| Serial Number | 77055208 |
| Word Mark | METAVANTE |
| Filing Date | Friday, December 1, 2006 |
| Status | 800 - REGISTERED AND RENEWED |
| Status Date | Monday, August 27, 2018 |
| Registration Number | 3429259 |
| Registration Date | Tuesday, May 20, 2008 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, March 4, 2008 |
| Goods and Services | Digital check imaging services |
| Amendment to a Registration/Renewal Certificate | Column 4, line 39 "care" is deleted, and "card" is inserted. |
| Goods and Services | [ Computer software, namely, general ledger accounting and account reconciliation software; computer software for use in customer relationship management (CRM); computer communications software to allow customers to access bank or trust account information and transact bank or trust business; computer software to conduct electronic banking, electronic funds transfers, bill payment, check imaging and processing, credit card account processing, debit card account processing, prepaid debit card processing, safe deposit account access; computer software for trust and investment account processing; fraud prevention and detection software in the fields of banking and trust; loan management software; computer software for creating customized bank statements; computer software for use in telephonic account access, namely, voice-recognition software to access and change account information, transfer funds; computer software for application and database integration in the fields of financial services, [ health care administration, ] telecommunications, banking trust, debit, credit and prepaid card transactions, payments, and electronic payments; * providing * Automated Teller Machines (ATM) and other * related * computer hardware in the fields of financial services, health care administration, * namely, flexible benefit claim processing, medical claim processing and health care payment transaction processing, * telecommunications, banking, debit, credit and prepaid card transactions, and electronic payments; computer software platform for management of prepaid debit, ATM and credit card accounts; computer software for electronic bill presentment and payment; magnetically encoded credit cards, ATM cards, prepaid debit cards, stored value cards, transportation fare cards, healthcare spending account cards, flexible spending account cards, payment cards; computer software for providing an online database in the field of transaction processing to upload transactional data, provide statistical analysis, and produce notifications and reports; network access server hardware, network access server software; computer software for real-time patient eligibility verification; computer software for custom generation of reports and statements; computer software for check processing; computer software for document generation and management; computer software for use in point-of-sale transactions; computer software for tax preparation and submission; computer software for risk assessment, tracking and management in the field of financial institutions; computer software for organizing, archiving, networking, managing, retrieving, and viewing image documents; anti-money laundering software, namely, computer to identify and withhold services from money-launderers and fraudsters and to provide information and make reports required for compliance with anti-money laundering laws; computer software for management of health plans, health care payments and [ health-related ] account administration, * limited to processing flexible benefit and medical health plans and flexible benefit and medical health care payments, and administration of flexible benefit and medical accounts * ] |
| Amendment to a Registration/Renewal Certificate | Statement(s): Column 1, line 40 before "telecommunications" "namely, flexible benefit claim processing, medical claim processing and health care payment transaction processing," is inserted. Column 3, line 2 "limited to processing flexible benefit and medical health plans and flexible benefit and medical health care payments, and administration of flexible benefit and medical accounts"is inserted at end of the class 9. Column 3, line 29, after "providers" "limited to flexible benefit claim processing, medical claim processing, health care payment transaction processing, health care identification care systems, and health care revenue cycle management" is inserted. Column 4, line 19, after "transmission" "in the financial services industry; electronic data transmission in the health care industry, limited to flexible benefit claim processing, medical claim processing, and health care payment transaction processing" is inserted. Column 4, line 50 "all excluding in the health care industry" is inserted at end of class 42. |
| Goods and Services | [Statement mailing services, namely, presorting, stuffing, sealing, postage metering, bundling, and delivering statements of account for mailing to post office] |
| Goods and Services | [ Printed publications, namely, manuals, newsletters, reports, books, instructional course materials and informational brochures, all concerning computer software used for document design, creation, management and production; printed publications, namely, instruction manuals and user manuals about use and maintenance of computer hardware and software, all related to the financial services industry ] |
| Goods and Services | Electronic data transmission * in the financial services industry; [ electronic data transmission in the health care industry, limited to flexible benefit claim processing, medical claim processing, and health care payment transaction processing *; ] electronic delivery of images via a computer network; on-line document delivery via a computer network; providing electronic transmission of credit card transaction data and electronic payment data via a computer network; providing private and secure real time electronic communication over a computer network; provision of access to data or documents stored electronically in central files for remote consultation; telecommunications consultation; telephone communication services; transfer of data by telecommunication; voice-activated dialing services |
| Goods and Services | Financial services, namely, funds transfer and transaction processing services; financial information provided by electronic means; online banking services; loan processing services, for origination, acquisition, servicing, securitization and brokerage of loans; deposit account services, namely, providing transaction processing and card support; checking account services, namely, providing transaction processing and card support; credit account services, namely, providing transaction processing and card support; [ health savings account services, namely, providing transaction processing and card support; flexible spending account services, namely, providing transaction processing, card support, account management, account administration, health care transaction processing ]; electronic funds transfer services; automatic banking services; electronic statement bill presentment services; online bill payment services; item processing services, namely, processing services provided in connection with returned checks; collection services, namely, collection of debts and accounts for others; fund valuation services; check processing services; consulting services in the field of risk management; consulting services in the field of financial services; consulting services in the field of payment processing |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Consulting services in the field of business, strategic planning, operations; business consulting services in the field of operational risk assessment; consulting services in the field of business productivity and profitability; [ business consulting services in the field of health care transaction processing, health care administration and third party administrators and health care providers, * limited to flexible benefit claim processing, medical claim processing, health care payment transaction processing, health care identification card systems, and health care revenue cycle management *; ] data processing services; payroll management services; providing business process outsourcing services to others in the financial field, namely, opening accounts, customer service, and call center services; statement rendering services, namely, preparation of statements of accounts for others; statement mailing services, namely, sorting, handling and receiving statements of accounts services for others; fund accounting services |
| Goods and Services | [Consulting services in the field of fraud detection] |
| Goods and Services | Consulting services in the field of design, selection, implementation and use of computer; data conversion of computer programs and data, but not a physical conversion; computer programming for others; Consulting services in the fields of data conversion, middleware integration, and computer and information technology; Electronic check conversion processing through document data transfer and physical conversion services from one media to another; * all excluding in the health care industry * |
| 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 | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Monday, December 1, 2014 |
| Primary Code | 009 |
| First Use Anywhere Date | Thursday, July 13, 2000 |
| First Use In Commerce Date | Thursday, November 30, 2000 |
| 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 | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Monday, December 1, 2014 |
| Primary Code | 016 |
| First Use Anywhere Date | Thursday, July 13, 2000 |
| First Use In Commerce Date | Wednesday, November 1, 2000 |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, December 6, 2006 |
| Primary Code | 035 |
| First Use Anywhere Date | Thursday, July 13, 2000 |
| First Use In Commerce Date | Wednesday, November 1, 2000 |
| 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 | Wednesday, December 6, 2006 |
| Primary Code | 036 |
| First Use Anywhere Date | Thursday, July 13, 2000 |
| First Use In Commerce Date | Wednesday, November 1, 2000 |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, December 6, 2006 |
| Primary Code | 038 |
| First Use Anywhere Date | Thursday, July 13, 2000 |
| First Use In Commerce Date | Wednesday, November 1, 2000 |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Monday, August 27, 2018 |
| Primary Code | 039 |
| First Use Anywhere Date | Thursday, July 13, 2000 |
| First Use In Commerce Date | Wednesday, November 1, 2000 |
| 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 | Thursday, January 24, 2008 |
| Primary Code | 041 |
| First Use Anywhere Date | Thursday, July 13, 2000 |
| First Use In Commerce Date | Thursday, July 13, 2000 |
| 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 | Wednesday, December 6, 2006 |
| Primary Code | 042 |
| First Use Anywhere Date | Thursday, July 13, 2000 |
| First Use In Commerce Date | Wednesday, November 1, 2000 |
| 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 | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Monday, August 27, 2018 |
| Primary Code | 045 |
| First Use Anywhere Date | Thursday, July 13, 2000 |
| First Use In Commerce Date | Wednesday, November 1, 2000 |
| Party Name | FIDELITY INFORMATION SERVICES, LLC |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Jacksonville, FL 32202 |
| Party Name | Metavante Corporation |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Jacksonville, FL 32204 |
| Party Name | Metavante Corporation |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Milwaukee, WI 53223 |
| Party Name | Metavante Corporation |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Milwaukee, WI 53223 |
| Event Date | Event Description |
| Monday, November 6, 2023 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Monday, November 6, 2023 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Monday, November 6, 2023 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Monday, November 6, 2023 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Monday, November 6, 2023 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Wednesday, October 26, 2022 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Wednesday, October 12, 2022 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Monday, August 27, 2018 | NOTICE OF ACCEPTANCE OF SEC. 8 - E-MAILED |
| Monday, August 27, 2018 | REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) |
| Monday, August 27, 2018 | REGISTERED - SEC. 9 GRANTED/CHECK RECORD FOR SEC. 8 |
| Monday, August 27, 2018 | REGISTERED - PARTIAL SEC. 8 (10-YR) ACCEPTED |
| Monday, August 27, 2018 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Thursday, August 16, 2018 | TEAS SECTION 8 & 9 RECEIVED |
| Saturday, May 20, 2017 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |
| Monday, February 23, 2015 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Monday, December 1, 2014 | NOTICE OF ACCEPTANCE OF SEC. 8 - E-MAILED |
| Monday, December 1, 2014 | REGISTERED - PARTIAL SEC. 8 (6-YR) ACCEPTED |
| Thursday, November 20, 2014 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Thursday, November 6, 2014 | TEAS SECTION 8 RECEIVED |
| Tuesday, April 26, 2011 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, April 26, 2011 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, August 18, 2010 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Wednesday, September 30, 2009 | AMENDMENT UNDER SECTION 7 ¿ PROCESSED |
| Thursday, June 18, 2009 | TTAB RELEASE CASE TO TRADEMARKS |
| Thursday, June 18, 2009 | CANCELLATION TERMINATED NO. 999999 |
| Tuesday, June 16, 2009 | CANCELLATION DENIED NO. 999999 |
| Friday, June 5, 2009 | AMENDMENT UNDER SECTION 7 ¿ PROCESSED |
| Friday, June 5, 2009 | ASSIGNED TO PARALEGAL |
| Friday, May 15, 2009 | PAPER RECEIVED |
| Friday, March 13, 2009 | TEAS SECTION 7 REQUEST RECEIVED |
| Tuesday, July 1, 2008 | CANCELLATION INSTITUTED NO. 999999 |
| Tuesday, May 20, 2008 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, March 4, 2008 | PUBLISHED FOR OPPOSITION |
| Wednesday, February 13, 2008 | NOTICE OF PUBLICATION |
| Friday, January 25, 2008 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Thursday, January 24, 2008 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, January 24, 2008 | EXAMINER'S AMENDMENT ENTERED |
| Thursday, January 24, 2008 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Thursday, January 24, 2008 | EXAMINERS AMENDMENT E-MAILED |
| Thursday, January 24, 2008 | EXAMINERS AMENDMENT -WRITTEN |
| Sunday, January 20, 2008 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Monday, November 26, 2007 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Friday, November 9, 2007 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Thursday, November 1, 2007 | ASSIGNED TO LIE |
| Sunday, September 30, 2007 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, September 26, 2007 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, September 26, 2007 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, September 26, 2007 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Saturday, March 31, 2007 | NON-FINAL ACTION E-MAILED |
| Saturday, March 31, 2007 | NON-FINAL ACTION WRITTEN |
| Tuesday, March 27, 2007 | ASSIGNED TO EXAMINER |
| Wednesday, December 6, 2006 | NEW APPLICATION ENTERED |