| Serial Number | 90263169 |
| Word Mark | COMMUNIGATE PRO |
| Filing Date | Monday, October 19, 2020 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, August 29, 2023 |
| Registration Number | 7151324 |
| Registration Date | Tuesday, August 29, 2023 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, April 20, 2021 |
| Description of Mark | The mark consists of the word "COMMUNIGATE" in navy blue followed by the word "PRO" in orange in stylized font. A navy blue line extends down from the "O" in "COMMUNIGATE" and extends to the right, underlining the word "COMMUNIGATE". Likewise, an orange line extends down from the letter "O" in "PRO" and extends to the left, underlining the word "PRO". In the place where these two lines meet, they extend into semi circles, and a gap remains between them. |
| Goods and Services | Downloadable mobile applications for webmail; Downloadable telecommunication software for facilitating communications on networks, mobile applications, chat applications and webmail services; Downloadable telecommunication software for use in telephone communication, Internet telephony, network telephones, electronic facsimiles, electronic transmission of electronic mails, and instant messaging communication; Downloadable software for providing users with secure remote access via the Internet to private computer networks; Downloadable communication software for use in the fields of secured transmission of data and information; Downloadable software for providing multiple user access to global computer networks which allows users to access applications, including jointly-shared documents, data, task lists, and discussion forums; Downloadable software for providing telecommunication access and on-line communications links to computer databases, the Internet and world-wide web; Downloadable software for information transmission via electronic communication networks; Downloadable software for interactive telecommunications, including transmission of voice, audio, visual images, audio-visual content, text and SMS messages, documents, and data by communication networks; Downloadable software for providing transmission of database information via telecommunication networks; Downloadable software for providing telecommunication connections to the Internet or databases; Downloadable software for enabling telephone, video and web conferencing; Downloadable software for enabling virtual chat rooms; Downloadable software for transmitting, broadcasting and streaming audio and video via computers; Downloadable telecommunication software for use in computer networks and global communication networks; Downloadable software for providing private and secure real time electronic communication over a computer network |
| Goods and Services | Website services, namely, electronic transmission of e-mail where users can review and send e-mails through a browser; Website services, namely, electronic transmission of e-mail including web services where users can send and receive messages through a website; Telecommunications services, namely, providing telephone communication, Internet telephony services, network telephone, electronic facsimile, electronic transmission of electronic mails, and instant messaging communication services; Telecommunications services, namely, transmission and delivery of digital data, photographs, audio files, data, information and image signals by means of computers; Providing web-based multimedia teleconferencing and videoconferencing that allow simultaneous and asynchronous viewing, sharing, editing, and discussion of documents, data, and images by participants via a web browser; Providing users with secure remote access via the Internet to private global, and local area computer networks; Providing information in the fields of telecommunications, namely, that of secured transmission of data and information; Providing online collaboration services, namely, providing multiple user access to global computer network which allows users to access applications, including jointly-shared documents, data, task lists, and discussion forums; Telecommunication access services, namely, provision of telecommunication access and on-line communications links to computer databases, the Internet and world-wide web; Electronic communication services, namely, information transmission via electronic communication networks; Interactive telecommunications services, namely, electronic transmission of voice, audio, visual images, audio-visual content, text and SMS messages, documents, and data by communication networks; Telecommunication of information in the nature of electronic transmission of database information via telecommunication networks; Providing telecommunication connections to the Internet or databases; communication by computer terminals; Electronic transmission of messages and images by computer; Transmission of data by electronic means; Electronic message sending, receiving and forwarding services; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunication networks; instant messaging services; transmission and delivery of data by electronic means; electronic transmission and delivery of mail messages, still picture and moving picture information; transmission, broadcast and reception of audio, video, still and moving images and data via telecommunication means; electronic messaging services; Telephone, video and web conferencing services; video conferencing services; Electronic transmission of messages among computer users concerning business and e-commerce for online discussion forums; Providing multiple user access to a computer database containing electronic publications, bulletin boards, database and information accessible via computer; Providing internet chat room services for transmission of messages among computer users; Providing multiple user access to global computer information networks for the transfer and dissemination of a wide range of information; web conferencing services; Electronic communication services, namely, electronic transmission of data among users of computers, including for virtual chat rooms; Providing electronic bulletin boards for the posting and transmission of messages among and between computer users; electronic transmission of e-mail services; transmission, broadcasting and streaming of audio and video via computers, computer networks and global communication network; teleconferencing services, including distant video and telephone conferencing; Providing access to local and global computer networks featuring electronic calendar, address book and notes feature, via local and global computer networks; Transmission of information by electronic communications networks, namely, computerized communication network security services in the nature of providing private and secure real time electronic communication over a computer network |
