Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/549717

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Recitation of Services

The recitation of services is unacceptable as indefinite.  The wording “hosting services, software solutions, integration software, and providing technical information and advice on the use, installation and servicing of said software” in the identification of services needs clarification because the nature of the services is unclear.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.

 

The applicant may adopt the following recitation, if accurate:  Computer services primarily for the banking and financial industries, namely, hosting the web sites of others on a computer server for a global computer network, computer software design for others; integration of computer systems and networks; and computer software consultation regarding use, installation and maintenance. TMEP §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. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Disclaimer

The applicant must insert a disclaimer of  BUSINESS SERVICES  in the application.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.09(a)(i). The term immediately names the nature of the services.

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use BUSINESS SERVICES apart from the mark as shown.

 

Significance of Wording

Applicant must specify whether the wording “KINESYS” has any significance in the computer trade or industry or as applied to the services described in the application.  37 C.F.R. §2.61(b).

 

No Conflicting Marks

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 78/151548.  37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant’s filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Alice Benmaman/

Trademark Attorney

Law Office 116

(703) 306-7911

FX: (703) 746-8116

RESPOND AT http://www.gov.uspto.report/teas/index

 

 

 

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 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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.