| Serial Number | 79128667 |
| Word Mark | HERBERT SMITH FREEHILLS |
| Filing Date | Thursday, August 2, 2012 |
| Status | 706 - SECTION 71 ACCEPTED |
| Status Date | Tuesday, September 3, 2024 |
| Registration Number | 4577958 |
| Registration Date | Tuesday, August 5, 2014 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, May 20, 2014 |
| Goods and Services | Education and training services, namely, conducting of classes, seminars, conferences and workshops in the fields of law, finance, business management and commerce, and distribution of training material in connection therewith; [ publishing of magazines, pamphlets, brochures, manuals, books and newsletters; ] arranging and conducting of educational colloquiums, conferences, seminars, symposiums, workshops and exhibitions in the fields of law, finance, business management and commerce;[ library services;] providing on-line electronic publications, namely, non-downloadable electronic publications in the nature of magazines, pamphlets, brochures, manuals, books and newsletters in the field of law, finance, business management and commerce; translation services; the provision of an on-line forum for the exchange of advice and information in the fields of law, finance, business management and commerce; information, consultancy and advisory services relating to education and training in the fields of law, finance, business management and commerce, including such services provided online from a computer network and/or via the internet and/or extranets |
| Goods and Services | Audio and video recordings featuring educational recordings in the fields of law, finance, business management and commerce; pre-recorded discs, cassettes, cartridges, CD-ROMs, digital video discs (DVDs), and video tapes featuring educational recordings, in the fields of law, finance, business management and commerce; [ exposed photographic and cinematographic films; apparatus and instruments for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing music, sounds, images, text, signals, software, information, data and code; musical recordings; ] sound recordings featuring educational recordings in the fields of law, finance, business management and commerce; [ software and databases provided by telecommunications networks, by online delivery and by way of the internet and the worldwide web, namely, downloadable software for use as a spreadsheet, for word processing, in the fields of law, finance, business management and commerce; ] downloadable software for project management [, financial management, management information systems, electronic time recordkeeping, database management and accounting] for the fields of law, finance, business management and commerce; downloadable databases in the fields of law, finance, business management and commerce; publications in electronic format, namely, magazines, pamphlets, brochures, manuals, books and newsletters in the fields of law, finance, business management and commerce, recorded on computer media [ ; computer software and telecommunications apparatus, namely, modems to enable connection to databases and the internet; computer software to enable searching of data ] |
| Goods and Services | [Providing access to the Internet; rental of access time to global computer networks; transferring and distributing, information and data via computer networks and the internet; internet service provider services ] |
| Goods and Services | Printed matter, namely, magazines, pamphlets, brochures, manuals, books and newsletters in the fields of law, finance, business management and commerce; printed publications, namely, magazines, pamphlets, brochures, manuals, books and newsletters; printed instructional and teaching materials other than apparatus; stationery and writing instruments; printed publications, namely, magazines, pamphlets, brochures, manuals, books for providing business information; all relating to the provision of legal services and other intellectual property portfolio filing, prosecution, registration, maintenance, protection and management services |
| Pseudo Mark | HERBERT SMITH FREE HILLS |
| Goods and Services | Financial consultancy and management; financial management; tax advice |
| Goods and Services | [ Advertising services;] business research; business management assistance; provision of business advice and information; business appraisals; business investigations and enquiries; business administration; compilation and provision of company information for business purposes in the field of law, finance, business management and commerce; [ production of advertising material;] compilation of business statistical information, data processing services, stenography typing services; secretarial services; document reproduction; accounting services; distribution of prospectuses; preparation of business reports; information, consultancy and advisory services, namely, business consulting, business information services and business advisory services, including such services provided online from a computer network and/or via the internet and/or extranets; commercial consultancy; tax consultancy; business and business organization consultancy; consultancy providing business information; business consultancy on international business management, business management troubleshooting, business asset calculations and company evaluations, mergers and acquisitions; [ indexing and electronically distributing advertising materials;] on-line search, management, recovery and retrieval of data, text, information, documents, bibles and precedents, namely, database management services; auditing services, namely, account auditing, business auditing services, insurance claims auditing services and real estate transaction auditing services |
| Goods and Services | Legal and legal advisory services; alternative dispute resolution services, including advocacy and case management in all forms of litigation, arbitration and mediation; legal research; legal services related to company formation and registration services for the registration of companies, trademarks, patents, designs and domain names for identification of users on a global computer network; conveyancing services, namely, legal services in the field of real estate, wills and trusts; establishment, namely, legal rights clearance services, maintenance and management of intellectual and industrial property rights, including such rights on the worldwide web, internet and/or extranets; patent agency and trade mark agency services being legal services; establishment, namely, legal rights clearance services, maintenance and management of domain name registrations and protection, namely, domain name and trade mark watching services; title searching; legal services, namely, intellectual property portfolio management; provision of consultancy, information and advisory services relating to legal matters including such services provided online from a computer network and/or via the internet and/or extranets; legal consultancy |
| Goods and Services | Providing temporary use of online non-downloadable software for the searching, retrieval, indexing, linking and data organization for the internet, electronic communications networks and electronic databases; preparation of technical or research reports, namely, research services in the fields of law, finance, business management and commerce for technological purposes; [ website design, creation and hosting services;] provision of consultancy, information and advisory services relating information and telecommunications technology, including such services provided online from a computer network and/or via the internet and/or extranets |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | G - NOT AVAILABLE |
| Class Status Date | Friday, January 8, 2021 |
| 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, May 3, 2013 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Friday, May 3, 2013 |
| Primary Code | 016 |
| 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, May 3, 2013 |
| 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, May 3, 2013 |
| Primary Code | 036 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Friday, May 3, 2013 |
| Primary Code | 041 |
| 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, May 3, 2013 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Friday, May 3, 2013 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Herbert Smith Freehills LLP |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 21 - NOT AVAILABLE |
| Address | EC2A 2HS GB |
| Party Name | Herbert Smith Freehills LLP |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 21 - NOT AVAILABLE |
| Address | London EC2A 2HS GB |
| Party Name | Herbert Smith Freehills LLP |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 21 - NOT AVAILABLE |
| Address | London EC2A 2HS GB |
| Event Date | Event Description |
| Tuesday, May 7, 2013 | REFUSAL PROCESSED BY MPU |
| Thursday, May 2, 2013 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Friday, May 3, 2013 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, May 3, 2013 | ASSIGNED TO EXAMINER |
| Monday, May 6, 2013 | NON-FINAL ACTION WRITTEN |
| Tuesday, May 7, 2013 | APPLICATION FILING RECEIPT MAILED |
| Tuesday, May 7, 2013 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Tuesday, November 5, 2013 | FINAL REFUSAL E-MAILED |
| Wednesday, May 8, 2013 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Sunday, May 26, 2013 | REFUSAL PROCESSED BY IB |
| Wednesday, June 12, 2013 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, June 12, 2013 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Wednesday, August 21, 2013 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, August 21, 2013 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, August 22, 2013 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Saturday, September 28, 2013 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Tuesday, November 5, 2013 | FINAL REFUSAL WRITTEN |
| Tuesday, November 5, 2013 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Wednesday, April 30, 2014 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, April 16, 2014 | EXAMINERS AMENDMENT -WRITTEN |
| Wednesday, April 16, 2014 | EXAMINERS AMENDMENT E-MAILED |
| Wednesday, April 16, 2014 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Wednesday, April 16, 2014 | ASSIGNED TO LIE |
| Wednesday, April 16, 2014 | EXAMINER'S AMENDMENT ENTERED |
| Wednesday, April 16, 2014 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, April 16, 2014 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, April 30, 2014 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Thursday, February 19, 2015 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Thursday, May 1, 2014 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, May 16, 2014 | NOTIFICATION PROCESSED BY IB |
| Tuesday, May 20, 2014 | PUBLISHED FOR OPPOSITION |
| Tuesday, May 20, 2014 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, August 5, 2014 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, November 5, 2014 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, December 23, 2014 | FINAL DISPOSITION PROCESSED |
| Tuesday, December 23, 2014 | FINAL DISPOSITION NOTICE SENT TO IB |
| Friday, February 13, 2015 | NEW REPRESENTATIVE AT IB RECEIVED |
| Monday, August 5, 2019 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Wednesday, October 9, 2019 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Wednesday, July 29, 2020 | TEAS SECTION 71 & 15 RECEIVED |
| Wednesday, November 25, 2020 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Friday, January 8, 2021 | REGISTERED - PARTIAL SEC. 71 ACCEPTED & SEC. 15 ACK. |
| Friday, January 8, 2021 | NOTICE OF ACCEPTANCE OF SEC. 71 & 15 - E-MAILED |
| Wednesday, October 27, 2021 | NEW REPRESENTATIVE AT IB RECEIVED |
| Wednesday, September 8, 2021 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Friday, September 24, 2021 | INVALIDATION PROCESSED |
| Friday, September 24, 2021 | PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Saturday, August 5, 2023 | COURTESY REMINDER - SEC. 71 (10-YR) E-MAILED |
| Friday, August 2, 2024 | TEAS SECTION 71 RECEIVED |
| Tuesday, September 3, 2024 | REGISTERED-SEC.71 ACCEPTED |
| Tuesday, September 3, 2024 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Friday, August 19, 2022 | INTERNATIONAL REGISTRATION RENEWED |
| Wednesday, November 3, 2021 | PARTIAL INVALIDATION PROCESSED BY THE IB |
| Sunday, August 14, 2022 | NEW REPRESENTATIVE AT IB RECEIVED |