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Estta836201 07/28/2017 in the United States Patent And Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA836201 Filing date: 07/28/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91228092 Party Plaintiff Intuit, Inc. Correspondence KATHERINE M BASILE Address REED SMITH LLP PO BOX 488 PITTSBURGH, PA 15230 UNITED STATES Email: [email protected], [email protected], kkersh- [email protected], [email protected] Submission Testimony For Plaintiff Filer's Name Katherine M. Basile Filer's email [email protected], [email protected], [email protected], [email protected], [email protected] Signature /Katherine M. Basile/ Date 07/28/2017 Attachments Todd Santos Deposition Transcript PUBLIC REDACTED.pdf(1267909 bytes ) Todd Santos Depo Exhibits - Batch 1 Exhs. 001-010.pdf(5611673 bytes ) PUBLIC REDACTED Deposition of: Todd Santos June 14, 2017 In the Matter of: Intuit Inc. vs. All in Bits, Inc. Opposition No. 91228092 PUBLIC REDACTED Todd Santos June 14, 2017 Intuit Inc. vs. All in Bits, Inc. Page 1 1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 2 BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 3 4 Intuit Inc., 5 Opposer, 6 vs. Opposition No. 91228092 7 All in Bits, Inc. D/b/a Tendermint, 8 Applicant. 9 10 11 12 13 14 TESTIMONIAL DEPOSITION OF TODD SANTOS 15 16 17 18 19 Date and Time: Wednesday, June 14, 2017 9:39 a.m. 20 21 Location: Reed Smith LLP 22 1510 Page Mill Road, Suite 110 Palo Alto, California 94304 23 24 Reported by: Cammi R. Bowen, CSR-13492 25 Veritext Legal Solutions 800.808.4958 PUBLIC REDACTED 770.343.9696 Todd Santos June 14, 2017 Intuit Inc. vs. All in Bits, Inc. Page 2 1 A P P E A R A N C E S: 2 For the Opposer: REED SMITH LLP 101 Second Street 3 Suite 1800 San Francisco, CA 94105 4 Tel: (415) 659-4928 E-mail: [email protected] 5 BY: KATRINA M. KERSHNER, ESQ. 6 REED SMITH LLP 1510 Page Mill Road 7 Suite 110 Palo Alto, CA 94304 8 Tel: (650) 352-0500 E-mail: [email protected] 9 BY: KATHERINE M. BASILE, ESQ. 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Veritext Legal Solutions 800.808.4958 PUBLIC REDACTED 770.343.9696 Todd Santos June 14, 2017 Intuit Inc. vs. All in Bits, Inc. Page 3 1 INDEX 2 EXAMINATIONS: PAGE 3 By Ms. Kershner............................... 15 4 5 EXHIBITS 6 Exhibit No. Description Ident. 7 Exhibit 1 Opposer Intuit, Inc.'s Notice of Testimonial Deposition of Todd 8 Santos............................. 14 9 Exhibit 2 TechCrunch40 online publication dated September 17, 2007........... 28 10 Exhibit 3 Printout from the U.S. Patent and 11 Trademark Office TESS database regarding the trademark 12 registration for "MINT" and design............................. 29 13 Exhibit 4 Trademark Assignment for Mint 14 Software, Inc., execution date 12/03/2010......................... 34 15 Exhibit 5 Intuit Web page regarding 16 "Featured Products & Services" Bates-stamped INTUIT_000063 17 through 000081..................... 35 18 Exhibit 6 Printout from the Mint.com Web site............................... 36 19 Exhibit 7 Printout from the Mint.com Web 20 site of a MintLife article......... 39 21 Exhibit 8 Printout from the Mint.com Web site of a MintLife article......... 39 22 Exhibit 9 Printout of a New York Times 23 article entitled "Should You Trust Mint.com?"................... 40 24 25 Veritext Legal Solutions 800.808.4958 PUBLIC REDACTED 770.343.9696 Todd Santos June 14, 2017 Intuit Inc. vs. All in Bits, Inc. Page 4 1 EXHIBITS - CONTINUED 2 Exhibit 10 Online article from Money Crashers describing Mint and the 3 features of Mint................... 40 4 Exhibit 11 Article from Business Insider published in January of 2015....... 40 5 Exhibit 12 Article from PC Magazine 6 announcing that Mint as PCMag's Editors' Choice for personal 7 finance............................ 40 8 Exhibit 13 U.S. Patent and Trademark Office TESS database showing trademark 9 registration number 5084560........ 49 10 Exhibit 14 Document Bates-stamped INTUIT_000157 through 159.......... 52 11 Exhibit 15 Printout from the Web site 12 apple.com.......................... 53 13 Exhibit 16 Article from USA TODAY, dated January 2015....................... 54 14 Exhibit 17 Printout from the U.S. Patent and 15 Trademark Office TESS system, showing the registration for 16 "MINTLIFE"......................... 57 17 Exhibit 18 Printout from the U.S. Patent and Trademark Office TESS system, 18 showing the registration for "MINT"............................. 57 19 Exhibit 19 Document Bates-stamped 20 INTUIT_000091 through 000093....... 58 21 Exhibit 20 Document entitled "Intuit to Acquire Check," dated May 27, 22 2014............................... 63 23 Exhibit 21 Document Bates-stamped INTUIT_000045 through 47........... 64 24 25 Veritext Legal Solutions 800.808.4958 PUBLIC REDACTED 770.343.9696 Todd Santos June 14, 2017 Intuit Inc. vs. All in Bits, Inc. Page 5 1 EXHIBITS - CONTINUED 2 Exhibit 22 Printout of the U.S. Patent and Trademark Office's record for 3 Intuit's "MINT BILLS" registered trademark.......................... 66 4 Exhibit 23 Printout from the U.S. Patent and 5 Trademark Office's TESS system showing Intuit's trademark 6 registration for "MINT" for payments-related software and 7 services........................... 67 8 Exhibit 24 Screenshot of the Mint mobile application........................ 67 9 Exhibit 25 Printout of an article from 10 wired.com, dated December of 2014.. 71 11 Exhibit 26 Printout of content on lifehacker.com..................... 71 12 Exhibit 27 U.S. Patent and Trademark Office 13 TESS database showing Intuit's trademark application for "MINT" 14 for lending-related services....... 73 15 Exhibit 28 Printout from the Mint Web site.... 74 16 Exhibit 29 Printout from the Mint Web site.... 77 17 Exhibit 30 Printout from the Mint Web site.... 78 18 Exhibit 31 Blog post from the Mint Web site, dated February 2009................ 79 19 Exhibit 32 Printout of iPhone screenshot 20 showing the Mint mobile application........................ 81 21 Exhibit 33 MintLife blog posting, dated 22 January 30th, 2014................. 82 23 Exhibit 34 Mint Web site article Bates-stamped INTUIT_000353 24 through 366........................ 84 25 Veritext Legal Solutions 800.808.4958 PUBLIC REDACTED 770.343.9696 Todd Santos June 14, 2017 Intuit Inc. vs. All in Bits, Inc. Page 6 1 EXHIBITS - CONTINUED 2 Exhibit 35 PC Magazine Web site article Bates-stamped INTUIT-000001 3 through 5.......................... 85 4 Exhibit 36 Article from CryptoCoinsNews, Bates-stamped INTUIT_000321 5 through 327........................ 85 6 Exhibit 37 Article from coinbuzz.com, Bates-stamped INTUIT_000305 7 through 307........................ 87 8 Exhibit 38 Article from coindesk.com, Bates-stamped INTUIT_000308 9 through 312........................ 87 10 Exhibit 39 Printout from businessinsider.com, 11 Bates-stamped INTUIT_000299 through 304........................ 88 12 Exhibit 40 Printout from venturebeat.com, 13 Bates-stamped INTUIT_000291 through 298........................ 88 14 Exhibit 41 Series of news articles, 15 Bates-stamped INTUIT_000371 through 376, 367 through 370, 385 16 through 388, 381 through 384, 276 through 279, 257 through 260, 249 17 through 254, 240 through 245....... 89 18 Exhibit 42 Printout from the Mint.com Web site, Bates-stamped INTUIT_000094 19 through 96......................... 95 20 Exhibit 43 Printout from the Mint.com Web site, Bates-stamped INTUIT_000097 21 through 98......................... 96 22 Exhibit 44 Printout from the Mint.com Web site, Bates-stamped INTUIT_000099 23 through 100........................ 96 24 Exhibit 45 Printout from mint.com regarding Mint Credit Monitor................ 97 25 Veritext Legal Solutions 800.808.4958 PUBLIC REDACTED 770.343.9696 Todd Santos June 14, 2017 Intuit Inc. vs. All in Bits, Inc. Page 7 1 EXHIBITS - CONTINUED 2 Exhibit 46 Printout from mint.com regarding Mint Help.......................... 98 3 *** INTRODUCED IN CONFIDENTIAL SECTION *** 4 Exhibit 47 Mint ads throughout time, 5 Bates-stamped INTUIT_000208 through 237........................ 105 6 Exhibit 48 Printout from the Mint.com Web 7 site, Bates-stamped INTUIT_000202 through 204........................ 106 8 Exhibit 49 Printout from the 9 twitter.com/mint Web site, Bates-stamped INTUIT_000188 10 through 190........................ 108 11 Exhibit 50 U.S. Patent and Trademark Office TESS database record for "EMINT"... 115 12 Exhibit 51 Withdrawal of Application filed 13 with the Trademark Trial and Appeal Board for "EMINT"........... 116 14 Exhibit 52 Printout from the U.S. Patent and 15 Trademark Office Web site TESS system of a trademark application 16 for a design mark for "EMINT"...... 116 17 Exhibit 53 Letter of protest filed by Intuit against a trademark application 18 for the mark "EMINT" and its design mark........................ 117 19 Exhibit 54 Office Action from the U.S. 20 Patent and Trademark Office regarding EMINT.................... 118 21 Exhibit 55 U.S. Trademark Office TESS 22 database showing the trademark application "DIGITALMINT" by 23 applicant Red Leaf Chicago, LLC.... 120 24 Exhibit 56 Documents regarding a U.S. Trademark application for 25 DIGITALMINT........................ 121 Veritext Legal Solutions 800.808.4958 PUBLIC REDACTED 770.343.9696 Todd Santos June 14, 2017 Intuit Inc. vs. All in Bits, Inc. Page 8 1 EXHIBITS - CONTINUED 2 Exhibit 57 Printout from the U.S. Patent and Trademark Office TESS database 3 showing the record for the trademark application for the 4 mark "MINTLINK" by the applicant MINTLINK LLC....................... 122 5 Exhibit 58 Withdrawal of trademark 6 application for "MINTLINK" by MINTLINK LLC....................... 122 7 Exhibit 59 Printout from the U.S. Patent and 8 Trademark Office Web site TESS database showing the trademark 9 application for the mark "MINTCHIP" by the applicant Royal 10 Canadian Mint...................... 123 11 Exhibit 60 Printout from the U.S. Patent and Trademark Office Web site showing 12 a second application for the mark "MINTCHIP," with a design element 13 by the applicant Royal Canadian Mint..............................
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