| Serial Number | 79338162 |
| Word Mark | CALASTONE |
| Filing Date | Friday, August 20, 2021 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, March 12, 2024 |
| Registration Number | 7324363 |
| Registration Date | Tuesday, March 12, 2024 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, December 26, 2023 |
| Goods and Services | Downloadable, recorded computer software for automating and digitizing the global investment fund marketplace; Downloadable computer software for processing electronic payments and transferring funds to and from others; downloadable, recorded authentication software, namely, downloadable software for identifying and authenticating users, downloadable software for document authentication, downloadable software for fund authentication; downloadable, recorded computer software for authentication of funds; downloadable, recorded computer software for clearing funds; downloadable, recorded computer software for electronic data processing of funds; downloadable, recorded computer software for electronic transmission of funds; contactless payment systems comprised of electronic machines for reading credit cards, downloadable software for processing payments; downloadable electronic publications in the nature of newsletters in the field of global investment funds; digital media, namely, pre-recorded digital media devices featuring financial information; encoded cards, namely, magnetically encoded key cards, encoded identity cards; downloadable, recorded podcasts and webcasts in the field of global investment funds; downloadable, recorded computer software for authenticating funds and for electronic data processing of funds; downloadable computer software for electronic transmission of funds |
| Goods and Services | Wireless broadband, telephone, radio, satellite communications services; online data communication services; providing wireless broadband, telephone, satellite communications for automating the processing of global investment fund order entry; providing wireless broadband, telephone, satellite communications for automating evaluations; providing wireless broadband, telephone, satellite communications for automating reconciliations; providing wireless broadband, telephone, satellite communications for automating settlement; electronic transmission of instructions; provision of telecommunications access and links to computer systems and computer databases; provision of telecommunications access links to computer systems and computer databases; provision of communication between computers, namely, communication by electronic computer terminals, providing private and secure real time electronic communication over a computer network, providing electronic transmission of information stored in a database via interactively communicating computer systems; computer network communication services, namely, providing virtual private network (VPN) services, namely, private and secure electronic communications over a private or public computer network, Electronic transmission for others of securities and financial information via computer linking services, namely, communicating and routing trade information involving orders, entry and execution services, to others via a global computer network; providing an internet website portal services featuring information about telecommunication services; blogging services in the nature of providing wireless broadband, internet, satellite access to a blog; transmission of webcasts; webcasting services; collection and delivery of electronic mail, namely, electronic transmission of mail, redirecting electronic mail to changed personal electronic address; electronic messaging services; providing online chat rooms, electronic bulletin boards and internet forums for transmission of messages among users in the field of global investment fund management; provision of data streaming; electronic communications services for preparing financial information, namely, electronic transmission of financial information data and documents among users of computers, providing electronic transmission of financial information stored in a database via interactively communicating computer systems; electronic transmission for others of financial information via computer linking services, namely, communicating and routing trade information involving orders, entry and execution services, to others via a global computer network; Interactive telecommunications services, namely, transmission of voice, data, and documents via telecommunications networks, transmission of voice, data, graphics, sound and video by means of broadband power line or wireless networks; provision of access to transaction routing networks via global computer information networks, global computer networks, telecommunication network and consultancy, advisory and information services relating to the aforesaid; consultancy, advisory and information services relating to the aforesaid services provided over a telecommunications network; consultancy, advisory and information services relating to the aforesaid services; consultancy, advisory and information services relating to the aforesaid services provided on-line from a computer database or the internet |
| Pseudo Mark | CALA STONE |
| Goods and Services | Financial services, namely, financial analysis and research services for global investment funds; financial management; monetary affairs, namely, financial information, management and analysis services for global investment funds; foreign exchange services, namely, foreign exchange information services, providing for the exchange of foreign currency via the internet and intranet systems; foreign exchange transactions; provision of automated fund transactions; automated recording services for financial transactions; clearing investment fund transactions via a global communications networks; reconciling financial transactions via global communications networks; processing and payment of money market funds; financial settlement and clearing services, namely, debt settlement, clearing and reconciling financial transactions via a global computer network; credit risk protection, namely, credit risk management, providing financial risk management services for electronic funds transfer, electronic check transactions via a global computer network; provision of automated valuation services for intellectual property, businesses, real estate, stock options; provision of automating reconciliations of financial transactions; provision of automating financial settlement, namely, estate settlement services, debt settlement, life insurance settlement services; electronic transfer of global investment funds for others; services for the execution of financial transactions, namely, secure commercial transactions and payment options for global investment funds, assisting others with the completion of financial transactions for global investment funds; currency dealing, namely, currency exchange services, currency trading, financial exchange of virtual currency; financial transaction management services; insurance brokering; mutual fund transaction settlement and clearing services; mutual fund management; provision of financial information on the internet, including information on mutual funds and related settlement services; management of financial transactions on the internet; fund raising services, namely, raising money for global investment funds of others; Charitable fundraising services by means of selling goods to raise funds, business fundraising for others; investment fund transfers services; global investment fund services, namely, global hedge fund investment services, global private equity fund investment services and global real estate funds investment services; global investment fund management services; electronic funds transfer; development of investment portfolios, namely, financial management of global investment fund portfolios; global investment funds portfolio management services; administration of global investment funds; management of financial investments and investment funds; providing financial information and data relating to mutual funds; consultancy, management, advisory and information services relating to the aforesaid services provided on-line from a computer database or the internet; consultancy, management, advisory and information services relating to the aforesaid services provided over a telecommunications network; all of the foregoing in the field of global investment funds management for marketing to fund managers, distributors, asset servicers and fund platforms |
