| Serial Number | 85526896 |
| Word Mark | DELUXE |
| Filing Date | Friday, January 27, 2012 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Friday, March 6, 2020 |
| Registration Number | 4377271 |
| Registration Date | Tuesday, July 30, 2013 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, October 23, 2012 |
| Indication of Colors claimed | The color(s) red and white is/are claimed as a feature of the mark. |
| Description of Mark | The mark consists of the lowercase word "DELUXE" in white, inside a stylized, digitized, red circle comprised of a plethora of smaller circles of varying shades of red. |
| Goods and Services | Motion picture and television films featuring music videos, action/adventure, comedy, drama, horror, family, children, anime, sports, documentaries, commercials, science fiction, history, education, live action, computer-generated, animated, 2D, 3D, trailers, public service announcements, fiction, non-fiction, reality, and thrillers; digital media, namely, pre-recorded DVDs, HD DVDs, and pre-recorded optical discs featuring music videos, action/adventure, comedy, drama, horror, family, children, anime, sports, documentaries, commercials, science fiction, history, education, live action, computer-generated, animated, 2D, 3D, trailers, public service announcements, fiction, non-fiction, reality, and thrillers, and downloadable audio and video recordings featuring motion picture films, television shows, and video programs |
| Goods and Services | Inventory control and computerized tracking and tracing of packages in transit; advertising and marketing of motion pictures, television shows, and advertisements; preparing audio-visual displays in the fields of music, motion pictures, television shows, and advertisements; preparing audio-visual presentations for use in advertising; post-production editing services for video and audio commercials; product merchandising; business services, namely, outsourcing in the field of translation services, namely, providing the transfer of information relating to captions and subtitles for audio-visual works; business management of assets in the nature of television programs, motion picture films and commercials, and commercial, industrial and corporate audio-visual media content; arranging and conducting tradeshow exhibitions for commercial or advertising purposes in the fields of entertainment, television, software and video games; organizational services, namely, indexing files representing film, video, audio, picture and document content, for post production industries; display arrangement services of digital files representing film, video, audio, picture and document content, for post production industries; inventory management, namely, locating digital files representing film, video, audio, picture and document content, for post production industries; business management services, namely, digital and intellectual property asset management |
| Goods and Services | Rejuvenation services for film, tape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media, namely, cleaning of film, tape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media |
| Goods and Services | Deposit and transport of cameras, film, video, digital media, data processing and accessories thereto; storage and warehousing of film, digital and video media, and promotional material related to movies, television shows, and advertisements, namely, clothing, posters, and movie, television show, and advertisement cut-outs; electronic storage of digital and video images, digital cinema and sound recordings; storage of motion pictures, television shows, advertisements, digital cinema, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, and online media; storage of master video discs, audio tapes, and CD-ROMs of music and images; media management, namely, moving, archiving, and transporting digital files representing film, video, audio, picture and document content, for post production industries; packing articles for transportation; delivery of goods by truck; warehouse storage; and warehousing services; merchandise packaging for others, merchandise packaging for others, namely, packaging music, videos, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media and custom packaging services for sound, video, and data recordings, to the order and specification of others |
| Goods and Services | Duplication and replication of motion picture films, television shows, advertisements, and video programs on film, videotape, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; mastering and duplication of positive and negative motion picture prints to videotape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media; cutting of negatives; rental of printing machines and apparatus for industrial development and printing in the photographic, cinema and television industries; color enhancement of black and white cinematic film; closed captioning of films and videos; digital correction services of videos, and digital video transfer, namely, providing color correction and conversion of motion picture, television, and advertising film to video film; film and any other video media reproduction, namely, remastering of films from one format to another; and contract manufacturing in the field of digital versatile discs; duplication of video-tape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media in all professional formats; video services, namely, mastering and duplication of professional video tape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media formats; film development services; film to videotape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media transfer services, namely, conversion of motion picture, television, and advertising film to videotape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media; film and other video media back-up services, namely, digital preservation and restoration of cinematic films; printing services for sound, video, and data recordings; processing and printing of motion picture, television and advertising films; conversion of motion picture, television, and advertising film from 2D to 3D; operation of laboratories for the processing of motion picture, television, and advertising films |
