UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/477685
APPLICANT: William J. Benman
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CORRESPONDENT ADDRESS: WILLIAM J. BENMAN 2049 CENTURY PARK E STE 2740 LOS ANGELES CA 90067-3239
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov
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MARK: THE NEXOS
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CORRESPONDENT’S REFERENCE/DOCKET NO: #The Nexos
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/477685
This letter responds to the applicant’s communication filed on December 17, 2003.
In the response, the applicant amended the recitation of services. The recitation of services remains indefinite AND exceeds the scope of the original recitation of services, and therefore, must be amended.
For the reasons stated below, the requirements to amend the recitation of services is now made FINAL
The proposed amendment to the identification cannot be accepted because it refers to services that are not within the scope of the identification that was set forth in the application at the time of filing. While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07. Therefore, the original recitation is restored and must be amended.
The wording “WEB SERVICES” in the recitation of services is unacceptable as indefinite. The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature. TMEP §1402.11.
The wording “VIDEO CONFERENCING SERVICES” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “Class 38 - providing facilities and equipment for video conferencing” if accurate. TMEP §1402.11.
In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases. The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....” TMEP §§1402.03(a) and 1402.11.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
The examining attorney herein makes FINAL his refusal with respect to this issue.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and
Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
/WILLIAM H. DAWE III/
Trademark Attorney
Law Office 108
(703) 308-9108 ext. 294
(703) 746-8108 (Fax)
ecom108@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.