Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA676678
`ESTTA Tracking number:
`06/05/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91221529
`Plaintiff
`Intuit Inc.
`LINDA G HENRY
`FENWICK & WEST LLP
`SILICON VALLEY CENTER , 801 CALIFORNIA ST
`MOUNTAIN VIEW, CA 94041
`UNITED STATES
`trademarks@fenwick.com
`Other Motions/Papers
`Linda G. Henry, Esq.
`trademarks@fenwick.com
`/lgh/
`06/05/2015
`91221529 Opposer's Notice of Return of Service Copies of Amended Notice of
`Opposition and Change of Correspondence Address.pdf(195688 bytes )
`91221529 Ex A to Notice.pdf(3642172 bytes )
`91221529 Ex B to Notice.pdf(63618 bytes )
`91221529 Ex C to Notice.pdf(198238 bytes )
`91221529 Ex D to Notice.pdf(47751 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of
`
`Trademark Application Serial No. 86349466
`Mark: IntuitivePay
`
`Intuit Inc.,
`
`Opposer,
`
`vs.
`
`Pensmore, Inc. dba Pensmore Software,
`
`Applicant
`
`vvvvvvvvv
`
`Opposition No. 91221529
`
`OPPOSER’S NOTICE OF RETURN OF SERVICE COPIES OF AMENDED NOTICE OF
`
`OPPOSITION AND CHANGE OF CORRESPONDENCE ADDRESS
`
`On May 6, 2015, Opposer filed an Amended Notice of Opposition and Change of
`
`Correspondence Address and on that same day served copies of both documents in one envelope
`
`pursuant to 37 CPR §2.lOl(b). The service copies of the Amended Notice of Opposition and
`
`Change of Correspondence Address were returned to Opposer’s counsel on May 29, 2015.
`
`Pursuant to 37 CPR. §2.lOl(b), Opposer hereby submits this Opposer’s Notice Of Return Of
`
`Service Copies Of Amended Notice Of Opposition And Change Of Correspondence Address.
`
`Pursuant to 37 C.F.R §2.lOl(b) and TBMP §309.02(c), if a service copy is returned to
`
`opposer as undeliverable, opposer must notify the Trademark Trial and Appeal Board (“Board”)
`
`within ten days of receipt of the returned service copy, or of any notice indicating that the service
`
`copy could not be delivered. Notification to the Board of failure of service may be provided by
`
`appropriate filing through ESTTA.
`
`In this case, the service copies of the Amended Notice of Opposition and Change of
`Correspondence Address were returned to Opposer’s counsel on May 29, 2015. Declaration of
`
`Linda G. Henry in Support of Opposer’s Notice Of Return Of Service Copies Of Amended Notice
`
`Of Opposition And Change Of Correspondence Address (“Henry Decl.”), 114, attached hereto as
`
`

`

`Exhibit A. Opposer’s counsel is providing notice to the Board by appropriate filing through
`
`ESTTA within ten days of receipt of the returned service copy.
`
`The envelope containing the returned service copies of the Amended Notice-of Opposition
`and Change of Correspondence Address bore a label displaying the phrases “RETURN TO
`
`SENDER” and “UNABLE TO FORWARD.” Henry Decl., 114.— Upon closer inspection and
`
`investigation, due to an innocent and inadvertent clerical error, the zip code for Applicant’s
`
`address on the mailing label was listed as 28216-2462 instead of 28216-2465. In other words, due
`
`to an innocent and inadvertent clerical error, the last digit of the four-digit add—on to the basic five-
`
`digit zip code (“ZlP+4 Cede”) was incorrectly typed as “2462” instead of “2465.” The rest of the
`
`address was correct. The incorrect last digit in the four-digit add-on to the basic five-digit zip code
`
`was due to an innocent and inadvertent clerical error. Declaration of Nanette Barranti in Support of
`
`Opposer’s Notice Of Return Of Service Copies Of Amended Notice Of Opposition And Change
`
`Of Correspondence Address, 1l4, attached hereto as Exhibit B; Henry Decl., 116.
`
`Upon discovering the innocent and inadvertent clerical error in the address, a copy of the
`
`the Amended Notice of Opposition and Change of Correspondence Address was promptly mailed
`
`on May 29, 2015 to Applicant’s Correspondent address at “10130 Perimeter Pkwy, Ste 200,
`
`Charlotte, North Carolina 28216-2465.” Henry Decl., 115 (Copies of the Amended Notice of
`
`Opposition and Change of Correspondence Address, new Proof of Service documents, and a
`
`photocopy of the envelope with mailing label, mailed on May 29, 2015, is attached as Exhibit B to
`
`Henry Decl.)
`
`Although there does not yet appear to be a Board decision directly on point, Gary D.
`
`Krugman (a former Board Judge, a speaker on behalf of the Board at a number of seminars
`discussing the 2007 Board rule changes, including the service requirements under the revised
`rules, and the author of the treatise, Trademark Trial and Appeal Board Practice and Procedure)
`has observed that, in an opposition proceeding, “if a plaintiff served the defendant but
`
`inadvertently served it at an incorrect address, the Board will allow such error to be cured by a
`
`Opposition No. 91218726
`OPPOSER’S NOTICE OF RETURN OF SERVICE COPY OF OPPOSITION
`
`2
`
`

`

`subsequent re-service of the complaint at the correct address and the complaint will be given its
`
`original filing date.” See Gary D. Krugman, Trademark Trial and Appeal Board Practice and
`
`Procedure, §3240 (September 2014 Edition) (A copy of the cited section is attached as Exhibit C).
`
`Furthermore, Mr. Krugman states that the Board appears to be "lenient with respect to curing
`
`innocent, inadvertent errors in service or proof of service." Id. Accordingly, Opposer respectfiJlly
`
`submits that service was, in fact, proper because the clerical error in the four-digit add-on to the
`
`basic five—digit zip code was innocent and inadvertent and because Opposer cured the error by
`
`promptly re-serving Applicant with the Amended Notice of Opposition and Change of
`
`Correspondence Address at Applicant’s Correspondent address.
`
`In addition, pursuant to a telephone conversation with Werner Lopez, Supervisor,
`
`Customer Service of the United States Postal Service, Mountain View Post Office, it is believed
`
`that an error in the four-digit add-on to the basic five-digit zip code would not cause an item to be
`
`returned to the sender. Declaration of Joan Brennan Jolliffe in Support of Support of Opposer’s
`
`Notice Of Return Of Service Copies Of Amended Notice Of Opposition And Change Of
`
`Correspondence Address, 113, attached hereto as Exhibit D. Therefore, in the alternative, Opposer
`
`respectfully submits that service was, in fact, proper because the clerical error in the four-digit
`
`add-on to the basic five—digit zip code did not cause the serviCe copies of the Amended Notice of
`
`Opposition and Change of Correspondence Address to be returned to the sender.
`
`Dated: June _5, 2015
`
`Attorney for Opposer
`FENWICK & WEST LLP
`
`Silicon Valley Center
`801 California Street
`
`Mountain View, CA 94041
`
`(650) 988—8500
`
`Opposition No. 91218726
`OPPOSER’S NOTICE OF RETURN OF SERVICE COPY OF OPPOSITION
`
`3
`
`

`

`PROOF OF SERVICE BY MAIL
`
`I declare that:
`
`I am employed in the County of Santa Clara, California.
`
`I am over the age of eighteen years and not a party to the within cause; my business address is
`Fenwick & West LLP, Silicon Valley Center, 801 California Street, Mountain View, CA 94041. On
`
`June ‘5 , 2015, I caused to be served the attached OPPOSER’S NOTICE OF RETURN OF
`SERVICE COPIES OF AMENDED NOTICE OF OPPOSITION AND CHANGE OF
`
`CORRESPONDENCE ADDRESS on the interested parties in the subject action by placing a true
`copy as indicated below, addressed as follows:
`
`Pensmore, Inc.
`
`10130 Perimeter Pkwy Ste 200
`Charlotte, North Carolina 28216-2465
`
`I am familiar with our business practices for collecting and processing of
`_ (XX)BY U.S. MAIL:
`mail for the United States Postal Service. Mail placed by me within the office for collection for
`the United States Postal Service would normally be deposited with the United States Postal
`Services that day in the ordinary course of business. The envelope(s) bearing the address(es)
`above was sealed and placed for collection and mailing on the date below following our ordinary
`business practices.
`
`( ) BY PERSONAL SERVICE: I caused such envelope(s) to be delivered by hand on the
`office(s) of the addressee(s).
`
`( )BY FEDERAL EXPRESS: I caused such envelope(s) to be delivered to Federal Express for
`overnight courier service to the office(s) of the addressee(s).
`
`I caused a copy of such document(s) to be sent via facsimile transmission to
`( )BY FACSIMILE:
`the office(s) of the party(s) stated above and was transmitted without error.
`
`I declare under penalty of perjury that the foregoing is true and correct, and that this
`
`declaration was executed at Mountain View, California, this 5 “day of June, 2015.
`
`20797/00070/DOCS/3 694691.1
`
`Linda G. Henry
`
`Opposition No. 91218726
`OPPOSER’S NOTICE OF RETURN OF SERVICE COPY OF OPPOSITION
`
`4
`
`

