| Serial Number | 85937131 |
| Word Mark | BENEFITMALL |
| Filing Date | Monday, May 20, 2013 |
| Status | 702 - SECTION 8 & 15 - ACCEPTED AND ACKNOWLEDGED |
| Status Date | Thursday, August 26, 2021 |
| Registration Number | 4732116 |
| Registration Date | Tuesday, May 5, 2015 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, December 24, 2013 |
| Description of Mark | The mark consists of "BENEFITMALL" in stylized form with three arched lines above the letters "ALL" within the word "BENEFITMALL". |
| Pseudo Mark | BENEFIT MALL |
| Goods and Services | PROVIDING AN ON-LINE COMPUTER DATABASE TO INSURANCE BROKERS, EMPLOYERS AND EMPLOYEES IN THE FIELD OF PROGRAMS, BENEFITS, PRODUCTS AND SERVICES OF VARIOUS FULL SERVICE INSURANCE GENERAL AGENCIES; INSURANCE BROKERAGE SERVICES; ADMINISTRATION OF BUSINESS EMPLOYEE BENEFIT PLANS CONCERNING INSURANCE; FINANCIAL SERVICES, NAMELY, ADMINISTRATION OF EMPLOYEE BENEFITS PLANS CONCERNING FINANCE AND INSURANCE; PAYROLL TAX DEBITING SERVICES; FINANCIAL ADMINISTRATION OF EMPLOYEE PENSION PLANS VIA A GLOBAL COMPUTER NETWORK |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | MARKETING CONSULTING SERVICES IN THE FIELD OF BUSINESS; PAYROLL ADMINISTRATION, MANAGEMENT, PREPARATION AND PROCESSING SERVICES; COMPUTERIZED PAYROLL SERVICES, NAMELY, PAYROLL PROCESSING SERVICES; ONLINE BUSINESS SERVICES, NAMELY, PAYROLL PREPARATION SERVICES; EMPLOYEE ADMINISTRATION SERVICES, NAMELY, EMPLOYEE'S TIME AND ATTENDANCE RECORDING AND REPORTING; TAX FILING SERVICES; RECORD KEEPING FOR EMPLOYEE BENEFITS PLANS, WORKERS COMPENSATION INSURANCE ADMINISTRATION, THIRD PARTY GARNISHMENT PROCESSING, AND UNEMPLOYMENT CLAIMS ADMINISTRATION |
| Goods and Services | REGULATORY COMPLIANCE CONSULTING IN THE FIELD OF COMPLIANCE WITH LEGISLATION AND REGULATIONS IN THE FIELD OF INSURANCE |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, May 31, 2013 |
| Primary Code | 035 |
| First Use Anywhere Date | Monday, June 24, 2013 |
| First Use In Commerce Date | Monday, June 24, 2013 |
| International Class | 036 - Insurance; financial affairs; monetary affairs; real estate affairs. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, May 31, 2013 |
| Primary Code | 036 |
| First Use Anywhere Date | Monday, June 24, 2013 |
| First Use In Commerce Date | Monday, June 24, 2013 |
| International Class | 045 - Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Saturday, October 26, 2013 |
| Primary Code | 045 |
| First Use Anywhere Date | Monday, June 24, 2013 |
| First Use In Commerce Date | Monday, June 24, 2013 |
| Party Name | CRC INSURANCE SERVICES, LLC |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | BIRMINGHAM, AL 35209 |
| Party Name | Centerstone Insurance and Financial Services, Inc. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Dallas, TX 75251 |
| Party Name | Centerstone Insurance and Financial Services, Inc. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Dallas, TX 75244 |
| Party Name | Centerstone Insurance and Financial Services, Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Dallas, TX 75244 |
| Event Date | Event Description |
| Friday, September 6, 2013 | ASSIGNED TO EXAMINER |
| Thursday, May 23, 2013 | NEW APPLICATION ENTERED |
| Friday, May 31, 2013 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Saturday, June 1, 2013 | NOTICE OF DESIGN SEARCH CODE E-MAILED |
| Friday, September 6, 2013 | PRIORITY ACTION WRITTEN |
| Friday, September 6, 2013 | PRIORITY ACTION E-MAILED |
| Friday, September 6, 2013 | NOTIFICATION OF PRIORITY ACTION E-MAILED |
| Friday, October 25, 2013 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, October 25, 2013 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, October 26, 2013 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, October 28, 2013 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, November 15, 2013 | ASSIGNED TO LIE |
| Friday, November 15, 2013 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, December 4, 2013 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, December 24, 2013 | PUBLISHED FOR OPPOSITION |
| Tuesday, December 24, 2013 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, February 18, 2014 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Monday, August 18, 2014 | SOU TEAS EXTENSION RECEIVED |
| Monday, August 18, 2014 | SOU EXTENSION 1 FILED |
| Monday, August 18, 2014 | SOU EXTENSION 1 GRANTED |
| Wednesday, August 20, 2014 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Wednesday, February 18, 2015 | TEAS STATEMENT OF USE RECEIVED |
| Wednesday, February 18, 2015 | USE AMENDMENT FILED |
| Wednesday, March 25, 2015 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Monday, March 30, 2015 | STATEMENT OF USE PROCESSING COMPLETE |
| Tuesday, March 31, 2015 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Tuesday, May 5, 2015 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, April 1, 2015 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Wednesday, January 24, 2018 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Wednesday, October 2, 2019 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Wednesday, October 2, 2019 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Tuesday, May 5, 2020 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Wednesday, May 5, 2021 | TEAS SECTION 8 & 15 RECEIVED |
| Thursday, August 26, 2021 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Thursday, August 26, 2021 | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Thursday, August 26, 2021 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED |
| Wednesday, November 9, 2022 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Monday, July 17, 2023 | TEAS WITHDRAWAL OF ATTORNEY RECEIVED |
| Monday, July 17, 2023 | WITHDRAWAL OF ATTORNEY GRANTED |
| Sunday, May 5, 2024 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |
| Wednesday, August 23, 2023 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |