`
`Approved for use through 11/30/2023. OMB 0651-0050
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`97289965
`
`LAW OFFICE 306
`
`mark
`
`ADVANCED MATERIAL PROCESSING CONNECT
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`OWNER SECTION (current)
`
`NAME
`
`MAILING ADDRESS
`
`CITY
`
`ZIP/POSTAL CODE
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`OWNER SECTION (proposed)
`
`NAME
`
`MAILING ADDRESS
`
`CITY
`
`ZIP/POSTAL CODE
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`
`LEGAL ENTITY SECTION (current)
`
`TYPE
`
`STATE/COUNTRY/REGION/JURISDICTION/U.S.
`TERRITORY OF INCORPORATION
`
`LEGAL ENTITY SECTION (proposed)
`
`TYPE
`
`STATE/COUNTRY/REGION/JURISDICTION/U.S.
`TERRITORY OF INCORPORATION
`
`PANASONIC HOLDINGS CORPORATION
`
`1006, OAZA KADOMA, KADOMA-SHI
`
`OSAKA
`
`571-8501
`
`Japan
`
`PANASONIC HOLDINGS CORPORATION
`
`1006, OAZA KADOMA, KADOMA-SHI
`
`OSAKA
`
`571-8501
`
`Japan
`
`XXXX
`
`corporation
`
`Japan
`
`corporation
`
`Japan
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`040
`
`
`
`DESCRIPTION
`
`Metal treating; Processing of plastics; Rental of metal treating machines and tools; Welding; Processing of metals and plastics by laser;
`Processing of metals by laser; Rental of welding machines; Rental of laser processing machines; Providing information relating to the
`processing of metals and plastics by laser
`
`FILING BASIS
`
`FILING BASIS
`
` FOREIGN APPLICATION NUMBER
`
`Section 1(b)
`
`Section 44(d)
`
`2022-014634
`
` FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`Japan
`
` FOREIGN FILING DATE
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`02/09/2022
`
`040
`
`Metal treating; Processing of plastics; Rental of metal treating machines and tools; Welding; Processing of metals and plastics by laser; Treatm
`ent of materials by laser beam, namely, processing of metals and plastics by laser; Processing of metals by laser; Treatment of materials by
`laser beam, namely, processing of metals by laser; Rental of welding machines; Rental of welding machines, namely, electric welding
`machines, gas-operated welding machines and laser welding machines; Rental of laser processing machines; Rental of laser processing
`machines, namely, laser welding machines and laser engraving machines; Providing information relating to the processing of metals and
`plastics by laser; Providing information relating to material treatment, namely, providing information relating to the processing of metals and
`plastics by laser
`
`FINAL DESCRIPTION
`
`Metal treating; Processing of plastics; Rental of metal treating machines and tools; Welding; Treatment of materials by laser beam, namely,
`processing of metals and plastics by laser; Treatment of materials by laser beam, namely, processing of metals by laser; Rental of welding
`machines, namely, electric welding machines, gas-operated welding machines and laser welding machines; Rental of laser processing
`machines, namely, laser welding machines and laser engraving machines; Providing information relating to material treatment, namely,
`providing information relating to the processing of metals and plastics by laser
`
` WEBPAGE URL
`
` WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`FILING BASIS
`
` FOREIGN APPLICATION NUMBER
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`Section 44(d)
`
`2022-014634
`
` FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`Japan
`
` FOREIGN FILING DATE
`
`02/09/2022
`
` INTENT TO
` PERFECT 44(d)
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`MISCELLANEOUS STATEMENT
`
`At this time, the applicant intends to rely on Section 44(e) as a basis for registration.
`If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a
`valid claim of priority may be retained.
`
`No claim is made to the exclusive right to use "advanced material processing" apart
`from the mark as shown.
`
`While Japanese Application No. 2022-014634 has matured into registration,
`Applicant needs additional time to obtain a copy of the registration certificate.
`Accordingly, Applicant respectfully requests that further action on this matter be
`suspended.
`
`CORRESPONDENCE INFORMATION
`
`NAME
`
`SANDRA EPP RYAN
`
`
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`trademark@hsml.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
`
`hmccarty@hsml.com
`
`DOCKET/REFERENCE NUMBER
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`20651.124US0
`
`/Sandra Epp Ryan/
`
`Sandra Epp Ryan
`
`Attorney of record, Minnestota bar member
`
`612.455.3800
`
`03/07/2023
`
`ROLE OF AUTHORIZED SIGNATORY
`
`Authorized U.S.-Licensed Attorney
`
`SIGNATURE METHOD
`
`Sent to third party for signature
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Wed Mar 08 12:10:09 ET 2023
`
`USPTO/ROA-XX.XXX.XXX.XX-2
`0230308121009863256-97289
`965-8503cecb58bbd15ed3588
`c3a9f2932a42baa713acd7d3f
`8e4529e6b424ae2a685-N/A-N
`/A-20230306142301564780
`
`PTO- 1957
`
`Approved for use through 11/30/2023. OMB 0651-0050
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 97289965 ADVANCED MATERIAL PROCESSING CONNECT(Standard Characters, see https://tmng-
`al.uspto.gov/resting2/api/img/97289965/large) has been amended as follows:
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`
`Applicant proposes to amend the following:
`
`Current:
`Class 040 for Metal treating; Processing of plastics; Rental of metal treating machines and tools; Welding; Processing of metals and plastics by
`laser; Processing of metals by laser; Rental of welding machines; Rental of laser processing machines; Providing information relating to the
`processing of metals and plastics by laser
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use
`the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use
`the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark,
`collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled,
`to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control
`over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant will not engage in the
`production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification
`program or of the goods/services that meet the certification standards of the applicant.
