| Serial Number | 86684166 |
| Word Mark | BITDEFENDER ONE STEP AHEAD. |
| Filing Date | Monday, July 6, 2015 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Friday, June 28, 2024 |
| Registration Number | 5352887 |
| Registration Date | Tuesday, December 12, 2017 |
| Mark Drawing | 5 - Drawing with word(s) / letter(s) / number(s) in Stylized form |
| Published for Opposition Date | Tuesday, March 21, 2017 |
| Description of Mark | The mark consists of the words "BITDEFENDER ONE STEP AHEAD." in a stylized form. |
| Goods and Services | Anti-malware software applications, computer software for providing network, Internet, and computer security, computer software for providing online identity protection and parental control, computer software for scanning, detecting, and removing viruses, worms, Trojan horses, adware, spyware, and other malware; Internet security software, namely, computer software for use in the monitoring and control of computer and online activity; fraud protection software; computer optimization software; computer software to prevent, diagnose, and repair computer problems; computer software for the back-up, storage, restoration and recovery of data, folders, and files; enterprise security software; fire wall software; privacy control software; content filtering software, computer software for the creation of virtual private network, utility software for facilitating computer use at remote locations and for facilitating communications among mobile users over networks, computer software for use in updating other computer software, computer software for use in administering and maintaining computer networks; computer software for connecting and managing remote computers, for synchronization of files through e-mail, for providing security to remote computer users, for implementing computer, software and network security measures for remote computer users; computer software for file management and transfer, computer software that provides firewall, content filtering, intrusion alert, virus protection, virtual private networking and other security functions and file serving storage management; computer software for use in file, disk and systems management; computer software for use in data storage management in storage area networks; computer software for backing up and restoring computer data; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for generating reports from databases, computer software for scheduling automated processes; computer software for use in the central management of computers attached to a computer network; computer software for replicating and archiving files from one data store to another; computer programs for encryption and authentication of electronic information for use in data communication applications, computer programs for use in the field of computer system administration, namely, programs for the administration and management of computer programs and electronic data about computer systems, computer programs for managing the software configurations of computer systems and computer networks; computer programs for the sending and receiving of computer software across a computer network to accomplish software distribution and computer programs for installing and upgrading other computer software without manual user intervention; computer programs for copying data from one electronic storage medium to another electronic storage medium; embedded software for network monitoring and security |
| Pseudo Mark | BIT DEFENDER ONE STEP AHEAD. |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Conversion of the computer code, computer advice, design and maintenance services for computer data bases; diagnosis services for computers damaged by malware, maintenance of computer software, computer facilities for digital data storage, computer programming, computer on-line services for providing information about computer software, data security audit for computer software and networks, computer services, namely, creation and maintenance, design and implementation of data recovery, supplying of databases characteristics, assuring on-line network security via malware monitoring; supplying of search engines, design of computer websites, computer software installation, computer software updating, software design; computer system analysis, providing temporary use of on-line non-downloadable software for accessing computer and software applications and Internet connection; rental of software applications; computer design; research and development for software applications; technical assistance for software applications, namely, troubleshooting of computer software problems |
| 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, June 28, 2024 |
| Primary Code | 009 |
| 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, June 28, 2024 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | BITDEFENDER IPR MANAGEMENT LTD. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Nicosia 2012 CY |
| Party Name | BITDEFENDER IPR MANAGEMENT LTD. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | Nicosia CY |
| Party Name | BITDEFENDER IPR MANAGEMENT LTD. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | Nicosia CY |
| Event Date | Event Description |
| Wednesday, October 14, 2015 | ASSIGNED TO EXAMINER |
| Thursday, July 9, 2015 | NEW APPLICATION ENTERED |
| Thursday, July 9, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, July 10, 2015 | NOTICE OF PSEUDO MARK E-MAILED |
| Monday, October 19, 2015 | NON-FINAL ACTION WRITTEN |
| Monday, October 19, 2015 | NON-FINAL ACTION E-MAILED |
| Monday, October 19, 2015 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, April 19, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, May 3, 2016 | ASSIGNED TO LIE |
| Thursday, May 5, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, May 5, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, May 26, 2016 | FINAL REFUSAL WRITTEN |
| Thursday, May 26, 2016 | FINAL REFUSAL E-MAILED |
| Thursday, May 26, 2016 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Monday, November 28, 2016 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Monday, November 28, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, November 29, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, December 23, 2016 | ACTION CONTINUING A FINAL - COMPLETED |
| Friday, December 23, 2016 | CONTINUATION OF FINAL REFUSAL E-MAILED |
| Friday, December 23, 2016 | NOTIFICATION OF SUBSEQUENT FINAL EMAILED |
| Monday, January 23, 2017 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Monday, January 23, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, January 23, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, January 26, 2017 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, March 21, 2017 | PUBLISHED FOR OPPOSITION |
| Monday, February 13, 2017 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, March 1, 2017 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, March 21, 2017 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Friday, May 5, 2017 | ASSIGNED TO EXAMINER |
| Tuesday, October 24, 2017 | NOTICE OF ALLOWANCE CANCELLED |
| Monday, November 6, 2017 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Monday, November 6, 2017 | 1(B) BASIS DELETED; PROCEED TO REGISTRATION |
| Tuesday, December 12, 2017 | REGISTERED-PRINCIPAL REGISTER |
| Friday, June 12, 2020 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Tuesday, May 16, 2017 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Tuesday, October 24, 2017 | TEAS DELETE 1(B) BASIS RECEIVED |
| Friday, June 12, 2020 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Friday, June 12, 2020 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Friday, June 12, 2020 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Friday, June 12, 2020 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Friday, June 12, 2020 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Thursday, June 25, 2020 | REVIEW OF CORRESPONDENCE COMPLETE - ADDRESS UPDATED |
| Monday, December 12, 2022 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Friday, June 28, 2024 | CANCELLED SEC. 8 (6-YR) |