| Pseudo Mark | COMMUNI GATE PRO |
| Indication of Colors claimed | The color(s) Navy and orange is/are claimed as a feature of the mark. |
| Disclaimer with Predetermined Text | "PRO" |
| Goods and Services | Unified communications as a Service (UCaaS) services featuring software platforms for providing email encryption, encrypted video services, encrypted telephony services, and encrypted instant messaging services; Unified communications as a Service (UCaaS) services featuring software platforms for providing telephony and telecommunications services; Providing temporary use of online non-downloadable middleware for software application integration for providing an interface between software applications and operating systems; Off-site data backup services being telecommunications network datacenter services, including backup services for computer hard drive data, electronic data storage, electronic storage of documents and archived e-mails, electronic storage of electronic media, including images, text and audio data, electronic storage of files and documents, electronic storage services for archiving databases, images and other electronic data, electronic storage services for archiving electronic data, off-site data backup, off-site data backup provided via the cloud, and temporary electronic storage of information; Unified Communications as a Service (UCaaS) services and Communications Platform as a Service (CPaaS) services, namely, cloud computing services in the nature of cloud-based software for use in enabling communications network services, business calling connectivity services, and computer software applications for enabling business communications for calls, messaging, collaboration, chat, and video over data networks; Computer services, namely, cloud hosting provider services; Computer services, namely, providing virtual and non virtual application servers, web servers, and file servers; Computer services, namely, providing virtual servers to others; Software as a service (SAAS) services featuring software for enabling email encryption, encrypted video services, encrypted telephony services, and encrypted instant messaging services; Computer services for others, namely, non-downloadable software for enabling email encryption, encrypted video services, encrypted telephony services, and encrypted instant messaging services |
| 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 | Sunday, December 6, 2020 |
| Primary Code | 009 |
| First Use Anywhere Date | Monday, February 2, 1998 |
| First Use In Commerce Date | Monday, February 2, 1998 |
| 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 | Sunday, December 6, 2020 |
| Primary Code | 038 |
| First Use Anywhere Date | Monday, February 2, 1998 |
| First Use In Commerce Date | Monday, February 2, 1998 |
| 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 | Sunday, December 6, 2020 |
| Primary Code | 042 |
| First Use Anywhere Date | Monday, February 2, 1998 |
| First Use In Commerce Date | Monday, February 2, 1998 |
| Party Name | COMMUNIGATE SOFTWARE DEVELOPMENT AND LICENSING SA |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | GRAND-DUCHÉ DE LUXEMBOURG L-2714 LU |
| Party Name | COMMUNIGATE SOFTWARE DEVELOPMENT AND LICENSING SA |
| Party Type | 21 - New Owner After Publication |
| Legal Entity Type | 99 - Other |
| Address | GRAND-DUCHÉ DE LUXEMBOURG L-2714 LU |
| Party Name | COMMUNIGATE INCORPORATED |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | TIBURON, CA 94920 |
| Party Name | COMMUNIGATE INCORPORATED |
| Party Type | 11 - New Owner Before Publication |
| Legal Entity Type | 03 - Corporation |
| Address | TIBURON, CA 94920 |
| Party Name | Stalker Software, Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Tiburon, CA 94920 |
| Event Date | Event Description |
| Tuesday, August 29, 2023 | NOTICE OF REGISTRATION CONFIRMATION EMAILED |
| Tuesday, August 29, 2023 | REGISTERED-PRINCIPAL REGISTER |
| Friday, July 28, 2023 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Thursday, July 27, 2023 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Saturday, July 22, 2023 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, July 21, 2023 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, July 21, 2023 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, April 21, 2023 | APPLICATION EXTENSION GRANTED/RECEIPT PROVIDED |
| Friday, April 21, 2023 | APPLICATION EXTENSION TO RESPONSE PERIOD - RECEIVED |
| Tuesday, January 24, 2023 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, January 24, 2023 | NON-FINAL ACTION E-MAILED |
| Tuesday, January 24, 2023 | SU - NON-FINAL ACTION - WRITTEN |
| Wednesday, January 18, 2023 | STATEMENT OF USE PROCESSING COMPLETE |
| Thursday, December 15, 2022 | USE AMENDMENT FILED |
| Wednesday, January 18, 2023 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Thursday, December 15, 2022 | TEAS STATEMENT OF USE RECEIVED |
| Friday, June 17, 2022 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Wednesday, June 15, 2022 | SOU EXTENSION 2 GRANTED |
| Wednesday, June 15, 2022 | SOU EXTENSION 2 FILED |
| Wednesday, June 15, 2022 | SOU TEAS EXTENSION RECEIVED |
| Thursday, December 16, 2021 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Tuesday, December 14, 2021 | SOU EXTENSION 1 GRANTED |
| Tuesday, December 14, 2021 | SOU EXTENSION 1 FILED |
| Tuesday, December 14, 2021 | SOU TEAS EXTENSION RECEIVED |
| Tuesday, June 15, 2021 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Wednesday, May 12, 2021 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Tuesday, April 20, 2021 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, April 20, 2021 | PUBLISHED FOR OPPOSITION |
| Wednesday, March 31, 2021 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, March 16, 2021 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, March 16, 2021 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, March 16, 2021 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Tuesday, March 16, 2021 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, March 16, 2021 | EXAMINERS AMENDMENT -WRITTEN |
| Monday, March 15, 2021 | EXAMINER'S AMENDMENT ENTERED |
| Monday, March 15, 2021 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Monday, March 15, 2021 | EXAMINERS AMENDMENT E-MAILED |
| Monday, March 15, 2021 | EXAMINERS AMENDMENT -WRITTEN |
| Monday, March 8, 2021 | ASSIGNED TO EXAMINER |
| Wednesday, February 17, 2021 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Tuesday, December 8, 2020 | NOTICE OF DESIGN SEARCH CODE E-MAILED |
| Sunday, December 6, 2020 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, October 22, 2020 | NEW APPLICATION ENTERED |