`
`Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date,
`the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and
`
`
`
`asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark
`application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use
`of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a
`claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide
`intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the
`identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except
`to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant,
`and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number
`2022-014634 filed 02/09/2022]. 15 U.S.C.Section 1126(d), as amended.
`
`Proposed:
`
`Tracked Text Description: Metal treating; Processing of plastics; Rental of metal treating machines and tools; Welding; Processing of metals
`and plastics by laser; Treatment of materials by laser beam, namely, processing of metals and plastics by laser; Processing of metals by laser;
`Treatment of materials by laser beam, namely, processing of metals by laser; Rental of welding machines; Rental of welding machines, namely,
`electric welding machines, gas-operated welding machines and laser welding machines; Rental of laser processing machines; Rental of laser
`processing machines, namely, laser welding machines and laser engraving machines; Providing information relating to the processing of metals
`and plastics by laser; Providing information relating to material treatment, namely, providing information relating to the processing of metals and
`plastics by laser
`
`Class 040 for Metal treating; Processing of plastics; Rental of metal treating machines and tools; Welding; Treatment of materials by laser beam,
`namely, processing of metals and plastics by laser; Treatment of materials by laser beam, namely, processing of metals by laser; Rental of
`welding machines, namely, electric welding machines, gas-operated welding machines and laser welding machines; Rental of laser processing
`machines, namely, laser welding machines and laser engraving machines; Providing information relating to material treatment, namely, providing
`information relating to the processing of metals and plastics by laser
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use
`the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use
`the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark,
`collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled,
`to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control
`over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant will not engage in the
`production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification
`program or of the goods/services that meet the certification standards of the applicant.
`
`Webpage URL: None Provided
`Webpage Date of Access: None Provided
`
`Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date,
`the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and
`asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark
`application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use
`of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a
`claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with
`the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied,
`except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the
`applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number
`2022-014634 filed 02/09/2022]. 15 U.S.C.Section 1126(d), as amended.
`INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant
`does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.
`
`OWNER AND/OR ENTITY INFORMATION
`Applicant proposes to amend the following:
`Current: PANASONIC HOLDINGS CORPORATION, a corporation of Japan, having an address of
` 1006, OAZA KADOMA, KADOMA-SHI
` OSAKA, 571-8501
` Japan
`
`Proposed:PANASONIC HOLDINGS CORPORATION, a corporation of Japan, having an address of
`
`
`
` 1006, OAZA KADOMA, KADOMA-SHI
` OSAKA, 571-8501
` Japan
` Email Address: XXXX
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use "advanced material processing" apart from the mark as shown.
`
`Miscellaneous Statement
`While Japanese Application No. 2022-014634 has matured into registration, Applicant needs additional time to obtain a copy of the registration
`certificate. Accordingly, Applicant respectfully requests that further action on this matter be suspended.
`
`Correspondence Information
` SANDRA EPP RYAN
` PRIMARY EMAIL FOR CORRESPONDENCE: trademark@hsml.com
` SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): hmccarty@hsml.com
`
`The docket/reference number is 20651.124US0.
`
`Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the
`owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic
`Application System (TEAS).
`
`SIGNATURE(S)
`Response Signature
`Signature: /Sandra Epp Ryan/ Date: 03/07/2023
`Signatory's Name: Sandra Epp Ryan
`Signatory's Position: Attorney of record, Minnestota bar member
`
`Signatory's Phone Number: 612.455.3800 Signature method: Sent to third party for signature
`
`The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a
`U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or
`an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated
`with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a
`signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder
`has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of
`attorney appointing him/her as an associate attorney in this matter.
`
`Mailing Address: SANDRA EPP RYAN
` HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
`
` 45 SOUTH SEVENTH STREET, SUITE 1700
`
` MINNEAPOLIS, Minnesota 55402
`Mailing Address: Sandra Epp Ryan
` HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
` 45 SOUTH SEVENTH STREET, SUITE 1700
` MINNEAPOLIS, Minnesota 55402
`
`Serial Number: 97289965
`Internet Transmission Date: Wed Mar 08 12:10:09 ET 2023
`TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2023030812100986
`3256-97289965-8503cecb58bbd15ed3588c3a9f
`2932a42baa713acd7d3f8e4529e6b424ae2a685-
`N/A-N/A-20230306142301564780
`
`
`
`