
| Serial Number | 79208259 |
| Word Mark | AVTEST AV-TEST.ORG |
| Filing Date | Friday, December 16, 2016 |
| Status | 706 - SECTION 71 ACCEPTED |
| Status Date | Thursday, October 23, 2025 |
| Registration Number | 5613998 |
| Registration Date | Tuesday, November 27, 2018 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, September 11, 2018 |
| NOT AVAILABLE | "AV TEST" AND "AV-TEST.ORG" |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Providing user access to computer programs in data networks |
| Goods and Services | Update and maintenance of data in computer based data bases; Business management and organization consultancy for companies; Consultancy services comprising the compilation and systematization of data in computer databases; Professional business consultancy, namely, assisting with the selection of computers; Professional business consultancy, namely, assisting with the use of computers; Providing consumer information and consultancy in the field of trade and business affairs consumer advice; Business project management; Providing an on-line computer database featuring information in business affairs; Compilation and systematization of data in data bases; Compilation of data in computer data bases |
| Description of Mark | The mark consists of the stylized wording "AV TEST" with a shaded rectangle on the right of the "V" and below this, in smaller text, is the wording "AV-TEST.ORG" all within a polygon. |
| Goods and Services | Computer education training in the field of computer software; Computer education training in the field of computer systems; Computer education training in the field of computer application software; Computer education training in the field of computer operation based systems; Providing training courses, in the field of instruction on computer software; Providing training courses, in the field of instruction on the use of computer programs; Computer education training; Publication of texts, excluding advertisement; Providing technical education training courses, in the field of computer security; Publication of texts, other than publicity texts; Publishing services featuring books; Publishing of electronic publications |
| Goods and Services | Data processing programs, recorded on machine-readable data carriers; data processing computer programs recorded; Data processing computer programs downloadable; Computer interface software for use with computer systems to facilitate the integration between the user and the system; Data processing computer programs; Computer programs, namely, subroutines featuring a sequence of program instructions that perform a specific task; Computer program generators for data processing; Computer program modules for data processing; Computer utility programs |
| Goods and Services | Installation of computer networks hardware; Installation of computer systems hardware; Installation of data networking apparatus, namely, bridge routers, firewalls, gateways, hubs, modems, multilayer switches, network interface controllers, proxy servers, repeaters, routers, switches, and wireless access points; Repair and maintenance of computer and telecommunications hardware |
| Goods and Services | Update of computer software; Update of software for data processing; Analytical services with regard to computers, namely, computer system analysis; Analytical services with regard to computer programs, namely, computer programs analysis; Consultancy services in the fields of selection, implementation and use of computer hardware and software systems for others; Consultancy services in the fields of selection, implementation and use of computer security systems for others; Consultancy services in the fields of selection, implementation and use of computer technology for others; Consultancy services in the fields of selection, implementation and use of information technology for others; Consultancy services in the fields of selection, implementation and use of telecommunication technologies for others; Consultancy in the design and development of computer network applications; Consultancy in the design and development of computer networks with different software environments; Consultancy in the design and development of computer software; Consultancy services in the fields of selection, implementation and use of computer systems analyses for others; Consultancy services in the fields of testing of computer application systems for others; Consultancy in the design and development of computer based information systems; Testing of computers; Design and development of computer programming for use on the internet; Design, maintenance and update of data processing programs; Design of computer software; Design of computer systems; Application services provider, namely, hosting of computer software applications for third parties, in the field of data processing; Development of online websites for third parties; Conducting of quality control tests for others; Scientific services, namely, implementation of scientific testing in the field of computer software; Development, programming and implementation of software; Development of computer application software solutions; Design and development of internet security computer programs; Design of computer testing programs for data transfer; Creation of computer programs for data processing; Providing information on computer application systems via a web site; Installation and maintenance of internet access software; Consultancy services, namely, the