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. 88499512 CHIP(Standard Characters, see http://uspto.report/TM/88499512/mark.png) has been amended as follows:

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

Response to Inquiry Regarding Meaning of the Mark. A "computer chip" refers to an integrated circuit or small wafer of semiconductor material embedded with integrated circuitry, and a "chip card" refers to a plastic debit or credit card that contains an embedded microchip, which encrypts information to increase data security during financial transactions. However, Applicant's goods and services do not consist of or relate to such "computer chips" or "chip cards." Applicant's mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods and services listed in the application. As applied to Applicant's goods and services, "CHIP" is a suggestive term that suggests that Applicant's goods and services can help users "chip away" at their debt.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Downloadable software and computer application software for mobile phones, mobile devices, handheld computers, portable media players, and personal computers, namely, software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts
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: Downloadable software and computer application software for mobile phones, mobile devices, handheld computers, portable media players, and personal computers, namely, software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts; Downloadable software and downloadable computer application software for mobile phones, mobile devices, handheld computers, portable media players, and personal computers, namely, downloadable software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accountsClass 009 for Downloadable software and downloadable computer application software for mobile phones, mobile devices, handheld computers, portable media players, and personal computers, namely, downloadable software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts
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:
Current: Class 036 for Financial services, namely, electronically monitoring the financial transactions of others, electronically accumulating small amounts of money from those transactions, and electronically applying the accumulated money amounts towards payment of loan accounts
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, electronically monitoring the financial transactions of others, electronically accumulating small amounts of money from those transactions, and electronically applying the accumulated money amounts towards payment of loan accounts; Electronic funds transfer of funds accumulated in small amounts from credit, debit and bank card transactions and the transfer of that amount towards payment of loan account balancesClass 036 for Electronic funds transfer of funds accumulated in small amounts from credit, debit and bank card transactions and the transfer of that amount towards payment of loan account balances
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:
Current: Class 042 for Providing temporary use of non-downloadable software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts; Software as a Service (SaaS) featuring software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts; Providing a website featuring online non-downloadable software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts
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: Electronic monitoring of the financial transactions of others so as to electronically accumulate small amounts of money from those transactions and electronically apply the accumulated money amounts towards payment of loan accounts; Providing temporary use of non-downloadable software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts; Software as a Service (SaaS) featuring software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts; Providing a website featuring online non-downloadable software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accountsClass 042 for Electronic monitoring of the financial transactions of others so as to electronically accumulate small amounts of money from those transactions and electronically apply the accumulated money amounts towards payment of loan accounts; Providing temporary use of non-downloadable software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts; Software as a Service (SaaS) featuring software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts; Providing a website featuring online non-downloadable software for use in monitoring the financial transactions of users, in accumulating small amounts of money from those transactions, and in applying the accumulated money amounts towards payment of the users' loan accounts
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Chip, LLC, a limited liability company legally organized under the laws of Indiana, having an address of
      5865 Rosslyn Avenue
      Indianapolis, Indiana 46220-2708
      United States

Proposed: Chip, LLC, a limited liability company legally organized under the laws of Indiana, having an address of
      5865 Rosslyn Avenue
      Indianapolis, Indiana 46220-2708
      United States
      Email Address: USPTOTM@taftlaw.com

The owner's/holder's current attorney information: Lindsey N. Rothrock. Lindsey N. Rothrock of TAFT STETTINIUS & HOLLISTER LLP, is located at

      SUITE 3500
      ONE INDIANA SQUARE
      INDIANAPOLIS, Indiana 46204
      United States
The docket/reference number is CHP12-GN001.
      The phone number is 317-713-9442.
      The fax number is 317.713.3699.
      The email address is LRothrock@taftlaw.com

The owner's/holder's proposed attorney information: Lindsey N. Rothrock. Other appointed attorneys are Elizabeth Baumhart, Gregory Coy, Kristin Hardy, Jeffrey Kosc, Amy Wright. Lindsey N. Rothrock of TAFT STETTINIUS & HOLLISTER 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

      SUITE 3500
      ONE INDIANA SQUARE
      INDIANAPOLIS, Indiana 46204
      United States
The docket/reference number is CHP12-GN001.
      The phone number is 317-713-9442.
      The fax number is 317.713.3699.
      The email address is LRothrock@taftlaw.com

Lindsey N. Rothrock 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.Correspondence Information (current):
      LINDSEY N. ROTHROCK
      PRIMARY EMAIL FOR CORRESPONDENCE: LRothrock@taftlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tmtaftdocket@taftlaw.com

The docket/reference number is CHP12-GN001.
Correspondence Information (proposed):
      Lindsey N. Rothrock
      PRIMARY EMAIL FOR CORRESPONDENCE: LRothrock@taftlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tmtaftdocket@taftlaw.com

The docket/reference number is CHP12-GN001.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
CHIP appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /Lindsey N. Rothrock/     Date: 03/02/2020
Signatory's Name: Lindsey N. Rothrock
Signatory's Position: Attorney of record

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:    LINDSEY N. ROTHROCK
   TAFT STETTINIUS & HOLLISTER LLP
   SUITE 3500
   ONE INDIANA SQUARE
   INDIANAPOLIS, Indiana 46204
Mailing Address:    Lindsey N. Rothrock
   TAFT STETTINIUS & HOLLISTER LLP
   SUITE 3500
   ONE INDIANA SQUARE
   INDIANAPOLIS, Indiana 46204
        
Serial Number: 88499512
Internet Transmission Date: Mon Mar 02 10:12:50 ET 2020
TEAS Stamp: USPTO/ROA-X.XX.XXX.X-2020030210125047575
7-88499512-710aaed7e7ef268491f234c1d5b6b
73a280481b33718a2965ecd45b90ba11bdebfe-N
/A-N/A-20200302094241680158