| Serial Number | 86545870 |
| Word Mark | BEYOND THE OFFICE / MITSUI FUDOSAN |
| Filing Date | Wednesday, February 25, 2015 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Friday, April 26, 2024 |
| Registration Number | 5304108 |
| Registration Date | Tuesday, October 10, 2017 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, July 25, 2017 |
| Goods and Services | Educational and instruction services relating to arts, crafts, sports and general knowledge and providing information related thereto, namely, seminars in the field of arts, crafts, sports and general knowledge and providing information relating to education services, namely, providing information relating to qualification examination courses, distance learning courses and education academy; educational services, namely, arranging, conducting and organization of seminars, symposium, lecture and workshop in the field of general purpose facilities for sports, concerts, conventions and exhibitions and other functions, and for business training and providing information related thereto; organization, and arrangement of entertainment, excluding movies, shows, plays, musical performances, sports, horse races, bicycle races, boat races and car races and consultancy and providing information related thereto, namely, organizing and arranging exhibitions for entertainment purposes; booking of seats for shows; booking of seats for music concerts, events, plays and sports and providing information related thereto; providing facilities for movies, plays, music and educational training and providing information related thereto |
| Translation of Words in Mark | The English translation of "MITSUI" in the mark is "THREE WELLS", while the English translation of the word "FUDOSAN" in the mark is "REAL ESTATE". |
| Description of Mark | The mark consists of the wording "BEYOND THE OFFICE" in stylized letters and the wording "MITSUI FUDOSAN" in stylized letters of smaller size; there appears a horizontal line between "BEYOND THE OFFICE" and "MITSUI FUDOSAN". |
| Goods and Services | Electricity distribution and provision of information related thereto; heat supplying, distribution, and provision of information related thereto; removal services and arranging of removal and provision of information related thereto, namely, junk, trash and debris removal; parking services for vehicle and bicycles and provision of information related thereto; management of parking place for vehicles and bicycles and provision of information related thereto, namely, parking lot services; rental of storage containers and warehouses and provision of information related thereto |
| Goods and Services | Printed matter, namely, printed pamphlets, brochures, manuals, books, booklets, leaflets, informational flyers, informational sheets and newsletters, newspapers, magazines, printed periodicals, newsletters, all in the field of real estate, financial asset management, management of buildings, real estate appraisal, real estate management services, real estate brokerage services, real estate acquisition services, financial investment analysis concerning real estate, providing real estate information concerning the purchase, sale or lease of buildings or land; stationery and educational supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue and book marks; banners of paper; flags of paper; photographs; photograph stands |
| Goods and Services | Construction of building construction, road construction; consultancy and provision of information relating to removal of furniture and fixtures for offices, namely, renovation and restoration of buildings; consultancy and provision of information relating to the refurbishment of buildings; consultancy relating to building constructions and provision of information related thereto; operation, check and maintenance of buildings, namely, building management; cleaning of outer wall and windows of building, carpet and rug and provision of information related thereto; floor polishing and provision of information related thereto; repair and maintenance of elevators and provision of information related thereto; repair and maintenance of air conditioners and provision of information related thereto; repair and maintenance of electric lighting apparatus and provision of information related thereto |
| Goods and Services | Management of buildings; agencies of brokerage for renting of buildings; leasing and renting of buildings; real estate acquisition services, namely, purchase and sale of buildings; agencies and brokerage for purchases and sale of buildings; real estate appraisal; real estate management services; agencies and brokerage for purchases and sale of land; leasing of land; land acquisition services, namely, purchase and sale of land; agencies and brokerage for purchases and sale of land; providing information relating to buildings and land, namely, sale or lease of buildings or land; planning, instructions and consultancy on effective use of buildings and land and providing information related thereto, namely, management of buildings; consultancy of purchase, leasing and management relating to real estate, namely, real estate consultancy; consultancy for asset investment and providing information related thereto; fee collection agency, rent collection agency; consigned collection of payment for goods; providing financial information; agencies and brokerage for resort membership and golf membership and provision of information related thereto, namely, vacation real estate time share exchange services; credit card services; electronic transfer of money; debit card services; cash card services; issue of tokens of value; issue of prepaid cards; providing information relating to life insurance, personal annuity insurance and general insurance; operation, check and maintenance of buildings, namely, building management; providing information on commodity sales, namely, rental of commercial buildings, lease, purchase and sale of real estate; consultancy and providing information relating to business for welfare benefit plans, in the field of healthcare, namely, administration of employee benefit plans concerning health care and cost management for the health care benefit plans of others |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Advertising services; consultancy and provision of information related to advertising, namely, providing information about real estate, financial asset management, namely, providing information as to the availability of commercial buildings, real estate for rent or purchase; consultancy and provision of information related to company public relations; provision of business information on planning and arrangement of exhibitions and trade fairs of goods and services and provision of business information related thereto; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes, namely, issuance, management and liquidation of trading stamps and loyalty cards and provision of information related thereto; business management analysis and business consultancy; marketing research and marketing analysis; brokerage and arranging of contracts for the purchase and sale of flowers, bouquet and other goods by Internet sites, e-mails and catalogues; business management and administration, and consultancy and provision of information related thereto; consultancy and instructions relating to accounting, personnel and labor affairs of companies, namely, personnel management consulting; sales management, inventory control and logistics management of commodity, namely, managing logistics, and customer relationship management, and provision of information related thereto, in the field of new business venture development; providing information on newspaper and magazines articles, namely, news and commentary in the field of business; providing employment information; receptionist services for visitors in buildings, namely, organization for a third party of telephone welcoming services and of telephone receptionist services; secretarial services; retail store services and wholesale store services featuring a wide variety of consumer goods of others in each field of clothing, foods and beverages, and living ware, carrying all goods together; vending machine services; organizing exhibitions for business purposes |
| Goods and Services | Consultancy and provision of information on burglar and disaster preventions, namely, monitoring burglar and security alarms; services of notice of safety confirmation in occurrence of disasters, earthquake disaster and emergency, namely, electronic monitoring services for security purposes in the field of houses and buildings; providing support services for emergency calls and rescue activities in occurrence of emergency, namely, monitoring telephone calls from subscribers and notifying emergency responders when appropriate; security guard for buildings and facilities and consultancy and provision of information related thereto, namely, support for crime and disaster prevention to the tenants of buildings and facilities, namely, safety consulting in the field of theft prevention; guard services and consultancy and provision of information related thereto, namely, support for personal security to employees of the tenants of buildings and facilities, namely, personal security consultation; provision of information relating to geographical maps, namely, subscription-based monitoring of emergency responder's real-time position and estimated arrival time to emergency facilities or to the scenes of emergencies, utilizing computers, GPS, and or mobile telephony; provision of on-line social networking services; dating services via network and provision of information related thereto; fortune-telling; personal affairs consultancy, namely, conservatorship services, namely, managing the personal affairs or estate of a person who is deemed incapable due to reasons such as age or mental limitations; provision of information relating to pet sitting, namely, pet sitting; provision of information relating to baby-sitting services; provision of information relating to housework services, namely, house sitting; disaster and prevention of accident and consultancy and providing information related thereto, namely, providing information on the disaster prevention system to the tenants |
| Goods and Services | Food nutrition consultation; providing information in the field of nutrition; Charitable services, namely, providing first aid supplies to those in need; Pet care services, namely, pet walking |
| NOT AVAILABLE | "FUDOSAN" |
| Goods and Services | Providing temporary accommodation and consultancy and provision of information related thereto, namely, providing personalized information about hotels and temporary accommodations for travel via the Internet; agency services for the reservation of temporary accommodation, namely, accommodation bureau in the nature of brokering reservations for hotels, boarding houses and the like and consultancy and provision of information related thereto, namely, providing information in the field of temporary accommodations for travelers; providing foods and beverages and consultancy and provision of information related thereto, namely, bento box delivery; consulting in the field of menu planning for others, namely, providing information relating to menu and recipe of foods and foodstuff; preschool and infant care at daycare centers and provision of information related thereto, namely, creation support of health support menu at the cafeteria; rental of conference rooms and facilities for exhibitions and provision of information related thereto, namely, rental conference room business and provision of conference, exhibition and meeting facilities; providing meeting places and multipurpose hall and provision of information related thereto, namely, rental conference room business; rental of non-electric cooking heaters, kitchen worktops and sinks and provision of information related thereto |
