| Serial Number | 86320072 |
| Word Mark | ACT-ON |
| Filing Date | Wednesday, June 25, 2014 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Friday, March 11, 2022 |
| Registration Number | 4797992 |
| Registration Date | Tuesday, August 25, 2015 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, June 9, 2015 |
| Goods and Services | Arranging and conducting educational conferences in the fields of marketing, marketing automation, business development, email marketing, and search engine optimization; providing educational services, namely, online non-downloadable webinars and presentations, online non-downloadable live workshops and training seminars, and online non-downloadable on-demand workshops and trainings in the fields of marketing, marketing automation, business development, email marketing, search engine optimization and customer relationship management (CRM) services; development and dissemination of written and online training and educational materials, namely, flyers, user guides, white papers, instructional videos, webinars, newsletters, and articles and information in the foregoing fields of use |
| Description of Mark | The mark consists of two adjacent rectangular shapes with a cut out shape between them appearing as a hyphen. The word "ACT" appears in the left rectangle and "ON" in the right rectangle. The letter "O" in "ON" has a line sticking up from the center of the "O". |
| Goods and Services | Downloadable electronic publications, namely, user guides, quick start guides, user manuals, white papers, newsletters and bulletins in the fields of marketing, online marketing and marketing automation; downloadable instructional videos in the fields of marketing, online marketing, marketing automation, customer lifecycle and customer relationship management |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Marketing services; marketing consultancy; marketing automation services; consulting and advisory services for sales methods, namely, sales demand generation strategy and lead management; marketing consulting and advisory services for online search keyword strategies; marketing consulting and advisory services for marketing and sales metrics; marketing consulting and advisory services for marketing automation technology configuration; marketing consulting and advisory services for marketing automation software integration with customer relationship management (CRM) software systems; marketing consulting and advisory services for marketing automation software integration with software-based business management and process tools; social media advertising publishing; email marketing services; email deliverability marketing services; design and development of business and marketing materials for others; providing program creation and execution for marketing automation services, namely, automated marketing programs and email marketing campaigns; managing business data and data synchronization for others; search engine optimization and customer relationship management (CRM) services; arranging and conducting business conferences in the fields of marketing, marketing automation, business development, email marketing, and search engine optimization; website visitor tracking services |
| Goods and Services | Software-as-a-service (SaaS) services featuring software for customer relationship management and marketing; software-as-a-service (SaaS) services featuring software for storing, managing, tracking, analyzing, and reporting data in the fields of marketing, promotion, sales, customer information management, marketing campaign creation and management, creating custom personalized web site elements, email marketing; software-as-a-service (SaaS) services featuring software for email marketing; providing technical integration services, namely, integrating marketing automation software platforms with webinar presentation management systems and sales force automation (SFA) systems and customer relationship management (CRM) systems; data migration, namely, migrating legacy content from a legacy service provider to a new service provider; email system design and implementation and website design and development for others, namely, providing design and development services for custom electronic stationery for email messages and website landing pages, email templates, email messages with customer content, website landing pages, formatting and creation of custom content, namely, tables, text, images, and design |
| International Class | 009 - Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus. |
| US Class Codes | 021, 023, 026, 036, 038 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 11, 2022 |
| Primary Code | 009 |
| First Use Anywhere Date | Thursday, April 30, 2009 |
| First Use In Commerce Date | Thursday, April 30, 2009 |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 11, 2022 |
| Primary Code | 035 |
| First Use Anywhere Date | Wednesday, July 31, 2013 |
| First Use In Commerce Date | Wednesday, July 31, 2013 |
| International Class | 041 - Education; providing of training; entertainment; sporting and cultural activities. |
| US Class Codes | 100, 101, 107 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 11, 2022 |
| Primary Code | 041 |
| First Use Anywhere Date | Saturday, July 31, 2010 |
| First Use In Commerce Date | Saturday, July 31, 2010 |
| International Class | 042 - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software. |
| US Class Codes | 100, 101 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 11, 2022 |
| Primary Code | 042 |
| First Use Anywhere Date | Saturday, July 31, 2010 |
| First Use In Commerce Date | Saturday, July 31, 2010 |
| Party Name | Act-On Software Inc. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Beaverton, OR 97008 |
| Party Name | Act-On Software Inc. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Beaverton, OR 97008 |
| Party Name | Act-On Software Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Beaverton, OR 97008 |
| Event Date | Event Description |
| Friday, March 11, 2022 | CANCELLED SEC. 8 (6-YR) |
| Tuesday, August 25, 2020 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Tuesday, August 25, 2015 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, June 9, 2015 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, June 9, 2015 | PUBLISHED FOR OPPOSITION |
| Wednesday, May 20, 2015 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, May 5, 2015 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, May 5, 2015 | ASSIGNED TO LIE |
| Monday, April 13, 2015 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Sunday, April 12, 2015 | EXAMINER'S AMENDMENT ENTERED |
| Sunday, April 12, 2015 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Sunday, April 12, 2015 | EXAMINERS AMENDMENT E-MAILED |
| Sunday, April 12, 2015 | EXAMINERS AMENDMENT -WRITTEN |
| Saturday, April 4, 2015 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, April 3, 2015 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, April 3, 2015 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, October 3, 2014 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Friday, October 3, 2014 | NON-FINAL ACTION E-MAILED |
| Friday, October 3, 2014 | NON-FINAL ACTION WRITTEN |
| Thursday, October 2, 2014 | ASSIGNED TO EXAMINER |
| Wednesday, July 2, 2014 | NOTICE OF DESIGN SEARCH CODE E-MAILED |
| Tuesday, July 1, 2014 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
| Saturday, June 28, 2014 | NEW APPLICATION ENTERED IN TRAM |