`

`EXHIBIT A
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of
`
`Trademark Application Serial No. 86349466
`Mark: IntuitivePay
`
`Intuit Inc.,
`
`Opposer,
`
`vs.
`
`Pensmore, Inc. dba Pensmore Software,
`Applicant
`
`vvvvvvvvv
`
`Opposition No. 91221529
`
`DECLARATION OF LINDA G. HENRY IN SUPPORT OF
`
`OPPOSER’S NOTICE OF RETURN OF SERVICE COPIES OF AMENDED NOTICE OF
`OPPOSITION AND CHANGE OF CORRESPONDENCE ADDRESS
`
`I, Linda G. Henry, declare as follows:
`
`1.
`
`I am an attorney at law admitted to practice in the courts of the State of California.
`
`I am Senior Counsel in the law firm of Fenwick & West LLP, counsel for Opposer Intuit Inc.
`
`(“Opposer”) in this Opposition proceeding.
`
`I submit this declaration in support of Opposer’s
`
`Notice Of Return Of Service Copies Of Amended Notice Of Opposition And Change Of
`
`Correspondence Address. I make the following statements based upon my own personal
`
`knowledge and, if called as a witness, I could and would testify competently to the facts set forth
`
`herein.
`
`2.
`
`The standard procedure in the Fenwick & West trademark group, per 37 CPR
`
`§2.101, is to mail service copies of an Amended Notice Of Opposition and Change Of
`
`Correspondence Address to the Applicant’s Attorney of Record, if one is listed, or to the
`
`Applicant, if no Attorney is listed, at the correspondence address of record.
`
`3.
`
`On May 6, 2015, as per our standard procedure, I asked our administrative staff to
`
`electronically file the “IntuitivePay” Amended Notice of Opposition and Change of
`
`Correspondence Address, and to mail a service copy of each document to the Applicant at the
`
`correspondence address of record, as there is no Attorney listed.
`
`

`

`4.
`
`On May 29, 2015, I received the envelope containing the service copies of the
`
`p Amended Notice of Opposition and Change of Correspondence Address, returned by the United
`
`States Postal Service and affixed with a label displaying the phrases “RETURN TO SENDER”
`
`and “UNABLE TO FORWARD.” Attached as Exhibit A is a copy of the returned envelope.
`
`5.
`
`Upon closer inspection and investigation, due to an innocent and inadvertent
`
`clerical error, the zip code for Applicant’s address on the mailing label was typed as “28216-2462”
`
`instead of “28216-2465”.
`
`6.
`
`The envelope containing the service copies of the Amended Notice of Opposition
`
`and Change of Correspondence Address mailed on May 6, 2015 incorrectly listed the Applicant’s
`
`address as “10130 Perimeter Pkwy, Ste 200, Charlotte, North Carolina28216-2462” as
`
`opposed to “10130 Perimeter Pkwy, Ste 200, Charlotte, North Carolina 28216-2465.” The
`
`incorrect last digit in the four—digit add-on to the basic five-digit zip code was due to an innocent
`
`and inadvertent clerical error.
`
`7.
`
`Upon discovering the innocent and inadvertent clerical error in the address, copies
`
`of the Amended Notice of Opposition and Change of Correspondence Address were promptly
`
`mailed on May 29, 2015 to Applicant’s correct address at “10130 Perimeter Pkwy, Ste 200,
`
`Charlotte, North Carolina 28216—2465”, along with new Proof of Service documents. Attached as
`
`Exhibit B are copies of the Amended Notice of Opposition and Change of Correspondence
`
`Address, new Proof of Service documents, and a photocopy of the envelope with mailing label,
`
`mailed on May 29, 2015.
`
`I declare under penalty of perjury, under the. laws of the United States, that the foregoing is I
`,,_\/)\
`true and correct. Executed this: day of June 2015, at Mountain View, California.
`
`
`
`20797/00070/DOCS/3694909.1
`
`Opposition No. 91221529
`DECLARATION OF LINDA G. HENRY IN SUPPORT OF
`OPPOSER’S NOTICE OF RETURN OF SERVICE COPIES OF AMENDED NOTICE OF OPPOSITION AND CHANGE OF
`CORRESPONDENCE ADDRESS
`
`2
`
`

`

`EXHIBIT A
`
`

`

`‘QDOIIEIIO
`
`fi‘iMEOfiGELmavmEEUNES
`
`0-32REHLSZS
`
`PM”!!!
`
`W!"
`mm
`tu‘wm:
`
`I
`H
`
`WNW”
`
`IE
`i
`HI
`
`£"HI’E‘H‘HS
`
`:33;
`tacit
`‘
`‘5
`
`r4
`
`
`
`
`
`(QJJEIIOIuEuuanu20[)
`
`
`
`LaaaisVINHOdHVDtog
`
`!\NODHS
`aamsaA31“,
`
`8
`
`NJIMNELE
`
`d'fi153M
`
`I‘vzoi76v3‘MamNiViNnow
`
`
`
`'ouI‘gmmsuad
`
`00?:918MoldIslamxed0am
`
`
`
`
`
`Z917Z'9128ZWHOWOIDION
`
`mm?
`
`p1.
`
`S.4
`its
`13:!
`t4
`1:1:
`
`Ll.
`r—‘a
`1.”; 0
`
`‘xj
`
`0w3
`
`:".
`:1»
`$13
`32:1 (I
`
`

`

`EXHIBIT B
`
`

`

`[0123quoN‘anopqu
`
`
`9917Z'9IZ8Z
`
`NODI'IIS
`
`
`
`133815VINHOdI‘IVD108
`
`
`
`HELLNEI)AH'I'IVA
`
`I H‘
`
`D12Pu3MEHANIVanOW
`
`[Qua
`
`1170*76v
`
`
`
`'0111‘Qmmsuag
`
`._.
`OD—l
`b.)
`
`O"
`
`U ga
`
`nF’-
`(DH
`"U
`
`E(I)H
`
`(D
`
`NOO
`
`w!
`
`

`

`USPTO.
`K.’
`3.
`E 4
`‘
`
`1
`
`
`
`Receipt
`
`'
`
`‘
`
`.
`
`Page 1 of2
`
`United States Patent and Trademark Office,
`
`Home I Site Index I Search I Guides I Contacts I eBusiness I eBiz alerts I News I Help
`
`Electronic System for'Trademark Trials and Appeals
`
`
`
`I Receipt
`'
`Your submission has been received by ihe USPTOr
`The content of your submission is listed below.
`You may print a copy of this receipt for your records.
`
`ESTTA Tracking number: ESTTA670853
`
`Filing date:
`
`‘
`
`05/06/2015
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Change of Correspondence Address
`
`
`
`
`.
`
`
`
`
`Plaintiff
`
`.
`
`_
`
`i
`
`
`
`
`Please change the correspondence address for the above party here as follows:
`
` Linda G. Henry, Esq.
`
`Fenwick & West LLP
`
`
`
`2535 Garcia Avenue
`
`
`
`
`
`Old Correspondence Address
`MountainView, CA 94043
`
`UNITED STATES
`trademarks@fenwick.com
`
`
`
`Linda G. Henry, Esq.
`Fenwick & West LLP
`
`
`
`
`
`New Correspondence Address
`
`801 California Street Silicon Valley Center
`Mountain View, CA 94041
`UNITED STATES
`trademarks@fenwick.com Phone:(650) 988-8500
`
`
`
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at
`their address record by First Class Mail on this date.
`
`I’lfi‘h'HRQfiQ nqm‘n onv/nnm/reneint ianinamer—RF‘C7J—IQQTMQKC—SQl
`
`'
`
`S/G/WH 4
`
`

`

`USPTO. ESTTA. Receipt
`I,
`1
`
`.
`
`”
`
`.
`
`Page 2 of2
`
`' Respectfully submitted,
`/lgh/,
`4
`V
`.
`.
`Linda G. Henry, Esq.
`trademarks@fenwick.com _
`05/06/2015
`
`Return to ESTTA home page Start another ESTTA filing
`
`I
`
`.HOME I INDEXI SEARCH | eBUSlNESS I CONTACT US I PRIVACY STATEMENT
`
`hfi'n-Hpcfi‘a 11¢th anv/r‘nm/rpnpinf §en95nqmp=RFF7UO0Tl\/1’OT(("‘_<O1
`
`(IKI’WH C
`
`

`

`USPTO. ESTTA. Change of Correspondence Address. Validate and Submit
`- ‘
`.
`
`'
`
`Page 1 of 2
`
`
`
`United States Patent and Trademark Office
`
`Home I Site Index I Search I Guides I Contacts I eBusiness I eBiz alerts I News I Help
`
`I Electronic System for Trademark Trials and Appeals
`Change of Correspondence Address.
`__
`Navlgallon: M -W - In. 1.; - Validate
`
`
`
`ESTTA v.3.3
`
`Validate and Submit
`
`Review the information below and click on the "Submit" button if the information is correct. If you need
`to edit any information, go back to proper screen using navigation facilities on this web page and make
`your correction(s).
`DO NOT USE THE BACK BUTTON ON YOUR BROWSER.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD,
`
`Change of Correspondence Address
`
`
`
`
`Plaintiff
`
`.
`
`
`
`Plamtlff
`
`Intuit Inc.
`
`Please change the correspondence address for the above party here as follows:
`
`
`
`Linda G. Henry, Esq.
`Fenwick & West LLP
`
`
`
`2535 Garcia Avenue
`
`
`
`
`
`Old Correspondence Address
`Mountain View, CA 94043
`
`UNITED STATES
`trademarks@fenwick.com '
`
`
`
`
`
`
`
`Linda G. Henry, Esq.
`Fenwick & West LLP
`
`801 California Street Silicon Valley Center
`New Correspondence Address
`Mountain View, CA 94041
`
`
`
`'
`UNITED STATES
`trademarks@fenwick.com Phone:(650) 988—8500
`
`
`-
`
`Certificate of Service
`
`The undersigned hereby certifies thata copy of this paper has been served upon all parties, at
`their address record by First Class Mail on this date.
`
`httnr//estta.usntn.anv/cna/wisn
`
`I
`
`I
`
`s/mm R
`
`

`

`USPTO. ESTTA. Change of Correspondence Address.. Validate and Submit
`
`Page 2 of 2 .
`
`Respectfully submitted,
`/lgh/
`‘
`Linda G. Henry, Esq.
`trademarks@fenwick.com
`05/06/201 5
`
`I
`
`.HOME [ INDEX! SEARCH I eBUSINESS I CONTACT US I PRIVACY STATEMENT
`
`05/05/2015 05:14 PM EDT
`
`htfn-Heqh‘n nen’m onv/nnn/w inn
`
`“4/901 <
`
`

`

`PROOF OF SERVICE BY MAIL
`
`I declare that:
`
`I am employed in the County of Santa Clara, California.
`
`I am over the age of eighteen years and not a party to the within cause; my business
`
`address is Fenwick & West LLP, Silicon Valley Center, 801 California Street, Mountain View, CA
`. C‘
`94041. On May 2. 1 , 2015, I served via United States Postal Service First-Class Mail the within Change»
`
`of Correspondence Address on the interested parties in said cause, by placing a true copy thereof enclosed
`
`in a sealed envelope with postage thereon fully prepaid, in the United States mail at Mountain View,
`
`California, addressed as follows:
`
`Pensmore, Inc.
`
`10130 Perimeter Pkwy Ste 200
`Charlotte, North Carolina 28216-2465
`
`I declare under penalty of perjury that the foregoing is true and correct, and that this
`
`declaration was executed at Mountain View, California, this
`
`day of May 2015 .
`
`
`
`\mdfhifl 3 ‘h‘ifimvu
`
`\
`
`Linda G. Henry
`
`

`

`-1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark App. Ser. No. 86349466
`Mark: IntuitivePay
`
`
`Intuit Inc,
`
`Opposer,
`
`I
`
`' I
`
`vs.
`
`»
`
`Opposition No. 91221529
`
`Pensmore, Inc. dba Pensmore Software ,
`
`Applicant.—
`I
`
`'
`
`)
`
`AMENDED NOTICE OF OPPOSITION
`
`Opposer, Intuit Inc. and its related companies (hereinafter collectively “Intuit” or “Opposer”), a
`
`Delaware corporation having a principal place of business at 2535 Garcia Avenue, Mountain View,
`
`California 94043, believes it will be damaged by registration of the mark shoWn in Application Serial No.
`
`86349466 and hereby opposes the same in all International Classes, alleging as grounds for its opposition
`
`that: .
`
`1 .-
`
`As is evidenced by the publication of the “IntuitivePay” mark in the Official Gazette in the I
`
`December-'16, 2014, issue, Applicant Pensmore, Inc. dba Pensmore Software (hereinafter “Pensmore” or
`
`“Applicant” ) seeks to register “IntuitivePay” as a service mark for “payment processing services, namely,
`
`credit card and debit card transaction processing services; pre—paid purchase-Card services, namely,
`
`processing electronic payments through pre-paid cards; providing electronic processing of ACI-I and credit
`
`card transactions and electronic payments via a global computer networ ” in International ClaSs 36.
`
`Applicant’s application was filed on July 28, 2014 under Section 1(a) of the Trademark Act, claiming a
`
`first use date and first use in commerCe date of March 1, 2014.
`
`2.
`
`Intuit owns registrations for its INTUIT and family of INTUIT-based marks for a wide
`
`range of goods and services including goods and services for and/or related to the services identified in
`
`Pensmore’s application.
`
`

`

`Intuit is the owner ofnumerous U.S. trademark registrations that include or comprise the
`3.
`mark lNTUlT as follows:
`
`Reg. No. 1821148 for. “computersoftware foruse in the fieldofpersonal and
`' INTUIT,
`business finance and accounting and user'manuals ior use therewith all sold as a unit” in International
`Class 93, registered onthe Principal Register On February 15, 1994;
`
`INTUIT, U.S. Reg. No. 1840504 for “envelopes, blank checks, business forms, printed forms, and
`' partially printed 'fonns’I’ in International Class 16, registered on“,the Principal Register on June 21, 1994;
`INTUIT, ULS. Reg. No. 1944875 for “financial information provided by electronic means"; in,
`International Class 36, registered on the 'PrinCip‘al Register-on January 2, 1996;
`INTUIT, U.S. Reg. No. 2729118 for “clothing, narhely, t-shirts, jackets, dress shirts, polo shirts,
`hat-s and/baseball caps" in International Class 25, registered on the'Principal Register on June 24, 2003;
`
`INTUIT, U.S. Reg. No. 2729119 for “computer software for database'and data. management,
`. namely, computer software for inventory management, estimating, job costing, employee time tracking,
`
`customer relationship management, business operations management and project management and
`instructional-manuals sold as a unit; computer—software used for the electronic exchange of accounting,
`
`financial, customer, contact, product and business data; business management softWare for use inavariety
`
`of industries, namely real estate and property management, automotive service and repair management,
`
`construction management, health care practice management, law firm management, non-profit and public
`
`sector organization management, retail and restaurant management, and travel'services’ management and
`
`instructional manuals sold as a unit; computer software for use in distributing, installing and updating
`other applications” in International Class 9, registered on "the Principal Register on June 24, 2003;
`INTUIT,
`lieg. No. 2729121 for “online business directories featuring financial advisers,
`accountants, bookkeepers and third-party vendors; online ordering services in the field of financial and
`accounting products and services; operating online marketplaces for sellers of goods and services;
`
`dissemination of advertising for others via the Internet; association and membership services, namely
`
`Mark: IntuitivePay
`Serial No.: 86349466
`Opposition No. 91221529
`Opposer:
`intuit Inc.
`
`1
`
`2
`
`

`

`promoting the interests of, and providing business referral, marketing and business management services to
`‘
`f
`r
`member accounting and business management professionals; arranging and conducting business
`
`conferences and trade shows in the fields of finance, payroll and tax preparation and processing,
`
`acCounting and business management; providing business management information on a wide varietyof
`
`topics via electronic means; association and membershipservices, namely promoting the interests of, and
`
`providing business referral, marketing and technical assistance to member software developers; online
`
`directories featuring sofiware developers; arranging and conductingbu’siness conferences and trade shows --
`
`in the field" of software development; database management services by electronic means” in International
`
`Class 35, registered on the Principal Register on June 24, 2003;
`
`INTUIT, UIS. Reg. No. 2729122 for “catalogs in the field of finance and-accounting, office
`
`supplies and desktop software; endorsement and ink stamps; rubber stamps; stationery paper; address and
`mailing labels; binders; plastic bags fer making bank depOSits; business cards; cards bearing universal
`
`greetings; check holders; file boxes for storage of business and personal checks andvrecords; tax forms” in >
`International Class 16, registered on the Principal Register on June 24, 2003;
`1NTUIT,U.S. Reg. No. 2729358 for “electronic storage offiles and documents; storage of
`electronic media, namely, images, text, audio, financial and contact data; storage services for
`archiving databases, images and otherelectroni'c data” in International Class 39, registered on the Principal
`
`Register. on June 24, 2093:
`INI‘UIT, U.S. Reg. No. 2729359 for “computer software for use in tax planning, tax-preparation
`
`and filing; computer software for use in professional tax practice management” in International Class 9,
`registered on the Principal Register on June '24, 2003;
`
`INTUIT, U.S. Reg. No. 2729360 for “financial services namely, Online banking, bill payment and
`
`payment processing by electronic means” iii International Class 36, registered on the Principal Register on
`
`June 24, 2003;
`
`INTUIT, U.S. Reg. No. 2763973 for “printing services; offset printing services; stationery printing
`
`-
`.
`Mark: lntuitivePay
`Serial No..: 86349466
`Opposition No. 91221529
`' Qpposcr;
`Intuit Inc.
`
`‘
`
`3
`
`

`

`services; customized printing ofcompany names and logos forpromotional and advertising purpOses on
`the goods ofothers” in International Class40,,registered on the I’rincipal Register on September 16,2003;
`INTUIT, U.S. Reg. 'No. 2771349 for “administration of business payroll and payroll preparation 4
`
`services for others; tax preparation services; filing oftax» assessments; promoting public awareness oftax
`preparationand filing services for others; business invoicing services; providing business services,\namely
`business fiicorporation services in the nature of preparation and filing of incorporation applications and
`
`articles of incorporation for others” in International Class 35 and “administration of employee benefits for
`
`others” in International Class '36, registered on the Principal Register on October 7, 2003;
`I INTUIT, U.S. Reg. No. 2771743 for “computer software
`hardware for use in transaction
`
`processing, accounting, receipt printing, customer relationship management, inventory management and
`
`operations management, all in the field of point of sale transactions and retail management, and user.
`manuals sold as a unit therewith; cash drawers; computer printers; point of sale printers and terminals;
`credit card and debit card readers and. scanners; bar cede readers and scanners; credit card and transaction
`
`processing terminals and computer hardware” in International Class 9, registered on the Principal Register W
`
`on October 7, 2003;
`
`INTUIT,‘U.S. Reg. No. 2920336 for “technical support services, namely troubleshooting of
`- computer hardware and software problems, data conversion of computer program data or information;
`
`computer software installation and setup services; computer software and systems integration services;
`
`computer services, namely, data recovery serviCes; computer software installation and configuration
`
`support” in International Class 42 and “monitoring of computer systems for security purposes; computer -
`
`systems security services, namely password removal and protection; security printing, namely-encoding
`
`identification information 'on valuable documents’-’ in International Class 45, registered on the Principal
`
`Register on January 25, 2005;
`
`INTUIT, U.S. Reg. No. 3039919 for “charitable services, namely providing volunteer services to
`
`non-profit organizations ina wide variety of fields; providing computer software, business management
`
`»
`
`Mark: Inmitichay
`Serial No.: 86349466
`Opposition No. 91221529
`Opposer:
`Intuit ‘Inc.
`
`4
`
`

`

`and financial services, tax preparation and filing services,xand training and technical support to non-profit
`organizations, individuals and small businesses” in International Class 35 and “philanthropic services
`
`concerning monetary donations” in International Class 36, registered on the Principal Register on January'
`
`10, 2006;
`
`INTUIT (Stylized), U.S. Reg. No. 3850588 for “computer software for use in personal and
`
`business finance and accounting, transactiOn processing, tax preparation and planning, tax filing, business
`process management, and financial planning and user manuals fer use therewith and sold as a unit;
`
`computer software 'for use in professional tax practice management; computer software for database and
`
`data management for general use; computer software for inventory management, estimating, job costing,
`
`employee time tracking, business Operations management and project management; computer software for
`
`data aggregation and reporting; computer software for online backup of electronic files; computer software ,
`
`and computer hardware for use in point-of-sale transactions, transaction processing, receipt printing and
`retail operations management; computer softwarefor administering employee benefits and payroll;
`
`V
`
`comppter software for managing health care information, prescription information, mediCal history,
`medical billing, patient records, and other medical records; computer software for managing medical r
`
`insurance, medical payments, expenses and billing; software development tools and templates for data
`
`management and data integration; computer software for collaboration and sharing of data with others;
`customer relationship management (CRM) software; enterprise resource planning (ERP) software;
`computer software used for'the electrdnic eXChange ofaccounting, financial, customer, contact, product
`and buSiness data; business management software for use in real estate and property management, ’
`automotive service and repair management, construction and building management, health care practice
`management, law firm management, non—profit and public sector organization management, retail and
`restaurant management, and travel services management; computer software for use in distributing,
`
`installing and updating other applications; computer hardware; computer peripherals. cash drawers; .
`
`computer printers; point of sale computer printers and terminals; credit card and debit card readers and
`
`Mark: IntuitivePay '
`Serial No; 86349466
`Opposition No. 91221529
`Opposer:
`Intuit Inc,
`
`5
`
`

`

`scanners; bar code readers and scanners; credit card point of sale and transaction processing terminals and
`computer hardware” in International Class 9, registered on the Principal Register—on September 21, 2010;
`
`INTUI'l‘ (stylized), U.S. Reg. No, 3850589 fer "‘printedjrnaterials, namely, deposit Islips, direct
`deposit forms, disposable deposit bags, postcards, return address labels, binders, blank journal books,
`
`0
`
`blank paper notebooks, blank writing journals; envelopes, blank bank checks, business forms, accounting
`forms, printed forms and partially printed forms; catalogs in the field of finance and accounting, catalogs *
`
`featuring desktop software; office supplies, namely, presentation folders, return address stamps, des-k sets;
`-
`rubber endorsement and ink stamps; rubber stamps; stationery paper; address and‘mailing labels; binders;
`business cards; cards bearing universal greetings; checkbook holders; file boxes fer storage of business and
`
`personal checks and records; partially printed and printed tax forms; inStruct’io'n manuals in the field of
`
`personal and business financial management; uscr manuals in the fields of computer software, computer
`
`. hardware, and point-of—sale and transaction processing terminals” in International Class 16, registered on
`J
`
`the Principal. Register on September 21 ,‘2010;
`
`/
`
`lNTUIT (s‘tylized).,‘U.S. Reg. No. 3850590 for “providing business management information. on a
`wide variety of topics; providing business management consulting services; providingtax consultation
`services; providing tax information; online business directories featuring financial advisers, accountants,
`bookkeepers, and third—party vendors; online ordering services in the field of financial and accounting
`
`products and services; dissemination of advertising for others via computer‘and communication networks;
`association and membership. services, namely, promoting the interests of, and providing business referral,
`marketing and business management services to member accounting and business management
`
`professionals; arranging and conducting business conferences and trade shows in the fields of accounting
`
`and business management, payroll processing, tax preparation and processing; association and membership
`
`services, namely, promoting the interests of, and providing business management and marketing assistance
`
`to, member software developers and business referrals in the field of software development; online.
`
`business directories featuring software developers and software applications; arranging and conducting-
`
`Mark: IntuitivePay
`Serial No: 86349466
`Opposition No. 91221529
`Opposer:
`intuit Inc.
`
`6
`
`

`

`business conferences and trade shows in the field of software development; providing data and database
`management services; database management services by electionic means; providing information and
`
`consultation in the field of data management; providing information in the nature of news, business and
`marketing advice, and [expert opinions for professionals in the fields of accounting, small business
`
`management, tax preparationrta'x‘ filing and tax planning; providing tracking services of commercial
`transactions of others via computer and communication networks” inllnt’erna'tional Class 35, registered on
`the Principal Register on September 21, 2010;
`INTUIT (stylized), U.S. Reg. No. 3850591- f