Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88367823 GUARANTEED BILL PAYMENTS(Standard Characters, see http://uspto.report/TM/88367823/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 a Response to Office Action and Exhibits has been attached.
Original PDF file:
evi_96831163-20191212134932746103_._ROA_for_GUARANTEED_BILL_PAYMENTS.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
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Original PDF file:
evi_96831163-20191212134932746103_._Exhibit_A_for_GUARANTEED_BILL_PAYMENTS.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_96831163-20191212134932746103_._Exhibit_B_for_GUARANTEED_BILL_PAYMENTS.pdf
Converted PDF file(s) ( 40 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Merchant services, namely, payment transaction processing services; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Providing an internet website portal in the field of financial transaction and payment processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Providing API-based transfers, namely, electronic funds transfer; Application service provider featuring application programming interface (API) software for providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check, and electronic payments
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: Merchant services, namely, payment transaction processing services; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Providing an internet website portal in the field of financial transaction and payment processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Providing API-based transfers, namely, electronic funds transfer; Application service provider featuring application programming interface (API) software for providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check, and electronic paymentsClass 036 for Merchant services, namely, payment transaction processing services; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Providing an internet website portal in the field of financial transaction and payment processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Providing API-based transfers, namely, electronic funds transfer
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 hereby adds the following class of goods/services to the application:
New: Class 042 for Application service provider featuring application programming interface (API) software for providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check, and electronic payments
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.

The applicant's current attorney information: Dana P. Jozefczyk. Dana P. Jozefczyk of MERCHANT & GOULD P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      PO BOX 2910
      MINNEAPOLIS, Minnesota 55402
      US
The docket/reference number is 18487.6US01.

The phone number is 303-357-1645.

The fax number is 612-332-9081.

The email address is dockmpls@merchantgould.com

The applicants proposed attorney information: Dana P. Jozefczyk. Other appointed attorneys are Andrew S. Ehard, John A. Clifford, Scott W. Johnston, Christopher J. Schulte, Brent E. Routman, Brian H. Batzli, Gregory C. Golla, Danielle I. Mattessich, and all other attorneys at the firm. Dana P. Jozefczyk of MERCHANT & GOULD P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      PO BOX 2910
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 18487.6US01.

The phone number is 303-357-1647.

The fax number is 612-332-9081.

The email address is dockmpls@merchantgould.com

Dana P. Jozefczyk submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: Dana P. Jozefczyk. Dana P. Jozefczyk of MERCHANT & GOULD P.C., is located at

      PO BOX 2910
      MINNEAPOLIS, Minnesota 55402
      US
The docket/reference number is 18487.6US01.

The phone number is 303-357-1645.

The fax number is 612-332-9081.

The email address is dockmpls@merchantgould.com; DJozefczyk@merchantgould.com; PColeman@MerchantGould.com

The applicants proposed correspondence information: Dana P. Jozefczyk. Dana P. Jozefczyk of MERCHANT & GOULD P.C., is located at

      PO BOX 2910
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 18487.6US01.

The phone number is 303-357-1647.

The fax number is 612-332-9081.

The email address is dockmpls@merchantgould.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Dana P. Jozefczyk is currently listed as the Attorney of Record. A Revocation/Appointment of Attorney was filed on December 12, 2019, appointing Christopher R. Stanton as Attorney of Record. The bar information listed on this form is for Christopher R. Stanton.


FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/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; the signatory is properly authorized to execute the declaration on behalf of the applicant; 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Chris R. Stanton/      Date: 12/12/2019
Signatory's Name: Christopher R. Stanton
Signatory's Position: Attorney of Record, CO Bar Member
Signatory's Phone Number: 3033571647


Response Signature
Signature: /Chris R. Stanton/     Date: 12/12/2019
Signatory's Name: Christopher R Stanton
Signatory's Position: Attorney of record, Colorado bar member

Signatory's Phone Number: 3033571647

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:    Dana P. Jozefczyk
   MERCHANT & GOULD P.C.
   
   PO BOX 2910
   MINNEAPOLIS, Minnesota 55402
Mailing Address:    Dana P. Jozefczyk
   MERCHANT & GOULD P.C.
   PO BOX 2910
   MINNEAPOLIS, Minnesota 55402
        
RAM Sale Number: 88367823
RAM Accounting Date: 12/12/2019
        
Serial Number: 88367823
Internet Transmission Date: Thu Dec 12 17:23:06 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.X-201912121723068184
74-88367823-700634d476b8d69604bbff84ef8e
9dbe3c23faa81c14afd46c98b5f8dff6b65d2-CC
-23059297-20191212134932746103