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. 88394087 NV (Stylized and/or with Design, see http://uspto.report/TM/88394087/mark.png) has been amended as follows:

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

Please see attached evidence files comprising arguments and exhibits in response.

EVIDENCE
Evidence in the nature of the Response to Office Action and Exhibits A, B, C, and D. has been attached.
Original PDF file:
evi_38142163218-20191127160457052001_._NV_and_Design_Office_Action_Response.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Original PDF file:
evi_38142163218-20191127160457052001_._EXHIBIT_A_-_NV_and_Design_Mark_Use-v1.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_38142163218-20191127160457052001_._EXHIBIT_B_-_NV5_Mark_Use-v1.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_38142163218-20191127160457052001_._EXHIBIT_C_-_NV_MERCURY_Use-v1.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_38142163218-20191127160457052001_._EXHIBIT_D_-_TESS_Reports_of_NV_Composite_Marks-v1.pdf
Converted PDF file(s) ( 19 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Financial services, namely, credit card and debit card services
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 and debit card services; Financial services, namely, credit card and debit card transaction processing services, processing of credit and debit card paymentsClass 036 for Financial services, namely, credit card and debit card transaction processing services, processing of credit and debit card 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: Bryan G. Pratt. Bryan G. Pratt of DORSEY & WHITNEY LLP, is located at

      111 SOUTH MAIN STREET, SUITE 2100
      IP DEPARTMENT
      SALT LAKE CITY, Utah 84111-2176
      US

The phone number is 801-933-7360.

The fax number is 801-933-7373.

The email address is ip.docket.slc@dorsey.com

The applicants proposed attorney information: Bryan G. Pratt. Other appointed attorneys are Tiffany D.W. Shimada, Charlene Krogh, Lisa Osman, Andrea Hintz, and Lindsey Sadler. Bryan G. Pratt of DORSEY & WHITNEY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      111 SOUTH MAIN STREET, SUITE 2100
      IP DEPARTMENT
      SALT LAKE CITY, Utah 84111-2176
      United States
The docket/reference number is T281860.US.0.

The phone number is 801-933-7360.

The fax number is 801-933-7373.

The email address is ip.docket.slc@dorsey.com

Bryan G. Pratt 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: BRYAN G. PRATT. BRYAN G. PRATT of DORSEY & WHITNEY LLP, is located at

      111 SOUTH MAIN STREET, SUITE 2100
      IP DEPARTMENT
      SALT LAKE CITY, Utah 84111-2176
      US

The phone number is 801-933-7360.

The fax number is 801-933-7373.

The email address is ip.docket.slc@dorsey.com; shimada.tiffany@dorsey.com

The applicants proposed correspondence information: Bryan G. Pratt. Bryan G. Pratt of DORSEY & WHITNEY LLP, is located at

      111 SOUTH MAIN STREET, SUITE 2100
      IP DEPARTMENT
      SALT LAKE CITY, Utah 84111-2176
      United States
The docket/reference number is T281860.US.0.

The phone number is 801-933-7360.

The fax number is 801-933-7373.

The email address is ip.docket.slc@dorsey.com; shimada.tiffany@dorsey.com

SIGNATURE(S)
Response Signature
Signature: /Tiffany Shimada/     Date: 11/27/2019
Signatory's Name: Tiffany D.W. Shimada
Signatory's Position: Attorney of Record, Utah bar member

Signatory's Phone Number: 801-933-7360

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:    BRYAN G. PRATT
   DORSEY & WHITNEY LLP
   111 SOUTH MAIN STREET, SUITE 2100
   IP DEPARTMENT
   SALT LAKE CITY, Utah 84111-2176
Mailing Address:    Bryan G. Pratt
   DORSEY & WHITNEY LLP
   111 SOUTH MAIN STREET, SUITE 2100
   IP DEPARTMENT
   SALT LAKE CITY, Utah 84111-2176
        
Serial Number: 88394087
Internet Transmission Date: Wed Nov 27 16:37:41 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201911271637414
78416-88394087-700dc5a67f1b4b477cc4b88f6
9746d42e78f92ec1676ed715ebd63af438467395
87-N/A-N/A-20191127160457052001