Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            79259883

DATE:                                06/10/2020

NAME:                               kfoss

NOTE:         

From: Sarah G. Voeller <svoeller@hsml.com>
Sent: Wednesday, June 10, 2020 11:49 AM
To: Foss, Katherine <Katherine.Foss@USPTO.GOV>
Cc: Heidi McCarty <hmccarty@hsml.com>; Yu Guan <yguan@hsml.com>
Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI

 

Dear Ms. Foss,

 

The client accepts the stand alone “film” to be amended to “plastic films for wrapping and packaging.”

 

Class 16: “Paper and cardboard; printed matter, namely, instruction manual in the field of electronics and electrical engineering; bookbinding material; adhesives for stationery or household purposes; paintbrushes; printed instructional and teaching materials in the field of electronics and electrical engineering; plastic sheets, films and bags for wrapping and packaging; printers' type, printing blocks; office type composing machines; addressing machines; pencil sharpening machines, electric or non-electric; sealing machines for offices; typewriters, electric or non-electric; wet erase writing boards; chalk boards being blackboards; ink for writing instruments; inking ribbons; thermal paper; electric paper staplers for offices; paper staplers for offices; staples for offices; stickers being stationery; writing instruments; paper sheets being stationery; printing papers; paper coffee filters; paper shredders for office use; books in the field of electronics and electrical engineering; calendars; catalogues in the field of electronics and electrical engineering; geographical maps; newsletters in the field of electronics and electrical engineering; newspapers; pamphlets in the field of electronics and electrical engineering; pictures; packing cushioning, stuffing materials of paper or cardboard; drawing instruments; ink ribbons; plastic films for wrapping and packaging; franking machines for office use; replacement and structural parts and fittings for all the aforesaid goods”

 

Please go ahead and make the examiner’s amendment.

 

Have a good day!

 

Sarah

 

 

 

From: Foss, Katherine [mailto:Katherine.Foss@USPTO.GOV]
Sent: Monday, June 08, 2020 5:34 PM
To: Sarah G. Voeller
Cc: Heidi McCarty; Yu Guan
Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI

 

Dear Ms. Voeller,

 

I am putting together the Examiner’s Amendment, and I wanted to clarify one item prior to issuing any changes.

 

When I checked my notes, I realized that the chart mistakenly indicates that the issue with the term “films” in Class 16 appeared in the phrase below. The issue was with the term “film” appearing as a standalone item in this class. The portion shown as problematic in the chart is acceptable as-is. The term “film” appears twice in Class 16.

 

Plastic sheets, films and bags for wrapping and packaging

Please amend the objected item to read as "sheets, films and bags made from plastic for wrapping and packaging".

 

Please confirm whether you would prefer this to read as “plastic films for wrapping and packaging”. This wording would be consistent with what was provided by your client, but it would not alter the phrase “plastic sheets, films and bags for wrapping and packaging” as amendment is not required in that phrase.

 

Class 16 as a whole would read as follows (additions in bold):

 

Class 16: “Paper and cardboard; printed matter, namely, instruction manual in the field of electronics and electrical engineering; bookbinding material; adhesives for stationery or household purposes; paintbrushes; printed instructional and teaching materials in the field of electronics and electrical engineering; plastic sheets, films and bags for wrapping and packaging; printers' type, printing blocks; office type composing machines; addressing machines; pencil sharpening machines, electric or non-electric; sealing machines for offices; typewriters, electric or non-electric; wet erase writing boards; chalk boards being blackboards; ink for writing instruments; inking ribbons; thermal paper; electric paper staplers for offices; paper staplers for offices; staples for offices; stickers being stationery; writing instruments; paper sheets being stationery; printing papers; paper coffee filters; paper shredders for office use; books in the field of electronics and electrical engineering; calendars; catalogues in the field of electronics and electrical engineering; geographical maps; newsletters in the field of electronics and electrical engineering; newspapers; pamphlets in the field of electronics and electrical engineering; pictures; packing cushioning, stuffing materials of paper or cardboard; drawing instruments; ink ribbons; plastic films for wrapping and packaging; franking machines for office use; replacement and structural parts and fittings for all the aforesaid goods”

 

Alternatively, you can delete “film” from the ID or provide a new suggestion.

 

Please advise at your earliest convenience.

 

Kind regards,

Katie

 

Katie Foss

Trademark Examining Attorney | Law Office 125

571-272-4067 | katherine.foss@uspto.gov

 

From: Sarah G. Voeller
Sent: Monday, June 8, 2020 4:02 PM
To: Foss, Katherine
Cc: Heidi McCarty ; Yu Guan
Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI

 

Thank you

 

From: Foss, Katherine [mailto:Katherine.Foss@USPTO.GOV]
Sent: Monday, June 08, 2020 2:48 PM
To: Sarah G. Voeller
Cc: Heidi McCarty; Yu Guan
Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI

 

Dear Ms. Voeller,

 

I have had a chance to review the proposed changes, and all appear acceptable. Given how specific some of the required changes were from our ID group, I was a initially a bit hesitant about the wording “managing” in the phrase "Recorded and downloadable computer operating and managing software for use with medical and beauty care apparatus" in Class 9, however my senior attorney and I discussed it, and we both agree this wording is acceptable.