| Goods and Services | Motion picture, television, and advertising film, videotape and digital video laboratory and post-production services, namely, high-resolution scanning of film, digital color timing, laser film recording of digital video and high definition images to film; digital and video mastering services for motion pictures, television shows, and advertisements; digital imaging; digital and electronic manipulation of images for motion pictures, television shows, and advertisements; recording digital images onto film; video and audio media production, namely, production of video cassettes and DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media for others; production of visual, optical and digital special effects for others, for television, motion pictures, advertisements, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media, namely, digital cinema; audio recording and production; film editing services; electronically producing motion picture, television, and advertising film from videotape, DVD, HD DVD, pre-recorded optical discs and other recorded, digital, downloadable, and online media recordings; producing special visual effects for videotapes, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; production and distribution of motion pictures, television shows, and advertisements; providing voice-overs for videotapes, records, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; consulting services in connection with film production and distribution; production of master video discs, audio tapes, and CD-ROMS of music and images; arranging for distribution or syndication of motion pictures, television shows, and advertisements; distribution services for film, tape, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; video editing services; dubbing services and film editing; video and sound track for cinema, television and advertisements |
| Goods and Services | Design and development of computer software; product research and development; hosting the websites of others; website design services for others; digital watermarking; graphic design services for print media in the field of entertainment; DVD menu packaging and design for others; design for others of music, video, DVD, and digital media packaging; quality control for others of the duplication, replication and distribution of digital film and video; content creation services, namely, authoring and development of interactive computer software and media content; design and development of multimedia products, namely, DVD menu design for others; retrieving digital files representing film, video, audio, picture and document content, for post production industries; conversion of data or documents from physical to electronic media; formatting and conversion of media and digital data; digital conversion of motion picture, television, and advertising films to videotapes, DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, and online media; film to tape digital transfer services, namely, transferring film to DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; authoring services for DVDs, HD DVDs, pre-recorded optical discs and other recorded, digital, downloadable, and online media; digital data compression; digital compression of audio and video data; film and video data digital compression; providing digital compression of media and digital data |
| Goods and Services | Product security consultation services in the motion picture, television, and advertising industries, namely, product authentication, detection of product piracy, and the recording and tracking of digital data; security printing, namely, encoding of media and digital data for use in tracking the source of unauthorized copies thereof and providing encoding and transcoding of media and digital data; encoding of motion picture, television, and advertising films for use in tracking the source of unauthorized copies thereof; providing content security for recorded media; anti-piracy rights management, namely, product security services in the motion picture, television, and advertising industries; security related technology and services, namely, tracking and tracing services used to secure, track, and trace encoded film against fraud, piracy, and counterfeiting; electronic content protection services; research and development in connection with the illegal downloading and storing of unauthorized digital motion picture, television, and advertising files |
| Section 2(f) Limitation Statement | as to "DELUXE" |
| 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, March 6, 2020 |
| Primary Code | 009 |
| First Use Anywhere Date | Tuesday, September 27, 2011 |
| First Use In Commerce Date | Friday, December 2, 2011 |
| 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, March 6, 2020 |
| Primary Code | 035 |
| First Use Anywhere Date | Tuesday, September 27, 2011 |
| First Use In Commerce Date | Friday, December 2, 2011 |
| 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, March 6, 2020 |
| Primary Code | 037 |
| First Use Anywhere Date | Tuesday, September 27, 2011 |
| First Use In Commerce Date | Friday, December 2, 2011 |
| 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, March 6, 2020 |
| Primary Code | 039 |
| First Use Anywhere Date | Tuesday, September 27, 2011 |
| First Use In Commerce Date | Friday, December 2, 2011 |
| International Class | 040 - Treatment of materials. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 6, 2020 |
| Primary Code | 040 |
| First Use Anywhere Date | Tuesday, September 27, 2011 |
| First Use In Commerce Date | Friday, December 2, 2011 |
| 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, March 6, 2020 |
| Primary Code | 041 |
| First Use Anywhere Date | Tuesday, September 27, 2011 |
| First Use In Commerce Date | Friday, December 2, 2011 |
| 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, March 6, 2020 |
| Primary Code | 042 |
| First Use Anywhere Date | Tuesday, September 27, 2011 |
| First Use In Commerce Date | Friday, December 2, 2011 |
| 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, March 6, 2020 |
| Primary Code | 045 |
| First Use Anywhere Date | Tuesday, September 27, 2011 |
| First Use In Commerce Date | Friday, December 2, 2011 |
| Party Name | DELUXE ENTERTAINMENT SERVICES GROUP INC. |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 03 - Corporation |
| Address | BURBANK, CA 91504 |
| Party Name | Deluxe Laboratories, Inc. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Burbank, CA 91504 |
| Party Name | Deluxe Laboratories, Inc. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Burbank, CA 91504 |
| Party Name | Deluxe Laboratories, Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Hollywood, CA 90027 |
| Event Date | Event Description |
| Friday, March 6, 2020 | CANCELLED SEC. 8 (6-YR) |
| Wednesday, January 29, 2020 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Monday, July 30, 2018 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Wednesday, July 15, 2015 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Wednesday, July 15, 2015 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, January 14, 2015 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Tuesday, July 30, 2013 | REGISTERED-PRINCIPAL REGISTER |
| Friday, June 28, 2013 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Thursday, June 27, 2013 | LAW OFFICE REGISTRATION REVIEW COMPLETED |
| Wednesday, June 26, 2013 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Wednesday, June 19, 2013 | STATEMENT OF USE PROCESSING COMPLETE |
| Friday, May 17, 2013 | USE AMENDMENT FILED |
| Tuesday, June 18, 2013 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Friday, May 17, 2013 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Friday, May 17, 2013 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Friday, May 17, 2013 | TEAS STATEMENT OF USE RECEIVED |
| Tuesday, December 18, 2012 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Tuesday, October 23, 2012 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, October 23, 2012 | PUBLISHED FOR OPPOSITION |
| Wednesday, October 3, 2012 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Wednesday, October 3, 2012 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Monday, September 17, 2012 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Monday, September 17, 2012 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Monday, September 17, 2012 | EXAMINER'S AMENDMENT ENTERED |
| Monday, September 17, 2012 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Monday, September 17, 2012 | EXAMINERS AMENDMENT E-MAILED |
| Monday, September 17, 2012 | EXAMINERS AMENDMENT -WRITTEN |
| Saturday, September 15, 2012 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Sunday, August 19, 2012 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Wednesday, August 8, 2012 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, August 7, 2012 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, August 7, 2012 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Tuesday, August 7, 2012 | WITHDRAWN FROM PUB - SENIOR ATTORNEY REQUEST |
| Saturday, August 4, 2012 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Monday, August 6, 2012 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Monday, August 6, 2012 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Monday, August 6, 2012 | EXAMINER'S AMENDMENT ENTERED |
| Monday, August 6, 2012 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Monday, August 6, 2012 | EXAMINERS AMENDMENT E-MAILED |
| Monday, August 6, 2012 | EXAMINERS AMENDMENT -WRITTEN |
| Monday, August 6, 2012 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Monday, August 6, 2012 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Saturday, August 4, 2012 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Saturday, August 4, 2012 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, August 4, 2012 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Monday, July 30, 2012 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Monday, July 30, 2012 | NON-FINAL ACTION E-MAILED |
| Monday, July 30, 2012 | NON-FINAL ACTION WRITTEN |
| Thursday, July 5, 2012 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Monday, June 11, 2012 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Thursday, May 31, 2012 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Thursday, May 31, 2012 | ASSIGNED TO LIE |
| Friday, May 11, 2012 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, May 11, 2012 | EXAMINER'S AMENDMENT ENTERED |
| Friday, May 11, 2012 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Friday, May 11, 2012 | EXAMINERS AMENDMENT E-MAILED |
| Friday, May 11, 2012 | EXAMINERS AMENDMENT -WRITTEN |
| Thursday, May 10, 2012 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, May 10, 2012 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, May 10, 2012 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, May 10, 2012 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, May 10, 2012 | NON-FINAL ACTION E-MAILED |
| Thursday, May 10, 2012 | NON-FINAL ACTION WRITTEN |
| Monday, May 7, 2012 | ASSIGNED TO EXAMINER |
| Wednesday, February 1, 2012 | NOTICE OF DESIGN SEARCH CODE MAILED |
| Tuesday, January 31, 2012 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
| Tuesday, January 31, 2012 | NEW APPLICATION ENTERED IN TRAM |