| Goods and Services | Providing meteorological information; providing weather information, namely, providing earthquake information and tsunami information; design of residential and commercial buildings and provision of information and consultancy related thereto; surveying; geological research; designing and provision of information and consultancy related thereto, namely, architectural design and provision of information and consultancy related thereto; research in the field of quake resistance of buildings and provision of information related thereto, namely, emergency evacuation drill and damaged degree of buildings suffered from a disaster; research in the field of building construction, city planning and regional development planning and consultancy and provision of information related thereto, namely, planning of buildings and infrastructure systems for buildings; testing and research on environment, disaster and prevention of accident; research in the fields of environment and disaster; testing and research relating to electricity and consultancy and provision of information related thereto, namely, research and development of environmentally friendly forms of energy and power; computer software design, computer programming, and maintenance of computer software, and consultancy and provision of information related thereto; provision of search engines relating to map information available on the Internet; provision of search engines available on the Internet; design, configuration and maintenance of communication networks and systems for others, and consultancy and provision of information related thereto; monitoring of computer hardware and communication networks and systems by remote access, namely, monitoring of computer systems by remote access to ensure proper functioning; computer consultation, namely, consultancy on failure diagnosis, virus test, failure recovery of computer programs; consultancy on failure diagnosis and failure recovery of communication network system; testing of communication network systems of others; testing of computer programs, namely, testing of computer software; configuration of communication systems and networks, and consultancy and provision of information related thereto; installation, configuration and updating of computer program for third parties and consultancy and provision of information related thereto; rental of computers; providing computer programs and programs for mobile phones; rental of memory space on servers for social networking, and provision of information related thereto; rental of memory space on servers for communication by computer terminals, and consultancy and provision of information related thereto; hosting of websites and consultancy and provision of information related thereto |
| International Class | 016 - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks. |
| US Class Codes | 002, 005, 022, 023, 029, 037, 038, 050 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| Primary Code | 016 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 036 - Insurance; financial affairs; monetary affairs; real estate affairs. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| Primary Code | 036 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| Primary Code | 039 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 043 - Services for providing food and drink; temporary accommodations. |
| US Class Codes | 100, 101 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| Primary Code | 043 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 044 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. |
| US Class Codes | 100, 101 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| Primary Code | 044 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, April 26, 2024 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Mitsui Fudosan Co., Ltd. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Chuo-ku, Tokyo JP |
| Party Name | Mitsui Fudosan Co., Ltd. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Chuo-ku, Tokyo JP |
| Party Name | Mitsui Fudosan Co., Ltd. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Chuo-ku, Tokyo JP |
| Event Date | Event Description |
| Tuesday, June 2, 2015 | ASSIGNED TO EXAMINER |
| Saturday, February 28, 2015 | NEW APPLICATION ENTERED |
| Wednesday, March 11, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, March 12, 2015 | NOTICE OF DESIGN SEARCH CODE E-MAILED |
| Thursday, June 4, 2015 | NON-FINAL ACTION WRITTEN |
| Thursday, June 4, 2015 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, June 4, 2015 | NON-FINAL ACTION E-MAILED |
| Thursday, December 3, 2015 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, December 17, 2015 | ASSIGNED TO LIE |
| Monday, December 28, 2015 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, December 28, 2015 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, March 1, 2016 | FINAL REFUSAL WRITTEN |
| Tuesday, March 1, 2016 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Tuesday, March 1, 2016 | FINAL REFUSAL E-MAILED |
| Wednesday, August 24, 2016 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Wednesday, August 24, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, August 25, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, August 31, 2016 | EXAMINERS AMENDMENT -WRITTEN |
| Wednesday, August 31, 2016 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Wednesday, August 31, 2016 | EXAMINER'S AMENDMENT ENTERED |
| Wednesday, August 31, 2016 | EXAMINERS AMENDMENT E-MAILED |
| Wednesday, August 31, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, September 7, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, September 20, 2016 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Thursday, April 27, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, October 14, 2016 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Monday, December 12, 2016 | NON-FINAL ACTION WRITTEN |
| Monday, December 12, 2016 | NON-FINAL ACTION E-MAILED |
| Monday, December 12, 2016 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, April 27, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, April 27, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, June 21, 2017 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, July 5, 2017 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, July 25, 2017 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, October 10, 2017 | REGISTERED-PRINCIPAL REGISTER |
| Monday, October 10, 2022 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Friday, April 26, 2024 | CANCELLED SEC. 8 (6-YR) |
| Tuesday, July 25, 2017 | PUBLISHED FOR OPPOSITION |
| Thursday, May 18, 2017 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, June 21, 2017 | ASSIGNED TO LIE |