 

I will make the changes and issue an Examiner’s Amendment in due course. Thank you very much for your time on this.

 

Kind regards,

Katie

 

Katie Foss

Trademark Examining Attorney | Law Office 125

571-272-4067 | katherine.foss@uspto.gov

 

From: Foss, Katherine <Katherine.Foss@USPTO.GOV>
Sent: Monday, June 8, 2020 11:09 AM
To: Sarah G. Voeller <svoeller@hsml.com>
Cc: Heidi McCarty <hmccarty@hsml.com>; Yu Guan <yguan@hsml.com>
Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI

 

Dear Ms. Voeller,

 

Thank you very much for your email. I will review today and get back to you as soon as I am able.

 

Kind regards,

Katie

 

Katie Foss

Trademark Examining Attorney | Law Office 125

571-272-4067 | katherine.foss@uspto.gov

 

From: Sarah G. Voeller <svoeller@hsml.com>
Sent: Monday, June 8, 2020 10:21 AM
To: Foss, Katherine <Katherine.Foss@USPTO.GOV>
Cc: Heidi McCarty <hmccarty@hsml.com>; Yu Guan <yguan@hsml.com>
Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI

 

Dear Katie,

 

Please see the attached spreadsheet regarding the proposed amendments. Hopefully you will be able to make an examiner’s amendment.

 

Kind regards,

Sarah Voeller

 

From: Foss, Katherine [mailto:Katherine.Foss@USPTO.GOV]
Sent: Thursday, June 04, 2020 3:38 PM
To: Sarah G. Voeller
Cc: Heidi McCarty; Yu Guan
Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI

 

Dear Ms. Voeller,

Thank you very much for your email. I will hold off on issuing a formal action for as long as I am able. I should be able to wait a couple of weeks. In the event my hand is forced and I cannot wait any longer, I will email you in advance.

In the meantime, should you have any questions, please don’t hesitate to contact me. Again, I am sorry for the inconvenience.

Kind regards,

Katie

Katie Foss

Trademark Examining Attorney | Law Office 125

571-272-4067 | katherine.foss@uspto.gov

From: Sarah G. Voeller
Sent: Thursday, June 4, 2020 4:33 PM
To: Foss, Katherine
Cc: Heidi McCarty ; Yu Guan
Subject: RE: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI

Dear Katherine,

It had been very difficult to obtain our client's confirmation of the proposed amendments during this difficult time. We do not expect a reply from them for some time. If you could wait a little longer, it would be appreciated.

Kind regards,

Sarah Voeller

From: Foss, Katherine [mailto:Katherine.Foss@USPTO.GOV]
Sent: Thursday, May 28, 2020 12:41 PM
To: Trademark
Cc: Heidi McCarty
Subject: USPTO Correspondence 79259883 / PANASONIC; Your Ref. 8279.2007USI

WARNING:This email originated outside of HSML.
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Dear Ms. Voeller,

I hope you are well. I recently approved this application for publication, however, upon further review our ID class group determined that certain wording remains unclear. Despite my best efforts to capture every issue in this lengthy 38 class identification, additional changes must be made prior to publication. I sincerely apologize for the inconvenience.

My hope is that we can resolve these small issues informally via Examiner’s Amendment, and get this application in position for publication as soon as possible. I have been assured that the full application has been reviewed, and that these issues are all that remain to be corrected.

Below are details regarding each individual issue, as well as suggested amendments. Some suggestions show only the relevant goods as the entire class would make the email exceedingly long. I am happy to discuss any of these suggestions and amend suggestions based on your feedback. Additions are shown in bold, and deletions in strikethrough.

Class 4:

In Class 4, “dust… wetting… compositions” is indefinite. Please clarify the nature of these goods. “Dust binding compositions” and “dust absorbing compositions” are acceptable in Class 4. If the “wetting” is actually a part of the “binding” perhaps this wording is extraneous and may be deleted. If not, I am happy to discuss.

In addition, “… and illuminants in the nature of lighting” is indefinite and could include candles in Class 4 or electrical lighting fixtures in Class 11. Please clarify the nature of these goods. Because this application was filed under Trademark Act 66§(a), the goods may only be amended to identify goods in the class in which they were originally filed. Please amend the goods accordingly.

Class 4: “Industrial oils and greases; industrial lubricants; dust absorbing, wetting and binding compositions; fuels, namely, gasoline and illuminants in the nature of lighting fuels, namely, gasoline and illuminants in the nature of lighting, namely, candles; candles and wicks for lighting; industrial oil; lubricating oil”

Class 9:

“Recorded and downloadable computer software for use with medical and beauty care apparatus” appears in Class 9 and is indefinite. The field of use is indicated but not the function. Software IDs must specify the software function. See TMEP 1402.03(d). Please specify the software function. See 009-5430 009 Recorded software for {specify the function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field- specific, the content or field of use}.

“Downloadable software featuring electronic maps” appears in Class 9 and is indefinite. The software function must be specified under U.S. policy requiring specific IDs. The software has not been identified with sufficient specificity to enable third parties to make 2(d) determinations. Does the software create maps, display maps, etc.? TMEP §1402.03(d). Applicant must clarify the function of the software.

“Computer hardware and recorded and downloadable software for internet of things (IoT) sold as a unit” appears in Class 9. The software function must be specified under U.S. policy requiring specific IDs and the current guidance in the ID Manual. The software has not been identified with sufficient specificity to enable third parties to make 2(d) determinations. TMEP §1402.03(d). Applicant must clarify. See, e.g., 009-5181 009 Downloadable software for connecting, operating, and managing networked {indicate devices, e.g., cars, kitchen appliances, HVAC systems, etc.} in the internet of things (IoT). The software may also be computer software designed to operate the hardware.

Class 9 (relevant goods shown only, rest of class remains unchanged): “Recorded and downloadable computer operating software for use with medical and beauty care apparatus; Downloadable software featuring display of electronic maps; Computer hardware and recorded and downloadable computer operating software for internet of things (IoT) sold as a unit”

Class 11:

In Class 11, please clarify the nature of the goods identified as “flashlights torches” and please amend “heat water heaters” to “hot water heaters,” if accurate.

Class 11 (relevant goods shown only, rest of class remains unchanged): “flashlights being torches; heat hot water heaters”

Class 16:

In Class 16, “film” is indefinite and overbroad and must be clarified. “Film” potentially identifies goods in multiple classes, for example, unexposed camera film in Class 1 (see Term ID 001-93), plastic films for wrapping and packaging in Class 16 (see Term ID 016-2416), and plastic film for packing, cushioning, or stuffing purposes in Class 17 (see Term ID 017-737), etc. Please clarify the nature of the film in Class 16 only, the class assigned by the IB. See TMEP §1402.01(c).

Class 16 (relevant goods shown only, rest of class remains unchanged): “Plastic films for wrapping and packaging”

Class 35:

In Class 35, “retail or wholesale services for nursing care products” is indefinite. Specifically, applicant must specify the format of wholesale and retail services, e.g., "wholesale distributorships featuring nursing care products” or "retail store services featuring nursing care products." Without such indication, the ID as written includes a wide variety of services related to retailing, such as accounting, product supply, advertising, etc. See TMEP §§1402.01, 1402.03.

Additionally, for all other instances where applicant identifies its services as “retail or wholesale store services”, Applicant should elect either “retail” or “wholesale” or indicate that it offers both “retail and wholesale store services.” As currently written it is indefinite as to whether applicant is offering one service or the other.

Class 35 (relevant services shown only, rest of class remains unchanged): “retail store or and wholesale services for nursing care products”

Class 41:

In Class 41, “production and distribution of educational and instructional materials” is indefinite and overbroad and must be clarified. The form of material must be further specified in Class 41 only, for example, as videos, films, or movies. Without identifying the material further, the ID is broad enough to include distribution of hard goods, such as video tapes, which may refer to retailing activities in Class 35 or transport and delivery services in Class 41. Please see, e.g., Term ID 041-1321, and the notes contained therein. For example, the ID may be clarified as “production and distribution of educational and instructional materials in the nature of movies and films,” which would be definite and classified in Class 41.

Next, “providing digital images or movies” is indefinite and overbroad and must be clarified. First, the use of “or” makes it unclear whether applicant is providing both images and movies or only one of the two. “Or” must be replaced with “and” or the ID must be rewritten with “or” deleted and the services specified in a definite manner. See TMEP §1402.03(a). In addition, “providing digital images or movies” potentially identifies downloadable digital images and movies in Class 9 (see Term IDs 009-4234 and 009-4787), retail store services featuring downloadable images and movies in Class 35 (see Term ID 035-1089), or the providing of online, non-downloadable digital images and movies in Class 41 (see Term IDs 041-1711 and 041-1754).

In addition, “providing publishing electronic publications, not downloadable” is ambiguously worded. Does this mean “publishing OF electronic publications?” Please clarify the services.

Class 41 (relevant services shown only, rest of class remains unchanged): “production and distribution of educational and instructional materials in the nature of movies and films; providing online, non-downloadable digital images or and movies; providing publishing of electronic publications, not downloadable”

Again, my apologies for the inconvenience. I am confident we can get this resolved quickly. I would also be happy to provide a full, revised listing of all classes as they would be upon publication prior to issuing any Examiner’s Amendment, if you like.

I am out of the office much of today and tomorrow, but I will be in the office all of next week. I am happy to discuss on the phone as well.

Kind regards,

Katie

Katie Foss

Trademark Examining Attorney | Law Office 125

571-272-4067 | katherine.foss@uspto.gov

 

Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 -.05