Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

---

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90192112 GO2BANK (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9019211 2/large) has been amended as follows:

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

Applicant hereby responds to the previously-issued Office Action in connection with this pending application. The Examiner's preliminary and non-final objection has been considered, and after doing so, it is clear that for many reasons, there is no likelihood of confusion between Applicant's applied-for mark and any of the third-party filings preliminarily cited by the Examiner. Applicant also disagrees with the Examiner's preliminary conclusion that the word "BANK" must be disclaimed in this application. In fact, given the visual appearance of the applied-for logo and other reasons, there is no need to add a disclaimer into the record. Nonetheless, Applicant also notes the Examiner's express statement that "Applicant's election not to submit arguments at this time in no way limits applicant's right to address this issue later." With that instruction in mind, Applicant will not submit arguments at this time, and Applicant hereby requests that the Examiner suspend this application in light of the pending applications referenced in the Office Action (after the amendments are entered into the record for the covered services; Applicant is filing those amendments at this time). Again, to be clear, this suspension request is made keeping in mind that there is no possibility of consumer confusion between Applicant's applied-for mark and the cited third-party filings, and no need to add a disclaimer into the record.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 036 for Debit card, cash card, and stored value card services; banking services; financing services; investment services; buy now pay later, installment loan services; in-app shopping; insurance services; embedded wallet services; cash-acceptance transaction services for supporting the funding of prepaid debit cards; analysis and evaluation of the creditworthiness of individuals; electronic payment services, namely, electronic processing and transmission of bill payment data; providing funds replenishment, banking, and electronic funds transfer services in connection with debit card services that permit card holders to fund debit cards, make online and telephone payment transactions, and pay for consumer services, debts, and bills; financial investment services in the field of certificates of deposit; automated teller machine (ATM) banking services; online and mobile banking services; payment processing services, namely, processing electronic payments made through debit cards, cash cards, and stored value cards; funding online cash accounts from prepaid debit card accounts; electronic check transaction processing services; foreign exchange services, namely, foreign exchange transactions, foreign exchange information services, and providing for the exchange of foreign currency; issuance of bank checks and travelers checks; providing information and consultation in the fields of debit, stored value, and cash card services, debit card, bill payment, and electronic check transaction processing services, and online banking; promoting banking services and debit, stored value, and cash card usage and sales through the administration of customer loyalty and incentive rewards programs; providing financial service customer loyalty and incentive rewards programs; providing a website that tracks account information for debit cards and cash 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.


Proposed:

Tracked Text Description: Debit card, cash card, and stored value card services; Debit card, cash card, and stored value card services, namely, issuance and processing of debit card, cash card, and stored value card payments, and issuing debit cards, cash cards, and stored value cards; banking services; financing services; investment services; investment brokerage and advisory services; buy now pay later, installment loan services; in-app shopping; insurance brokerage, information, and administration services; insurance services; embedded wallet services, namely, processing electronic wallet payments and bill payment services provided via an electronic wallet; embedded wallet services; cash-acceptance transaction services for supporting the funding of prepaid debit cards in the nature of debit card transaction processing services; cash-acceptance transaction services for supporting the funding of prepaid debit cards; analysis and evaluation of the creditworthiness of individuals; electronic payment services, namely, electronic processing and transmission of bill payment data; providing funds replenishment, banking, and electronic funds transfer services in connection with debit card services that permit card holders to fund debit cards, make online and telephone payment transactions, and pay for consumer services, debts, and bills; financial investment services in the field of certificates of deposit; automated teller machine (ATM) banking services; online and mobile banking services; payment processing services, namely, processing electronic payments made through debit cards, cash cards, and stored value cards; funding online cash accounts from prepaid debit card accounts; electronic check transaction processing services; foreign exchange services, namely, foreign exchange transactions, foreign exchange information services, and providing for the exchange of foreign currency; issuance of bank checks and travelers checks; providing information and consultation in the fields of debit, stored value, and cash card services, debit card, bill payment, and electronic check transaction processing services, and online banking; providing a website that tracks account information for debit cards and cash cards; promoting banking services and debit, stored value, and cash card usage and sales through the administration of customer loyalty and incentive rewards programs; providing financial service customer loyalty and incentive rewards programsClass 036 for Debit card, cash card, and stored value card services, namely, issuance and processing of debit card, cash card, and stored value card payments, and issuing debit cards, cash cards, and stored value cards; banking services; financing services; investment brokerage and advisory services; buy now pay later, installment loan services; insurance brokerage, information, and administration services; embedded wallet services, namely, processing electronic wallet payments and bill payment services provided via an electronic wallet; cash-acceptance transaction services for supporting the funding of prepaid debit cards in the nature of debit card transaction processing services; analysis and evaluation of the creditworthiness of individuals; electronic payment services, namely, electronic processing and transmission of bill payment data; providing funds replenishment, banking, and electronic funds transfer services in connection with debit card services that permit card holders to fund debit cards, make online and telephone payment transactions, and pay for consumer services, debts, and bills; financial investment services in the field of certificates of deposit; automated teller machine (ATM) banking services; online and mobile banking services; payment processing services, namely, processing electronic payments made through debit cards, cash cards, and stored value cards; funding online cash accounts from prepaid debit card accounts; electronic check transaction processing services; foreign exchange services, namely, foreign exchange transactions, foreign exchange information services, and providing for the exchange of foreign currency; issuance of bank checks and travelers checks; providing information and consultation in the fields of debit, stored value, and cash card services, debit card, bill payment, and electronic check transaction processing services, and online banking; providing a website that tracks account information for debit cards and cash 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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Online retail services featuring gift cards; promoting banking services and debit, stored value, and cash card usage and sales through the administration of customer loyalty and incentive rewards programs; arranging and conducting financial service customer loyalty and incentive rewards programs
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Green Dot Corporation, a corporation of Delaware, having an address of
      3465 East Foothill Boulevard
      Pasadena, California 91107
      United States
      Email Address: XXXX

Proposed: Green Dot Corporation, a corporation of Delaware, having an address of
      3465 East Foothill Boulevard
      Pasadena, California 91107
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Adam Siegartel. Adam Siegartel of HAYNES AND BOONE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2323 VICTORY AVENUE, SUITE 700
      DALLAS, Texas 75219
      United States
The docket/reference number is 56269.203US1.
      The phone number is 212-835-4843.
      The fax number is 214-200-0853.
      The email address is ipdocketing@haynesboone.com

The owner's/holder's proposed attorney information: Adam Siegartel. Other appointed attorneys are Jeremy A. Berman, William M. Borchard, Jeffrey Chery, Dasha Chestukhin, Mary A. Donovan, Kieran G. Doyle, Shana Dunning, Robert J. English, Jeffrey H. Epstein, C. J. Erickson, Lynn S. Fruchter, Allison R. Furnari, Morton D. Goldberg, Lawrence Greene, Midge M. Hyman, Justin I. Karasick, Mary L. Kevlin, Thomas Kjellberg, Maryann E. Licciardi, Meichelle R. MacGregor, Joelle Milov, Mark Montague, Raphael Nemes, Reema Pangarkar, Joel Karni Schmidt, Eric J. Shimanoff, Adam Siegartel, Deborah K. Squiers, Emily F. Stein, Brian Volk, Lyndsey Waddington, Dorothy R. Whitney, Ana Zhadina, and all other attorneys at Cowan, Liebowitz & Latman, P.C.. Adam Siegartel of Cowan, Liebowitz & Latman, 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

      114 West 47th Street
      New York, New York 10036-1525
      United States
The docket/reference number is 32413-000.
      The phone number is 212-790-9200.
      The fax number is 212-575-0671.
      The email address is trademark@cll.com

Adam Siegartel 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):
      ADAM SIEGARTEL
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketing@haynesboone.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): adam.siegartel@haynesboone.com; venisa.dark@haynesboone.com; diana.obradovich@haynesboone.comom

The docket/reference number is 56269.203US1.
Correspondence Information (proposed):
      Adam Siegartel
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@cll.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ads@cll.com; jik@cll.com; chc@cll.com

The docket/reference number is 32413-000.

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).

FEE(S)
Fee(s) in the amount of $350 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: /Adam Siegartel/      Date: 08/02/2021
Signatory's Name: Adam Siegartel
Signatory's Position: Attorney of Record, NY State Bar Member
Signatory's Phone Number: 212-790-9200

Signature method: Sent to third party for signature

Response Signature
Signature: /Adam Siegartel/     Date: 08/02/2021
Signatory's Name: Adam Siegartel
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 212-790-9200 Signature method: Sent to third party for signature

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:    ADAM SIEGARTEL
   HAYNES AND BOONE LLP
   
   2323 VICTORY AVENUE, SUITE 700
   DALLAS, Texas 75219
Mailing Address:    Adam Siegartel
   Cowan, Liebowitz & Latman, P.C.
   114 West 47th Street
   New York, New York 10036-1525
        
PAYMENT: 90192112
PAYMENT DATE: 08/02/2021
        
Serial Number: 90192112
Internet Transmission Date: Mon Aug 02 23:07:02 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20210802230702866
585-90192112-781d8ed3f034566d4e615377433
a18994ffc125c2e36dde66d87542ffb5e3e79-ET
-06590018-20210802215703182749