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+Hdowk Vdylqjv Dffrxqw Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA947366 Filing date: 01/14/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91241972 Party Defendant Associated Banc-Corp Correspondence HEIDE R THOLE Address REINHART BOERNER VAN DEUREN SC 1000 N WATER ST SUITE 1900 MILWAUKEE, WI 53202 UNITED STATES [email protected] 414-298-8185 Submission Motion to Amend/Amended Answer or Counterclaim Filer's Name Daniel E. Kattman Filer's email [email protected] Signature /dek/ Date 01/14/2019 Attachments HSA PLUS Answer to Amended Notice of Opposition - 91241972.pdf(76727 bytes ) HSA PLUS Answer Exhibits 91241972.pdf(1981157 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Webster Financial Corporation, ) ) Opposition No.: 91241972 Opposer, ) Trademark: HSA PLUS ) Serial No.: 87328605 v. ) Filing Date: February 8, 2017 ) Published: December 26, 2017 Associated Banc-Corp., ) ) Applicant. ) APPLICANT’S ANSWER TO OPPOSER’S AMENDED NOTICE OF OPPOSITION Associated Banc-Corp. (“Applicant” or “Associated Bank”), by its attorneys, Reinhart Boerner Van Deuren s.c., respond to the allegations set forth in Webster Financial Corporation’s (“Opposer” or “Webster”) Amended Notice of Opposition as follows. 1. Opposer holds approximately $22 billion in assets, and provides business and consumer banking, mortgage, insurance, trust, investment and other financial services. Webster Bank, National Association, is a federally-chartered national bank and a wholly-owned subsidiary of Complainant. Webster Bank, National Association, is also headquartered in Waterbury, Connecticut. HSA Bank is a division of Webster Bank, National Association. HSA Bank is headquartered in Sheboygan, Wisconsin. ANSWER: Applicant is presently without information or knowledge sufficient to assess the allegations set forth in Paragraph 1 and therefore denies the claims set forth in Paragraph 1. 2. Since at least as early as December 10, 2003, Opposer, through its licensee, Webster Bank, National Association, and its predecessor, through its licensee, Webster Bank, National 40903031 Association, and its predecessor entity, State Bank of Howards Grove, has exclusively, continuously, and on a widespread basis used and promoted the HSA BANK® mark in commerce. HSA Bank is one of the largest administrators of health savings accounts in the United States with, over 35,000 employers, 2.6 million members and $6.9 billion in assets. Opposer provides the HSA BANK services in all fifty states, the District of Columbia, Puerto Rico, Guam, and the U.S. Virgin Islands. ANSWER: Applicant is presently without information or knowledge sufficient to assess the allegations set forth in Paragraph 2 and therefore denies the claims set forth in Paragraph 2. 3. Opposer regularly advertises its HSA BANK services via the Internet and print advertisements. Moreover, in its nationwide advertising, Opposer has featured the HSA BANK brand in a variety of media including, without limitation: print ads in national publications directed to the health insurance and human resources markets, such as Benefits Selling magazine (circulation 35,700) and Benefits Selling CDHC Supplement (circulation 91,000), HR Management magazine (circulation 32,000), Employee Benefits Advisor magazine (circulation 45,000), Agent Sales Journal magazine (circulation 50,000), and Health Insurance Underwriter magazine (circulation 30,000); distribution of print and electronic brochures and newsletters to agents, health plans, third party administrators, and other customers across the United States; educational seminars in at least thirty (30) different cities and many more via the Internet; national trade show sponsorships, Internet banner ads and Internet links on other websites to www.hsabank.com. See Exhibit 1. ANSWER: Applicant is presently without information or knowledge sufficient to assess the allegations set forth in Paragraph 3 and therefore denies the claims set forth in Paragraph 3. 4. Opposer owns United States Registration Nos. 3161483, 3274343, and 5145798 40903031 2 for HSA BANK. The services set forth in these registrations are as follows: Banking services; internet and on-line banking services; administration of savings accounts; bill payment services; check processing; debit card services; electronic cash transactions; electronic debit transactions; electronic payment, namely, electronic processing and transmission of bill payment data; electronic transfer of money; financial information provided by electronic means; assisting others with the completion of financial transactions for stocks, bonds, securities and equities; providing on-line financial calculators; savings account services; health savings account