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. 88842128 MINT(Standard Characters, see http://uspto.report/TM/88842128/mark.png) has been amended as follows:

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

Please see attachment for argument.

EVIDENCE
Evidence has been attached: Evidence and argument regarding acceptability of Applicant's wording of its Class 41 services.
Original PDF file:
evi_1744721010-2020062417 3305388602_._Response_to_ Office_Action_re_MINT_in_ 41_and_42.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 041 for Education services, namely, providing online educational content featuring information, opinion, advice, and guidance in the field of credit, credit-worthiness, credit scores, obtaining loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages

Proposed:

Tracked Text Description: Education services, namely, providing online educational content featuring information, opinion, advice, and guidance in the field of credit, credit-worthiness, credit scores, obtaining loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; providing online, non-downloadable written articles featuring educational information, opinion, advice, and guidance in the field of credit, credit-worthiness, credit scores, obtaining loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; education services, namely, online instruction featuring educational information, opinion, advice, and guidance in the field of credit, credit-worthiness, credit scores, obtaining loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgagesClass 041 for providing online, non-downloadable written articles featuring educational information, opinion, advice, and guidance in the field of credit, credit-worthiness, credit scores, obtaining loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; education services, namely, online instruction featuring educational information, opinion, advice, and guidance in the field of credit, credit-worthiness, credit scores, obtaining loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 04/01/2007 and first used in commerce at least as early as 04/01/2007 , and is now in use in such commerce.
In International Class 041, the mark was first used at least as early as 04/01/2007 and first used in commerce at least as early as 04/01/2007.

Applicant hereby submits one(or more) specimen(s) for Class 041. The specimen(s) submitted consists of PDFs taken of company website showing the mark used on and in connection with advertising of the listed services.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-1744721010-202006222 00638881510_._MINT_Class_ 41_-_Specimen_1.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2
Original PDF file:
SPU0-1744721010-202006222 00638881510_._MINT_Class_ 41_-_Specimen_2.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2

Applicant proposes to amend the following:

Current:
Class 042 for Non-downloadable computer software for obtaining, viewing, storing and managing credit scores and credit reporting information; non-downloadable computer software for comparing and recommending financial products, namely, credit cards, debit cards, stored-value cards, bank accounts, investment accounts, insurance policies, loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; non-downloadable computer software for generating product and service comparisons; Providing temporary use of non-downloadable computer software for providing commercial information on, and comparisons of, the products and services of others; Providing temporary use of non-downloadable computer software for comparison shopping services; Providing temporary use of non-downloadable computer software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing of data; providing temporary use of non-downloadable computer software applications for online banking management and personal financial management; providing temporary use of non-downloadable computer software for financial transaction management; providing temporary use of non-downloadable computer software for tracking and analysis of personal and small business financial transactions; providing temporary use of non-downloadable computer software for financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; providing temporary use of non-downloadable computer software for creating reports and graphs; providing temporary use of non-downloadable computer software for forecasting and analysis of data; providing temporary use of non-downloadable computer software for data aggregation; providing temporary use of non-downloadable computer software for providing alerts; providing temporary use of non-downloadable computer software for providing wireless access to data and databases; providing temporary use of non-downloadable computer software for enabling users to retrieve account balances and transaction information accessible over mobile applications and mobile telecommunication networks; providing temporary use of non-downloadable computer software for managing credit and debit card accounts; providing temporary use of non-downloadable computer software for credit monitoring and credit scoring; providing temporary use of non-downloadable computer software for enabling users to retrieve digital currency account balances and transaction information using mobile devices and mobile telecommunication networks

Proposed:

Tracked Text Description: Non-downloadable computer software for obtaining, viewing, storing and managing credit scores and credit reporting information; Providing online, non-downloadable computer software for obtaining, viewing, storing and managing credit scores and credit reporting information; non-downloadable computer software for comparing and recommending financial products, namely, credit cards, debit cards, stored-value cards, bank accounts, investment accounts, insurance policies, loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; providing online, non-downloadable computer software for comparing and recommending financial products, namely, credit cards, debit cards, stored-value cards, bank accounts, investment accounts, insurance policies, loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; non-downloadable computer software for generating product and service comparisons; providing online, non-downloadable computer software for generating product and service comparisons; Providing temporary use of non-downloadable computer software for providing commercial information on, and comparisons of, the products and services of others; Providing temporary use of online, non-downloadable computer software for providing commercial information on, and comparisons of, the products and services of others; Providing temporary use of non-downloadable computer software for comparison shopping services; Providing temporary use of online, non-downloadable computer software for comparison shopping services; Providing temporary use of non-downloadable computer software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing of data; Providing temporary use of online, non-downloadable computer software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing of data; providing temporary use of non-downloadable computer software applications for online banking management and personal financial management; providing temporary use of online, non-downloadable computer software applications for online banking management and personal financial management; providing temporary use of non-downloadable computer software for financial transaction management; providing temporary use of online, non-downloadable computer software for financial transaction management; providing temporary use of non-downloadable computer software for tracking and analysis of personal and small business financial transactions; providing temporary use of online, non-downloadable computer software for tracking and analysis of personal and small business financial transactions; providing temporary use of non-downloadable computer software for financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; providing temporary use of online, non-downloadable computer software for financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; providing temporary use of non-downloadable computer software for creating reports and graphs; providing temporary use of online, non-downloadable computer software for creating reports and graphs; providing temporary use of non-downloadable computer software for forecasting and analysis of data; providing temporary use of online, non-downloadable computer software for forecasting and analysis of data; providing temporary use of non-downloadable computer software for data aggregation; providing temporary use of online, non-downloadable computer software for data aggregation; providing temporary use of non-downloadable computer software for providing alerts; providing temporary use of online, non-downloadable computer software for providing alerts; providing temporary use of non-downloadable computer software for providing wireless access to data and databases; providing temporary use of online, non-downloadable computer software for providing wireless access to data and databases; providing temporary use of non-downloadable computer software for enabling users to retrieve account balances and transaction information accessible over mobile applications and mobile telecommunication networks; providing temporary use of online, non-downloadable computer software for enabling users to retrieve account balances and transaction information accessible over mobile applications and mobile telecommunication networks; providing temporary use of non-downloadable computer software for managing credit and debit card accounts; providing temporary use of online, non-downloadable computer software for managing credit and debit card accounts; providing temporary use of non-downloadable computer software for credit monitoring and credit scoring; providing temporary use of online, non-downloadable computer software for credit monitoring and credit scoring; providing temporary use of non-downloadable computer software for enabling users to retrieve digital currency account balances and transaction information using mobile devices and mobile telecommunication networks; providing temporary use of online, non-downloadable computer software for enabling users to retrieve digital currency account balances and transaction information using mobile devices and mobile telecommunication networksClass 042 for Providing online, non-downloadable computer software for obtaining, viewing, storing and managing credit scores and credit reporting information; providing online, non-downloadable computer software for comparing and recommending financial products, namely, credit cards, debit cards, stored-value cards, bank accounts, investment accounts, insurance policies, loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; providing online, non-downloadable computer software for generating product and service comparisons; Providing temporary use of online, non-downloadable computer software for providing commercial information on, and comparisons of, the products and services of others; Providing temporary use of online, non-downloadable computer software for comparison shopping services; Providing temporary use of online, non-downloadable computer software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing of data; providing temporary use of online, non-downloadable computer software applications for online banking management and personal financial management; providing temporary use of online, non-downloadable computer software for financial transaction management; providing temporary use of online, non-downloadable computer software for tracking and analysis of personal and small business financial transactions; providing temporary use of online, non-downloadable computer software for financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; providing temporary use of online, non-downloadable computer software for creating reports and graphs; providing temporary use of online, non-downloadable computer software for forecasting and analysis of data; providing temporary use of online, non-downloadable computer software for data aggregation; providing temporary use of online, non-downloadable computer software for providing alerts; providing temporary use of online, non-downloadable computer software for providing wireless access to data and databases; providing temporary use of online, non-downloadable computer software for enabling users to retrieve account balances and transaction information accessible over mobile applications and mobile telecommunication networks; providing temporary use of online, non-downloadable computer software for managing credit and debit card accounts; providing temporary use of online, non-downloadable computer software for credit monitoring and credit scoring; providing temporary use of online, non-downloadable computer software for enabling users to retrieve digital currency account balances and transaction information using mobile devices and mobile telecommunication networks
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 04/01/2007 and first used in commerce at least as early as 04/01/2007 , and is now in use in such commerce.
In International Class 042, the mark was first used at least as early as 04/01/2007 and first used in commerce at least as early as 04/01/2007.

Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of PDFs taken of company website showing the mark used on and in connection with advertising of the listed services.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-1744721010-202006222 00638881510_._MINT_Class_ 42_-_Specimen_1.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2
Original PDF file:
SPU1-1744721010-202006222 00638881510_._MINT_Class_ 42_-_Specimen_2.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2
Original PDF file:
SPU1-1744721010-202006222 00638881510_._MINT_Class_ 42_-_Specimen_3.pdf
Converted PDF file(s) ( 4 pages) Specimen File1Specimen File2Specimen File3Specimen File4
Correspondence Information (current):
      KATHERINE M. BASILE
      PRIMARY EMAIL FOR CORRESPONDENCE: kkershner@reedsmith.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ptoipinbox@reedsmith.com; kbasile@reedsmith.com; karmellino@reedsmith.com

The docket/reference number is 14-20005-US8.
Correspondence Information (proposed):
      Katherine M. Basile
      PRIMARY EMAIL FOR CORRESPONDENCE: kkershner@reedsmith.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ptoipinbox@reedsmith.com; kbasile@reedsmith.com; karmellino@reedsmith.com; IntuitDocket@ReedSmith.com

The docket/reference number is 14-20005-US8.

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).

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: /John Geering/      Date: 06/26/2020
Signatory's Name: John Geering
Signatory's Position: Assistant General Counsel, CA Bar Member
Signatory's Phone Number: 6509443872


Response Signature
Signature: /Katrina M. Kershner/     Date: 06/26/2020
Signatory's Name: Katrina M. Kershner
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: 415.659.4928

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:    KATHERINE M. BASILE
   REED SMITH LLP
   
   P.O. BOX 488
   PITTSBURGH, Pennsylvania 15230
Mailing Address:    Katherine M. Basile
   REED SMITH LLP
   P.O. BOX 488
   PITTSBURGH, Pennsylvania 15230
        
Serial Number: 88842128
Internet Transmission Date: Fri Jun 26 19:01:53 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020062619015368
2150-88842128-7101118a449fd1ddb6b77a9514
e48a27f691d4e71b7f2131d9a2b57589eebe59c8
-N/A-N/A-20200624173305388602