| Serial Number | 85709041 |
| Word Mark | NETNAMES NN ONE STEP AHEAD |
| Filing Date | Tuesday, August 21, 2012 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Friday, June 18, 2021 |
| Registration Number | 4635078 |
| Registration Date | Tuesday, November 11, 2014 |
| Mark Drawing | 5000 - Drawing with word(s) / letter(s) / number(s) in Stylized form |
| Published for Opposition Date | Tuesday, August 26, 2014 |
| Indication of Colors claimed | The color(s) gray and orange is/are claimed as a feature of the mark. |
| Description of Mark | The mark consists of the wording "NETNAMES" in gray with the slightly slanted superscript "NN" in orange immediately following "NETNAMES" and the phrase "ONE STEP AHEAD" in gray appearing below "NETNAMES". |
| Goods and Services | Downloadable electronic newsletters in the field of domain name management, brand protection, domain name acquisitions, anti-piracy and online security; downloadable publications, namely, books, magazines, brochures, and pamphlets, in the field of domain name management, brand protection, domain name acquisitions, anti-piracy and online security; computer software for online brand management and the provision of internet-based services to third parties, and/or for use in database management |
| Goods and Services | Business advisory services; business research services; providing business information in the field of global computer network address and URL registration; Brand analysis, creation, development, and evaluation services in the field of trade names and domain names; procurement of domain names for others, namely, the acquisition of domain names from third parties |
| Goods and Services | Telecommunications services, namely, the transmission of data, graphics, images or audio and video by means of telecommunications networks, wireless telecommunications networks and the Internet; data communication services, namely, the transmission of data, graphics, images or audio and video by means of telecommunications networks, wireless telecommunications networks and the internet; email services; Services relating to the security of online communications and online transactions, namely, providing secure access to online communication facilities for others to upload, view, copy, print, download and share documents and images for the purpose of consumer driven transactions and online brand management |
| Goods and Services | Computerized storage of data |
| Goods and Services | Education services, namely, developing educational manuals for others in the field of domain name management, brand protection, domain name acquisitions, anti-piracy and online security; educational services, namely, providing training, conferences and seminars in the field of domain name management, brand protection, domain name acquisitions, anti-piracy and online security |
| Goods and Services | The provision of data back-up services for computer hard drive data; the provision of technical assistance to third parties, namely, troubleshooting computer software and Internet problems; computer software services, namely, the design and remote management of information technology systems for others; web and website hosting services for third parties |
| Goods and Services | Domain name management and advisory services, namely, domain name registration services and advisory services in the field of domain name registrations; anti-counterfeiting services relating to online brand protection and monitoring, anti-counterfeiting and anti-piracy, namely, searches, investigations and reporting on the misappropriation of brands, the sale or offer for sale of counterfeit goods, and the unlawful provision of copyright works by third parties on the Internet; domain name searching services, namely, conducting online computerized searches for the availability of domain names; intellectual property consulting services, namely, the review and analysis of third party intellectual property rights |
| Pseudo Mark | NET NAMES NN ONE STEP AHEAD |
| Section 2(f) Limitation Statement | As to "NETNAMES" |
| 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, June 18, 2021 |
| Primary Code | 009 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, June 18, 2021 |
| Primary Code | 035 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, June 18, 2021 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, June 18, 2021 |
| Primary Code | 039 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, June 18, 2021 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, June 18, 2021 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, June 18, 2021 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | NETNAMES OPERATIONS LIMITED |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | LONDON SE11GA GB |
| Party Name | NETNAMES OPERATIONS LIMITED |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | LONDON SE11GA GB |
| Party Name | NETNAMES OPERATIONS LIMITED |
| Party Type | 11 - New Owner Before Publication |
| Legal Entity Type | 03 - Corporation |
| Address | LONDON SE11GA GB |
| Party Name | Group NBT Limited |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | London SE11GA GB |
| Event Date | Event Description |
| Friday, June 18, 2021 | CANCELLED SEC. 8 (6-YR) |
| Monday, November 11, 2019 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Monday, October 3, 2016 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Monday, October 3, 2016 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Thursday, April 30, 2015 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, April 30, 2015 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Tuesday, November 11, 2014 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, August 26, 2014 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, August 26, 2014 | PUBLISHED FOR OPPOSITION |
| Wednesday, August 6, 2014 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, July 23, 2014 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Monday, July 21, 2014 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Monday, July 21, 2014 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, July 21, 2014 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, July 14, 2014 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, February 4, 2014 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, February 4, 2014 | NON-FINAL ACTION E-MAILED |
| Tuesday, February 4, 2014 | NON-FINAL ACTION WRITTEN |
| Tuesday, February 4, 2014 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, February 4, 2014 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, January 29, 2014 | TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED |
| Wednesday, January 22, 2014 | NOTIFICATION OF LETTER OF SUSPENSION E-MAILED |
| Wednesday, January 22, 2014 | LETTER OF SUSPENSION E-MAILED |
| Wednesday, January 22, 2014 | SUSPENSION LETTER WRITTEN |
| Friday, January 17, 2014 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, January 17, 2014 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, January 15, 2014 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Tuesday, January 14, 2014 | ASSIGNED TO LIE |
| Monday, December 23, 2013 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Sunday, June 23, 2013 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Sunday, June 23, 2013 | NON-FINAL ACTION E-MAILED |
| Sunday, June 23, 2013 | NON-FINAL ACTION WRITTEN |
| Tuesday, June 4, 2013 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, June 4, 2013 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, June 4, 2013 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Saturday, December 15, 2012 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Saturday, December 15, 2012 | NON-FINAL ACTION E-MAILED |
| Saturday, December 15, 2012 | NON-FINAL ACTION WRITTEN |
| Friday, December 14, 2012 | ASSIGNED TO EXAMINER |
| Thursday, August 30, 2012 | NOTICE OF PSEUDO MARK MAILED |
| Wednesday, August 29, 2012 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
| Friday, August 24, 2012 | NEW APPLICATION ENTERED IN TRAM |