services, namely, providing banking services and savings account administration for consumer-driven health care plans and defined contribution health care plans; custodial services, and trustee services for health savings accounts. Online banking services accessible by means of downloadable mobile applications; administration of flexible spending accounts, limited-purpose health flexible spending accounts, health reimbursement arrangements, limited-purpose health reimbursement arrangements, dependent care flexible spending accounts, health savings accounts, transportation fringe benefit plans, and other tax advantaged accounts; expense tracking and receipt tracking; account administration for Section 125 cafeteria plans; providing information in the fields of flexible spending accounts, limited-purpose health flexible spending accounts, health reimbursement arrangements, limited- purpose health reimbursement arrangements, dependent care flexible spending accounts, health savings accounts, transportation fringe benefit plans, and other tax advantaged accounts via various means, which may include but are not limited to, the Internet, global networks, cloud computing, social media, blogs, telephone, in person, mail, e-mail and facsimile; third-party benefit administration services, namely, administration of flexible spending accounts, limited-purpose health flexible spending accounts, health reimbursement arrangements, limited-purpose health reimbursement arrangements, dependent care flexible spending accounts, health savings accounts, transportation fringe benefit plans, and other tax advantaged accounts; administration of benefit plans concerning group insured and/or self-insured benefits and/or individually insured and/or self-pay benefits, namely, enrolling participants, automatically verifying eligibility, adjudicating claims, processing payments, transferring funds, and updating records of employee expenditures, all via various means which may include but are not limited to, communications networks using electronically encoded cards operating in conjunction with employee benefit plans concerning insurance and self-insurance; providing employee benefits and/or benefit management services to third party administrators and employers, namely, providing program development and aiding administration of benefit plans for others concerning insurance, self-insurance and/or self-pay benefits; providing employee benefits and/or benefit management services for others concerning insurance, self- insurance and/or self-pay benefits which may include but are not limited to, third party administrators, employers, and governmental payers, namely, providing payment processing services and processing electronic payments made 40903031 3 through various means which may include but are not limited to, payment cards and ACH for various types of payments which may include but are not limited to, commuter expenses, tuition reimbursement, dependent care, flexible spending accounts and other tax advantaged accounts; administration of insured, self-insured and self-pay benefit plans; and providing educational information in the field of employee benefits and/or benefit management services concerning group insured and/or self-insured benefit plans and/or individually insured and/or self-pay benefit plans Webster Financial Corporation also owns Registration Nos. 4899221, 4923629, and 4905859 for HSA BANK OWN YOUR HEALTH; Registration Nos. 5051037, 5051038, 5283724, 5283725, and 5283726 for HSABANK OWN YOUR HEALTH; Registration No. 4056573 for BANCO HSA; Registration No. 3914480 for EVERYDAY HSA (collectively, “Opposer’s Registered Trademarks”). ANSWER: Applicant admits only that current U.S. Patent and Trademark Office records list Webster Financial Corporation as the owner of trademark Registration No. 3161483 for HSA BANK (the “ ‘483 Registration”); Registration No. 5145798 for HSA BANK (the “ ‘798 Registration”); and Registration No. 3274343 for (the “ 343 Registration”) (collectively, the “HSA Registrations”). Applicant denies any legal or factual conclusions, stated or implied, by the allegations set forth in Paragraph 4. The U.S. Patent and Trademark Office records indicate that the HSA Registrations cover the following services: ‘483 Registration and ‘343 Registration: Banking services; internet and on-line banking services; administration of savings accounts; bill payment services; check processing; debit card services; electronic cash transactions; electronic debit transactions; electronic payment, namely, electronic processing and transmission of bill payment data; electronic transfer of money; financial information provided by electronic means; assisting
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