| Goods and Services | Negotiation and conclusion of commercial transactions for third parties in the field of electronic global investment fund management; business statistical information services, preparation, collection and ordering of information relating to electronic global fund investment in a computer database; analysis of business data processing for electronic global investment funds; business management in the nature of advising global fund managers; collection of data, namely, electronic data collection and reporting services for business purposes in the fields of global investment funds; economic forecasting; market forecasting; preparation of business reports, data and statistics; risk management consultancy; negotiation and conclusion of commercial transactions for third party global investment funds; business statistical information services, preparation, collection, analysis and reporting of information relating to global investment funds in a computer database; automated data processing for global investment funds; economic forecasting for global investment funds; preparation of business reports, data and statistics for global investment funds; risk management consultancy for global investment funds; consultancy, management, advisory and information services relating to the aforesaid services; consultancy, management, advisory and information services relating to the aforesaid services provided on-line from a computer database or the Internet; consultancy, management, advisory and information services relating to the aforesaid services provided over a telecommunications network; business services relating to the provision of sponsorship, namely, financial sponsorship search in the field of global investment funds; administrative processing of purchasing orders in the global investment fund marketplace; electronic processing of orders for others in the global investment fund marketplace; all of the foregoing in the field of global investment funds management for marketing to fund managers, distributors, asset servicers and fund platforms |
| Goods and Services | Design and development of computer hardware and software; design and development of software for automation of payments; design and development of software for automation of processing of order of entry; design and development of software for automation of valuations; design and development of software for automation of reconciliations; design and development of software for automation of settlement; designing, managing and monitoring technological functions of network systems for online forums; creating and maintaining blogs for others; hosting online web facilities for others; hosting digital content, namely, blogs; computer systems analysis and diagnostics; data mining; provision of online non-downloadable software for electronic data capture and transmission systems for the purposes of electronic funds transfer; monitoring of electronic data capture and transmission systems for the purposes of electronic funds transfer using computers; installation, maintenance and servicing being updating of computer software; consultancy, advisory and information services relating to the aforesaid services; consultancy, advisory and information services relating to the aforesaid services provided on-line from a computer database or the internet; consultancy, advisory and information services relating to the aforesaid services provided over a telecommunications network, all of the foregoing in the field of global investment funds management |
| 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 | Friday, April 15, 2022 |
| Primary Code | 038 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Friday, April 15, 2022 |
| 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 | Friday, April 15, 2022 |
| 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 | 6 - Active |
| Class Status Date | Friday, April 15, 2022 |
| Primary Code | 036 |
| 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 | Friday, April 15, 2022 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Calastone Limited |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Party Name | Calastone Limited |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Party Name | Calastone Limited |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Event Date | Event Description |
| Tuesday, April 19, 2022 | APPLICATION FILING RECEIPT MAILED |
| Thursday, April 14, 2022 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Friday, April 15, 2022 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, May 24, 2022 | ASSIGNED TO EXAMINER |
| Thursday, June 2, 2022 | NON-FINAL ACTION WRITTEN |
| Friday, June 3, 2022 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Friday, June 10, 2022 | REFUSAL PROCESSED BY MPU |
| Friday, June 10, 2022 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Wednesday, July 6, 2022 | REFUSAL PROCESSED BY IB |
| Thursday, December 8, 2022 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, December 8, 2022 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, December 9, 2022 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, January 6, 2023 | FINAL REFUSAL WRITTEN |
| Friday, January 6, 2023 | FINAL REFUSAL E-MAILED |
| Friday, January 6, 2023 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Monday, June 5, 2023 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Monday, June 5, 2023 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, June 6, 2023 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Saturday, July 8, 2023 | NON-FINAL ACTION WRITTEN |
| Saturday, July 8, 2023 | NON-FINAL ACTION E-MAILED |
| Saturday, July 8, 2023 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Monday, August 7, 2023 | REFUSAL PROCESSED BY IB |
| Wednesday, September 20, 2023 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Wednesday, September 20, 2023 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Monday, October 9, 2023 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Friday, November 3, 2023 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, November 3, 2023 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, November 4, 2023 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, December 6, 2023 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, December 6, 2023 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, December 6, 2023 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Tuesday, December 26, 2023 | NOTIFICATION PROCESSED BY IB |
| Friday, November 17, 2023 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, December 26, 2023 | PUBLISHED FOR OPPOSITION |
| Tuesday, December 26, 2023 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, March 12, 2024 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, March 12, 2024 | NOTICE OF REGISTRATION CONFIRMATION EMAILED |
| Thursday, June 13, 2024 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Saturday, July 20, 2024 | FINAL DISPOSITION PROCESSED |
| Sunday, August 11, 2024 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Saturday, July 20, 2024 | FINAL DISPOSITION NOTICE SENT TO IB |