA - 20651.128US0
`September 12, 2022 03:14:57 PM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`
`
`U.S. Application Serial No.  97237679
`
`Mark:   X-AREA
`
`Correspondence Address:  
`Sandra Epp Ryan
`HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
`45 SOUTH SEVENTH STREET, SUITE 2700
`MINNEAPOLIS MN 55402 UNITED STATES
`
`Applicant:   Panasonic Corporation
`
`Reference/Docket No.  20651.128US0
`
`Correspondence Email Address:   trademark@hsml.com
`
`
`
`
`
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`NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office 
`action.  
`
`Issue date:   September 12, 2022
`
`
`Introduction
`
`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.
`
`Summary of Issues
`
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`•
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`Search Results - No Conflicting Marks Found
`Identification of Goods and Services – Amendment Required
`Multiple Class Application Requirements for a Sections 1(b) and 44 Application
`Copy of Foreign Registration Required
`
`
`Search Results - No Conflicting Marks Found
`
`The trademark examining attorney has searched the USPTO database of registered and pending marks
`and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15
`U.S.C. §1052(d); TMEP §704.02.
`
`Identification of Goods and Services – Amendment Required
`
`The wording “Conveying machines” in the identification of goods is indefinite and must be clarified
`because it is not clear if this wording identifies conveyors being machines or machines with the
`function of conveying. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
`
`The wording "Self-propelled electric land vehicles for carrying goods and foods" and "Mobile vending
`machines, in particular, self-propelled electric vehicles which function as vending machines" is definite
`but misclassified in International Class 07.  These goods should be classified in International Class 12. 
`
`The wording "Online ordering services in the field of transportation and delivery, namely, providing
`temporary use of non-downloadable software for on-line ordering and delivery of food and goods" is
`definite but misclassified in International Class 35.  These services should be classified in International
`Class 42. 
`
`Applicant must clarify the wording “Consulting services in the field of transportation logistics and
`transportation and delivery of goods for others” in the identification of goods and/or services in
`International Class(es) 35 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP
`§§1402.01, 1402.03. This wording is indefinite because it does not make clear what type of consulting
`applicant provides. Further, this wording could identify goods and/or services in more than one
`international class. For example, "Business management consulting services in the field of
`transportation logistics and transportation and delivery of goods for others" are in International Class 35
`and "Transportation consulting, namely, consulting services in the field of transportation logistics and
`transportation and delivery of goods for others" are in International Class 39.
`
`The wording “Rental of advertising apparatus, namely, electronic advertising displays on self-propelled
`electric vehicles” in the identification of services is indefinite and must be clarified because it does not
`make clear that the advertising services are in the nature of renting advertising space on an advertising
`apparatus. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
`
`The wording "Rental of mobile vending machines, in particular, self-propelled electric vehicles which
`function as vending machines" is definite but misclassified in International Class 35.  These services
`should be classified in International Class 39. 
`
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`

