| Serial Number | 86595238 |
| Word Mark | ELM SOLUTIONS |
| Filing Date | Monday, April 13, 2015 |
| Status | 701 - SECTION 8 - ACCEPTED |
| Status Date | Friday, May 12, 2023 |
| Registration Number | 5070288 |
| Registration Date | Tuesday, October 25, 2016 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | NOT AVAILABLE |
| Goods and Services | Online publication of non-downloadable e-books and reports featuring analysis of pricing and staffing in the legal industry; Online publication of non-downloadable e-books, papers, case studies, and reports in the fields of legal, claims defense, governance, risk, and compliance services |
| Goods and Services | Providing a website featuring information in the fields of law and legal case management; Providing information in the field of regulatory compliance; Regulatory compliance consulting in the field of corporate governance, business regulations, global risk and compliance |
| Goods and Services | Printed publications, namely, reports that provide an analysis of pricing and staffing in the legal industry |
| Goods and Services | Application service provider (ASP) featuring software for providing an on-line database in the field of transaction processing to upload transactional data, provide statistical analysis, and produce notifications reports; Providing a website featuring temporary use of non-downloadable software for use in monitoring and managing corporate governance, compliance, risk data and regulatory compliance; Providing a website featuring temporary use of non-downloadable software for preparing invoices over computer networks, intranets and the internet; Computer services, namely, cloud hosting provider services; Design, development and implementation of software; Providing a website featuring temporary use of non-downloadable software for use in the legal field for legal operations management, for electronic invoicing, and for facilitating collaboration between law firms and users of legal services; Providing on-line, non-downloadable, Internet-based software application for tracking, analyzing, and storing billing data and information; Providing non-downloadable online billing software for tracking budget performance for legal services; Providing a website featuring temporary use of non-downloadable financial software for analyzing legal expenditures; Application service provider (ASP) featuring software for providing an on-line database in the field of financial transaction processing to upload transactional data, provide statistical analysis, and produce reports |
| Goods and Services | Computer software for use in monitoring and managing corporate governance and compliance, risk data and regulatory compliance; Computer application software for use in monitoring and managing corporate governance and compliance, risk data and regulatory compliance for use on mobile devices; Computer software for use in budgeting, managing billing, generating invoices, tracking legal expenditures, creating reports consisting of budgets and expenditures, and collaborating; Computer software for use in managing litigation documents, deposition testimony, and electronic litigation discovery; Computer software for use in billing in the field of corporate litigation, intellectual property, legal contracting, litigated claims for the insured, and regulatory compliance; Computer software for legal professionals to manage and track the billing of time; computer software for legal professionals to create reports and invoices in a standard format; computer software for generating bills for electronic invoicing; Downloadable videos, podcasts, and infographics via the Internet and wireless devices, all in the fields of legal, claims defense, governance, risk, and compliance services; Electronic publications, namely, e-books and reports featuring analysis of pricing and staffing in the legal industry and recorded on computer media; Electronic downloadable publications, namely, reports and e-books that provide an analysis of pricing and staffing in the legal industry; Electronic publications, namely, books and papers in the fields of legal, claims defense, governance, risk, and compliance services on pre-recorded computer media; Electronic downloadable publications, namely, a book which provides an analysis of law firm rates, trends, and practices, e-books and papers on industry practices, and computer software help, instructional, and configuration materials, namely, books and papers, all in the fields of legal, claims defense, governance, risk, and compliance 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 | Monday, April 20, 2015 |
| Primary Code | 009 |
| First Use Anywhere Date | Friday, January 30, 2015 |
| First Use In Commerce Date | Friday, January 30, 2015 |
| International Class | 016 - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks. |
| US Class Codes | 002, 005, 022, 023, 029, 037, 038, 050 |
| Class Status Code | 6 - Active |
| Class Status Date | Saturday, January 30, 2016 |
| Primary Code | 016 |
| First Use Anywhere Date | Friday, January 30, 2015 |
| First Use In Commerce Date | Friday, January 30, 2015 |
| International Class | 041 - Education; providing of training; entertainment; sporting and cultural activities. |
| US Class Codes | 100, 101, 107 |
| Class Status Code | 6 - Active |
| Class Status Date | Saturday, January 30, 2016 |
| Primary Code | 041 |
| First Use Anywhere Date | Friday, January 30, 2015 |
| First Use In Commerce Date | Friday, January 30, 2015 |
| 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 | Monday, April 20, 2015 |
| Primary Code | 042 |
| First Use Anywhere Date | Friday, January 30, 2015 |
| First Use In Commerce Date | Friday, January 30, 2015 |
| 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 | 6 - Active |
| Class Status Date | Monday, April 20, 2015 |
| Primary Code | 045 |
| First Use Anywhere Date | Friday, January 30, 2015 |
| First Use In Commerce Date | Friday, January 30, 2015 |
| Party Name | Wolters Kluwer ELM Solutions, Inc. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | HOUSTON, TX 77056 |
| Party Name | Wolters Kluwer ELM Solutions, Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Houston, TX 77056 |
| Event Date | Event Description |
| Thursday, April 16, 2015 | NEW APPLICATION ENTERED |
| Monday, April 20, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, July 21, 2015 | ASSIGNED TO EXAMINER |
| Wednesday, July 29, 2015 | NON-FINAL ACTION WRITTEN |
| Wednesday, July 29, 2015 | NON-FINAL ACTION E-MAILED |
| Wednesday, July 29, 2015 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Friday, January 29, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, January 29, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, January 30, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, February 22, 2016 | FINAL REFUSAL WRITTEN |
| Monday, February 22, 2016 | FINAL REFUSAL E-MAILED |
| Monday, February 22, 2016 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Friday, August 5, 2016 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Friday, August 5, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, August 6, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, August 25, 2016 | EXAMINERS AMENDMENT -WRITTEN |
| Thursday, August 25, 2016 | EXAMINERS AMENDMENT E-MAILED |
| Thursday, August 25, 2016 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Thursday, August 25, 2016 | EXAMINER'S AMENDMENT ENTERED |
| Friday, August 26, 2016 | APPROVED FOR REGISTRATION SUPPLEMENTAL REGISTER |
| Wednesday, September 14, 2016 | ASSIGNED TO LIE |
| Monday, September 19, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, October 25, 2016 | REGISTERED-SUPPLEMENTAL REGISTER |
| Thursday, August 26, 2021 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Thursday, August 26, 2021 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Thursday, August 26, 2021 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, August 26, 2021 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Thursday, August 26, 2021 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Monday, October 25, 2021 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Tuesday, October 25, 2022 | TEAS SECTION 8 RECEIVED |
| Friday, May 12, 2023 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Friday, May 12, 2023 | REGISTERED - SEC. 8 (6-YR) ACCEPTED |
| Friday, May 12, 2023 | NOTICE OF ACCEPTANCE OF SEC. 8 - E-MAILED |
| Sunday, October 26, 2025 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |