| Serial Number | 79093554 |
| Word Mark | MERCATEO |
| Filing Date | Tuesday, December 14, 2010 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, March 15, 2019 |
| Registration Number | 4188447 |
| Registration Date | Tuesday, August 14, 2012 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, May 29, 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 term "MERCATEO", all in red, with a graphical image of circle, outlined in red and filled in white, with a smaller filled red circle within the larger circle. |
| Goods and Services | Business management; business administration; providing office functions; arranging of buying and selling contracts for third parties; procurement, namely, purchasing office supplies, construction, small trade, agriculture, plant equipment, storage equipment, industrial supplies, technical trade supplies, MEP/HVACR, namely, mechanical, electrical, plumbing, heating, ventilating and air conditioning equipment and supplies, building equipment, hardware, software, telecommunications, electronic engineering, electrical engineering, industrial safety, medical supplies, therapeutic supplies, laboratory equipment, vehicle parts and accessories, packaging and shipping supplies, cleaning services, clothes, sports goods, club supplies, winter commodities, entertainment electronics, photographic supplies, fact books, architects' supplies, all for others; computerized on-line ordering featuring general merchandise and general consumer goods; auctioneering; auctioneering provided on the Internet; bill payment services; marketing services, namely, providing informational websites designed to generate sales traffic via hyperlinks to other websites; online advertising on a computer network; providing advertising, marketing and promotional services, namely, development of advertising campaigns for television, CD-ROM, print and Internet; cost price analysis; dissemination of advertising matter; sales promotion; sales promotion for third parties; rental of advertising space; rental of advertising space on web sites; banner advertising; providing an on-line searchable database featuring business information and business contacts; arranging newspaper subscriptions for others; direct mail advertising; distribution of samples; demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and home shopping services; computerized database management, namely, collecting data; arranging of buying and selling contracts for third parties for the use of exhibition and gastronomy services; arranging of buying and selling contracts for third parties for cleaning and plant care services; arranging of buying and selling contracts for third parties for office functions and translation services, and for job training; employment agencies; arranging of buying and selling contracts for third parties for caretaker services; arranging of buying and selling contracts for third parties for advertising and marketing services; arranging of buying and selling contracts for third parties for the provision of electricity supply; presentation of goods on communication media for retail purposes; arranging of commercial contracts for the use of Internet services with regard to the design and hosting of websites, e-commerce solutions and Web design, as well as with regard to providing Internet access; arranging of commercial contracts for consultancy services with respect to the use of the Internet; arranging of commercial contracts for third parties for legal advice and representation in legal matters; arranging of commercial contracts for third parties for the use of computer programming services; arranging of commercial contracts for third parties for the use of computer, software and network services, namely, arranging commercial contracts for third parties for the installation and configuration of computers, software and networks; arranging of commercial contracts for third parties for the use of services with respect to the hosting of computers, software and networks; arranging of commercial contracts for third parties regarding the use of services of a software engineer; providing advertising service to distribute advertisements for display on electronic bulletin boards; wholesale and retail store services featuring office supplies; construction, small trade, agriculture, plant equipment, storage equipment, industrial supplies, technical trade supplies; MEP/HVACR, namely, mechanical, electrical, plumbing, heating ventilating and air conditioning equipment and supplies, building equipment, hardware, software, telecommunications, electronic engineering, electrical engineering, industrial safety, medical supplies, therapeutic supplies, laboratory equipment, vehicle parts and accessories, packaging and shipping supplies, cleaning services, clothes, sports goods, club supplies, winter commodities, entertainment electronics, photographic supplies, fact books, architects' supplies; book-keeping |
| Goods and Services | Debt collection services; insurance brokerage; procurement of leasing contracts for others for hardware, software, vehicles and machinery and equipment; real estate agency services |
| Goods and Services | Building construction |
| Goods and Services | Telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; providing access to the Internet; providing telecommunication connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works; rental of access time to global computer networks |
| Goods and Services | Transport of goods; packaging articles for transportation; packaging articles to the order and specification of others; storage of goods; car rental services; courier services; travel arrangement, namely, booking of seats for travel; delivery of goods by mail order |
| Goods and Services | Design and development of computer hardware and software; updating websites for others; computer services, namely, providing search engines for obtaining data on a global computer network; computer services, namely, search engine optimization; technical administration of servers for others; design of homepages and websites; installation and maintenance of database software; recording data for others on optical, digital and magnetic media for electronic storage; rental services relating to data processing equipment and computers; hosting websites for others; providing virtual computer environments through cloud computing; design and maintenance of websites for others |
| Goods and Services | Hotel reservation services |
| Translation of Words in Mark | The wording "MERCATEO" has no meaning in a foreign language. |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2019 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2019 |
| Primary Code | 036 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2019 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2019 |
| Primary Code | 038 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2019 |
| Primary Code | 039 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2019 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 043 - Services for providing food and drink; temporary accommodations. |
| US Class Codes | 100, 101 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2019 |
| Primary Code | 043 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Mercateo Deutschland AG |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | Unite Network AG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | DE |
| Party Name | Mercateo AG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | DE |
| Party Name | Mercateo AG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | DE |
| Event Date | Event Description |
| Thursday, April 9, 2020 | CHANGE OF OWNER RECEIVED FROM IB |
| Thursday, February 13, 2020 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Thursday, January 9, 2020 | TOTAL INVALIDATION PROCESSED BY THE IB |
| Wednesday, December 11, 2019 | TOTAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Wednesday, December 11, 2019 | INVALIDATION PROCESSED |
| Friday, November 15, 2019 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Friday, March 15, 2019 | CANCELLED SECTION 71 |
| Thursday, December 1, 2016 | INTERNATIONAL REGISTRATION RENEWED |
| Monday, December 23, 2013 | NEW REPRESENTATIVE AT IB RECEIVED |
| Sunday, February 24, 2013 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, February 4, 2013 | FINAL DISPOSITION NOTICE SENT TO IB |
| Monday, February 4, 2013 | FINAL DISPOSITION PROCESSED |
| Wednesday, November 14, 2012 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, August 28, 2012 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, August 14, 2012 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, August 8, 2012 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, August 8, 2012 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Tuesday, May 29, 2012 | PUBLISHED FOR OPPOSITION |
| Friday, May 18, 2012 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Wednesday, May 9, 2012 | NOTICE OF PUBLICATION |
| Monday, April 23, 2012 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, April 17, 2012 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, April 5, 2012 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, April 5, 2012 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, April 5, 2012 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Tuesday, October 25, 2011 | FINAL REFUSAL MAILED |
| Monday, October 24, 2011 | FINAL REFUSAL WRITTEN |
| Monday, October 3, 2011 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, October 3, 2011 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, September 30, 2011 | ASSIGNED TO LIE |
| Wednesday, September 21, 2011 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, April 8, 2011 | REFUSAL PROCESSED BY IB |
| Monday, March 21, 2011 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Monday, March 21, 2011 | REFUSAL PROCESSED BY MPU |
| Sunday, March 20, 2011 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Saturday, March 19, 2011 | NON-FINAL ACTION WRITTEN |
| Wednesday, March 16, 2011 | ASSIGNED TO EXAMINER |
| Saturday, March 12, 2011 | APPLICATION FILING RECEIPT MAILED |
| Tuesday, March 8, 2011 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
| Thursday, March 3, 2011 | SN ASSIGNED FOR SECT 66A SUBSEQ DESIG FROM IB |