`

`Applicant must clarify the wording “advisory services relating to delivery logistics and the delivery of
`goods and foods” in the identification of goods and/or services in International Class(es) 39 because it
`is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is
`indefinite because it does not make clear what type of consulting services applicant provides. Further,
`this wording could identify goods and/or services in more than one international class. For example,
`"Business advisory services, namely, advisory services relating to delivery logistics and the delivery of
`goods and foods" are in International Class 35 and "advisory services relating to the transportation of
`goods, namely, delivery logistics and the delivery of goods and foods" are in International Class 39.
`
`The identification for "Providing computer programs in the field of transportation and delivery"  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 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), 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 identification for "Software as a service (SaaS) and platform as a service (PaaS) in the field of
`transportation and delivery" in International Class 42 is indefinite and must be clarified to specify the
`purpose or function of the software and its content or field of use, if content- or field- specific. See 37
`C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). In this case, the current identification only
`specifies the field of use and does not 37specify the purpose or function of the software. 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).
`Note that the suggested amended language below separates these services into two entries for clarity. 
`
`The wording “Security guard services, namely, security surveillance using self-propelled electric
`vehicles” in the identification of services is indefinite and must be clarified because this wording does
`not make clear that applicant is providing security guard services for others. See 37 C.F.R. §2.32(a)(6);
`TMEP §1402.01. 
`
`Applicant may substitute the following wording, if accurate.  Suggested amendments are in bold and
`instructions for applicant are in bold italics.  If any of the examining attorney's suggestions are not
`accurate, applicant is still required to amend the unacceptable wording to identify definite and properly
`classified goods and services.
`
`
`International Class 07: Conveying machines, namely, conveyors being machines
`
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`•
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`•
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`International Class 09: Remote controls for controlling the movement of transportation and
`delivery vehicles; Smartphones; Downloadable computer
`software
`for coordinating
`transportation and delivery services, namely, software for the automated scheduling and dispatch
`of vehicles; Downloadable computer software for on-line ordering of goods; Downloadable
`computer software for the on-line tracking of deliveries; Downloadable computer software for
`
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`•
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`•
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`•
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`•
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`the on-line monitoring of delivery services; Downloadable computer software for dispatching
`delivery vehicles and tracking the location of delivery vehicles; Downloadable application
`software for computers or mobile devices for enabling promotions and advertising for others in
`the course of delivery of goods or services;  Downloadable computer programs for  {specify
`function or purpose of the software, e.g., for use in data processing, for use in database
`management} in the field of transportation and delivery
`
`International Class 12: Self-propelled electric land vehicles for carrying goods and
`foods; Mobile vending machines, in particular, self-propelled electric vehicles which
`function as vending machines
`
`International Class 35:  Business management consulting services in the field of transportation
`logistics and transportation and delivery of goods for others; Advertising services, namely,
`presentation of advertising on self-propelled electric vehicles; Rental of advertising space
`being  apparatus, namely,
`electronic
`advertising displays on
`self-propelled
`electric
`vehicles;  Business advisory services, namely, advisory services relating to delivery logistics
`and the delivery of goods and foods
`
`International Class 39:  Transportation consulting, namely, consulting services in the field of
`transportation logistics and transportation and delivery of goods for others; Transport
`brokerage; rental of self-propelled electric vehicles for transporting or delivering goods and food;
`Rental of selfpropelled electric vehicles for security guard services; Transportation and storage
`logistics and management services, namely, arranging for the transportation and storage of the
`goods of others; advisory services relating to the transportation of goods, namely, delivery
`logistics and the delivery of goods and foods; collection, transport and delivery of goods and
`foods
`
`International Class 42:  Providing on-line non-downloadable  computer programs for  {specify
`function or purpose of the software, e.g., for use in data processing, for use in database
`management}  in the field of transportation and delivery; Computer software design, computer
`programming, and maintenance of computer software, all in the field of transportation and
`delivery; Software as a service (SAAS) services featuring software for {specify the function of
`the programs, e.g., for use in data processing, for use in database management} in the field of
`transportation and delivery;  Platform as a service (PAAS) featuring computer software
`platforms for {specify the function of the programs, e.g., for use in data processing, for use in
`database management} in the field of transportation and delivery; Online ordering services in the
`field of transportation and delivery, namely, providing temporary use of non-downloadable
`software for on-line ordering and delivery of food and goods
`
`•
`
`International Class 45: Security guard services, namely, providing security surveillance of
`premises for others using self-propelled electric vehicles
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`
`
`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).
`
`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 for a Sections 1(b) and 44 Application
`
`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:
`
`
`List the goods and/or services by their international class number in
`(1)       
`consecutive numerical order, starting with the lowest numbered class.
`
`
`
`Submit a filing fee for each international class not covered by the fee(s) already
`(2)       
`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 six 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.
`
`Copy of Foreign Registration Required
`
`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. For this application to proceed, applicant must explicitly address each refusal
`and/or requirement in this Office action. For a refusal, applicant may provide written arguments and
`evidence against the refusal, and may have other response options if specified above. For a
`requirement, applicant should set forth the changes or statements. Please see “Responding to Office
`Actions” and the informational video “Response to Office Action” for more information and tips on
`responding.
`
`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.
`
`

`

`
`
`
`/Rose Hughes/
`Rose Hughes
`Trademark Examining Attorney
`Law Office 306
`(571) 270-5194
`rose.hughes@uspto.gov
`
`
`
`
`RESPONSE GUIDANCE
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`Missing the response deadline to this letter will cause the application to abandon.  The
`response must be received by the USPTO before midnight Eastern Time of the last day of the
`response period.  TEAS 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.
`
`

`

`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on September 12, 2022 for
`U.S. Trademark Application Serial No.  97237679
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You must respond to this Office action in order to avoid your application
`abandoning.  Follow the steps below.
`
`(1)   Read the Office action. This email is NOT the Office action.
`
`(2)  Respond to the Office action by the deadline using the Trademark Electronic Application
`System (TEAS). Your response must be received by the USPTO on or before 11:59 p.m.
`Eastern Time of the last day of the response period. Otherwise, your application will be
`abandoned. See the Office action itself regarding how to respond.
`
`(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the
`application process, the status of your application, and whether there are outstanding deadlines
`to the Trademark Assistance Center (TAC).
`
`After reading the Office action, address any question(s) regarding the specific content to the
`USPTO examining attorney identified in the Office action.
`
`GENERAL GUIDANCE
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`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 to ensure you receive important USPTO
`notices about your application.
`
`Beware of trademark-related scams . Protect yourself from people and companies that
`may try to take financial advantage of you. Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you. We will never request your credit card number or social security
`number over the phone. And all official USPTO correspondence will only be emailed
`from the domain “@uspto.gov.” Verify the correspondence originated from us by using
`your Serial Number in our database, TSDR, to confirm that it appears under the
`“Documents” tab, or contact the Trademark Assistance Center. 
`
`

`

`•
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`Hiring a U.S.-licensed attorney . If you do not have an attorney and are not required to
`have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney
`specializing in trademark law to help guide you through the registration process. The
`USPTO examining attorney is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.
`
` 
`