planning and development of data processing systems for others; Computer programming of software for internet portals, chatrooms, chat lines and internet forums; Computer programming of computer programs; Computer programming of data processing and communication systems; Computer programming of internet security programs; Computer programming of software for internet platforms; Computer programming of software for electronic data processing, (EDP); Computer programming of telecommunications software; Research, development, conception and updating of computer software; Technical consultancy in the field of programming of computers systems; Technical consultancy in the field of computer application software and use of computer programs; Technical consultancy in the field of computer programs; Testing of computer software; Leasing of internet security computer programs; Leasing of computer software for internet access; Maintenance and update of computer software; Maintenance of software for internet access; Recovery of computer data; Consultancy in the field of the Internet of things; Testing of devices made for the Internet of things, namely, microcontrollers for internet of things (IoT) enabled devices; Consultancy in the design and development of child protection software; Testing of child protection software |
| 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 | 6 - Active |
| Class Status Date | Tuesday, May 30, 2017 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Tuesday, May 30, 2017 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Tuesday, May 30, 2017 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | 6 - Active |
| Class Status Date | Tuesday, May 30, 2017 |
| Primary Code | 038 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 041 - Education; providing of training; entertainment; sporting and cultural activities. |
| US Class Codes | 100, 101, 107 |
| Class Status Code | 6 - Active |
| Class Status Date | Tuesday, May 30, 2017 |
| Primary Code | 041 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | 6 - Active |
| Class Status Date | Tuesday, May 30, 2017 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | SITS Germany Holding GmbH |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | Wiesbaden 65187 DE |
| Party Name | AV-Test GmbH |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | AV-Test GmbH |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | AV-Test GmbH |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Event Date | Event Description |
| Thursday, May 25, 2017 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Tuesday, May 30, 2017 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, May 30, 2017 | ASSIGNED TO EXAMINER |
| Thursday, June 1, 2017 | NON-FINAL ACTION WRITTEN |
| Friday, June 2, 2017 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Saturday, June 3, 2017 | APPLICATION FILING RECEIPT MAILED |
| Thursday, June 15, 2017 | REFUSAL PROCESSED BY MPU |
| Thursday, June 15, 2017 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Saturday, July 1, 2017 | REFUSAL PROCESSED BY IB |
| Friday, December 15, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, December 15, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, December 16, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, January 11, 2018 | NON-FINAL ACTION WRITTEN |
| Thursday, January 11, 2018 | NON-FINAL ACTION E-MAILED |
| Thursday, January 11, 2018 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, July 19, 2018 | TEAS PETITION TO REVIVE RECEIVED |
| Thursday, July 19, 2018 | PETITION TO REVIVE-GRANTED |
| Thursday, July 19, 2018 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, July 20, 2018 | NOTICE OF REVIVAL - E-MAILED |
| Monday, August 6, 2018 | ASSIGNED TO LIE |
| Wednesday, August 8, 2018 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, August 8, 2018 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, August 9, 2018 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, August 22, 2018 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, August 22, 2018 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, August 22, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, September 7, 2018 | NOTIFICATION PROCESSED BY IB |
| Tuesday, September 11, 2018 | PUBLISHED FOR OPPOSITION |
| Tuesday, September 11, 2018 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Wednesday, October 31, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Wednesday, October 31, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, November 16, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, November 27, 2018 | REGISTERED-PRINCIPAL REGISTER |
| Thursday, February 28, 2019 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Thursday, March 7, 2019 | FINAL DISPOSITION PROCESSED |
| Thursday, March 7, 2019 | FINAL DISPOSITION NOTICE SENT TO IB |
| Friday, March 29, 2019 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, November 27, 2023 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Friday, July 26, 2024 | CHANGE OF OWNER RECEIVED FROM IB |
| Monday, November 25, 2024 | TEAS SECTION 71 RECEIVED |
| Monday, April 14, 2025 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Wednesday, April 16, 2025 | POST REGISTRATION ACTION MAILED - SEC.71 |
| Thursday, October 16, 2025 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Thursday, October 23, 2025 | REGISTERED-SEC.71 ACCEPTED |
| Thursday, October 23, 2025 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |