| Serial Number | 75828914 |
| Word Mark | ELEMENT 5 |
| Filing Date | Thursday, October 21, 1999 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Friday, May 19, 2023 |
| Registration Number | 2646324 |
| Registration Date | Tuesday, November 5, 2002 |
| Mark Drawing | 1000 - Typeset: Word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, October 16, 2001 |
| Goods and Services | Apparatus, namely, servers for the reproduction and transmission of data over the Internet; software, namely, security, encryption and data protection software; software for generating sales statistics and data case management in the field of direct software sales; magnetic data carriers, namely, recordings disks, compact disks; CD-ROMs, all which features software for security, encryption and data protection, for generating sales statistics, and for data case management in the field of direct software sales; sales process automation software, namely, software to integrate and manage software distribution processes, track problems and generate production reports, computer software for tracking distribution of goods and for providing information about the production and distribution of goods and technical manuals sold as a unit that may be downloaded from the Internet, and computers |
| Goods and Services | Telecommunication services, namely, telephone communication services for connecting clients of software-producers with a call-center and/or providing e-mail service worldwide; electronic transmission of software; and providing call center services |
| Goods and Services | Payment processing services, and providing secured credit-card payment processing via the Internet |
| Goods and Services | Business management; business management and office functions, namely, customer data processing, generating sales statistics for others, providing online sales statistics, tracking sales of products and services for others, invoicing services for others; management and consultation services, namely providing technical assistance to business with online electronic communication networks; online retail services featuring a full line of computer software and accompanying manuals, books, computer hardware, computer peripherals, printers, central processing units, and audio and video products, cassettes, CD-ROMs, and DVDs; online ordering services featuring a full line of computer software and accompanying manuals, books computer hardware, computer peripherals, printers, central processing units, and audio and video products, cassettes, CD-ROMs and compact disks; and providing online order forms |
| Goods and Services | Providing technical support services in the nature of troubleshooting of computer hardware and software problems related to automatic billing and e-mail operations; translation services, namely, providing multi-lingual support by e-mail and through call-centers; computer services, namely downloading, upgrading, configuring and diagnosing software; installation of computer software via the Internet; maintenance of computer software in connection with the Internet |
| 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, May 19, 2023 |
| Primary Code | 009 |
| First Use Anywhere Date | Tuesday, February 29, 2000 |
| First Use In Commerce Date | Tuesday, June 19, 2001 |
| 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, May 19, 2023 |
| Primary Code | 035 |
| First Use Anywhere Date | Tuesday, February 29, 2000 |
| First Use In Commerce Date | Tuesday, June 19, 2001 |
| 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, May 19, 2023 |
| Primary Code | 036 |
| First Use Anywhere Date | Tuesday, February 29, 2000 |
| First Use In Commerce Date | Tuesday, June 19, 2001 |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, May 19, 2023 |
| Primary Code | 038 |
| First Use Anywhere Date | Tuesday, February 29, 2000 |
| First Use In Commerce Date | Tuesday, June 19, 2001 |
| 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, May 19, 2023 |
| Primary Code | 042 |
| First Use Anywhere Date | Tuesday, February 29, 2000 |
| First Use In Commerce Date | Tuesday, June 19, 2001 |
| Party Name | DIGITAL RIVER GMBH |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | COLOGNE D-50823 DE |
| Party Name | Element 5 Informationstechnologie und -dienstleistungen AG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | 50677 Koln DE |
| Party Name | Element 5 Informationstechnologie und -dienstleistungen AG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | 50677 Koln DE |
| Party Name | Element 5 Informationstechnologie und -dienstleistungen AG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | 50677 Koln DE |
| Event Date | Event Description |
| Friday, May 19, 2023 | CANCELLED SEC. 8 (10-YR)/EXPIRED SECTION 9 |
| Friday, November 5, 2021 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |
| Wednesday, June 9, 2021 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Sunday, September 8, 2013 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Monday, February 27, 2012 | NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED |
| Monday, February 27, 2012 | REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) |
| Monday, February 27, 2012 | REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED |
| Monday, February 27, 2012 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Thursday, January 19, 2012 | TEAS SECTION 8 & 9 RECEIVED |
| Saturday, March 29, 2008 | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Friday, March 21, 2008 | ASSIGNED TO PARALEGAL |
| Monday, March 17, 2008 | TEAS SECTION 8 & 15 RECEIVED |
| Wednesday, March 5, 2008 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Wednesday, March 5, 2008 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, March 5, 2008 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Friday, October 5, 2007 | CASE FILE IN TICRS |
| Monday, January 9, 2006 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Monday, October 17, 2005 | PAPER RECEIVED |
| Tuesday, November 5, 2002 | REGISTERED-PRINCIPAL REGISTER |
| Thursday, August 15, 2002 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Tuesday, August 13, 2002 | ASSIGNED TO EXAMINER |
| Wednesday, August 7, 2002 | STATEMENT OF USE PROCESSING COMPLETE |
| Friday, May 17, 2002 | SOU EXTENSION 1 GRANTED |
| Wednesday, May 15, 2002 | USE AMENDMENT FILED |
| Wednesday, May 15, 2002 | SOU EXTENSION 1 FILED |
| Thursday, July 25, 2002 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Tuesday, July 16, 2002 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, July 2, 2002 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Wednesday, May 15, 2002 | PAPER RECEIVED |
| Tuesday, January 8, 2002 | NOA MAILED - SOU REQUIRED FROM APPLICANT |
| Tuesday, October 16, 2001 | PUBLISHED FOR OPPOSITION |
| Wednesday, September 26, 2001 | NOTICE OF PUBLICATION |
| Monday, August 13, 2001 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, August 10, 2001 | EXAMINERS AMENDMENT MAILED |
| Wednesday, February 14, 2001 | NON-FINAL ACTION MAILED |
| Thursday, September 21, 2000 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, March 23, 2000 | NON-FINAL ACTION MAILED |
| Saturday, March 11, 2000 | ASSIGNED TO EXAMINER |
| Wednesday, March 8, 2000 | ASSIGNED TO EXAMINER |
| Wednesday, March 8, 2000 | ASSIGNED TO EXAMINER |