Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86180679 SYNCHRONY(Standard Characters, see http://uspto.report/TM/86180679/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Attached please find our response to Office Action. has been attached.
Original PDF file:
evi_3888236210-20140919161321587499_._SYNCHRONY_86180679_Response_to_Office_Action.pdf
Converted PDF file(s) ( 10 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Non-magnetic private label credit cards and general purpose credit cards
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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.

Proposed:
Tracked Text Description: Non-magnetic private label credit cards and general purpose credit cards; Non-magnetically encoded private label credit cards and general purpose credit cardsClass 016 for Non-magnetically encoded private label credit cards and general purpose credit cards
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Financial services, namely, credit card services, including private label credit cards and dual credit cards that serve as both private label credit cards and general purpose credit cards; Electronic credit transaction services; Point of sale and point of transaction services; Facilitating credit services through electronic means and mobile devices; Credit card and multi-tender loyalty programs; Promotional financing for purchases including through use of private label, dual and general purpose credit cards and installment loans; Line of credit loans; Banking services, including retail and consumer deposit account services, certificates of deposit, money market accounts, direct and mobile banking services, savings accounts and brokered deposits, IRAs, small business deposit accounts, checking, overdraft protection, debit and ATM cards and affinity offers; Providing financial information, marketing and data analytics services, including, without limitation, credit card and marketing data and programs, consumer research and reports; Financing for elective healthcare procedures or services, such as dental, veterinary, cosmetic, vision and audiology procedures or services; providing merchant acquiring bank services for credit card transactions; servicing activities in connection with all of the foregoing
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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.

Proposed:
Tracked Text Description: Financial services, namely, credit card services, including private label credit cards and dual credit cards that serve as both private label credit cards and general purpose credit cards; Electronic credit transaction services; Electronic credit card transaction services; Point of sale and point of transaction services; Point of sale and point of transaction services, namely, credit application processing, payment transaction and account authorization services; Facilitating credit services through electronic means and mobile devices; Facilitating credit services through electronic means and mobile devices, namely, processing of credit card applications, authorizations, payments and account management services; Credit card and multi-tender loyalty programs; Credit card and multi-tender loyalty programs, namely, programs that allow businesses to offer payments and/or rewards to customers; Promotional financing for purchases including through use of private label, dual and general purpose credit cards and installment loans; Promotional financing for purchases including through the use of private label, dual and general purpose credit cards and installment loans; Line of credit loans; Banking services, including retail and consumer deposit account services, certificates of deposit, money market accounts, direct and mobile banking services, savings accounts and brokered deposits, IRAs, small business deposit accounts, checking, overdraft protection, debit and ATM cards and affinity offers; Banking services, including retail and consumer deposit account services, certificates of deposit, money market accounts, direct and mobile banking services, savings accounts and brokered deposits, IRAs, small business deposit accounts, checking, overdraft protection, debit, credit and ATM cards and offers of preferred pricing to certain defined groups; Providing financial information, marketing and data analytics services, including, without limitation, credit card and marketing data and programs, consumer research and reports; Providing financial information, marketing and data analytics services regarding credit card and merchant customer performance, including, without limitation, credit card and marketing data and programs, consumer research and reports; Financing for elective healthcare procedures or services, such as dental, veterinary, cosmetic, vision and audiology procedures or services; providing merchant acquiring bank services for credit card transactions; Providing services for processing credit card transactions for merchants; servicing activities in connection with all of the foregoing; Servicing activities in connection with all of the foregoing, including but not limited to customer service, billing, collections and transaction settlementClass 036 for Financial services, namely, credit card services, including private label credit cards and dual credit cards that serve as both private label credit cards and general purpose credit cards; Electronic credit card transaction services; Point of sale and point of transaction services, namely, credit application processing, payment transaction and account authorization services; Facilitating credit services through electronic means and mobile devices, namely, processing of credit card applications, authorizations, payments and account management services; Credit card and multi-tender loyalty programs, namely, programs that allow businesses to offer payments and/or rewards to customers; Promotional financing for purchases including through the use of private label, dual and general purpose credit cards and installment loans; Line of credit loans; Banking services, including retail and consumer deposit account services, certificates of deposit, money market accounts, direct and mobile banking services, savings accounts and brokered deposits, IRAs, small business deposit accounts, checking, overdraft protection, debit, credit and ATM cards and offers of preferred pricing to certain defined groups; Providing financial information, marketing and data analytics services regarding credit card and merchant customer performance, including, without limitation, credit card and marketing data and programs, consumer research and reports; Financing for elective healthcare procedures or services, such as dental, veterinary, cosmetic, vision and audiology procedures or services; Providing services for processing credit card transactions for merchants; Servicing activities in connection with all of the foregoing, including but not limited to customer service, billing, collections and transaction settlement
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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.

SIGNATURE(S)
Response Signature
Signature: /Randi W. Singer/     Date: 09/19/2014
Signatory's Name: Randi W. Singer
Signatory's Position: Attorney of Record, New York state bar member

Signatory's Phone Number: 2123108152

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86180679
Internet Transmission Date: Fri Sep 19 16:18:44 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2014091916184427
7309-86180679-5006658b44bd3a616fbfc49dc8
de3e4db79cca829e3da626c7d45116c85d0e2b-N
/A-N/A-20140919161321587499