| Serial Number | 87209376 |
| Word Mark | NEXTCLOUD |
| Filing Date | Thursday, October 20, 2016 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, February 4, 2020 |
| Registration Number | 5978521 |
| Registration Date | Tuesday, February 4, 2020 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, April 2, 2019 |
| Goods and Services | Training in the field of software instruction and usage, setup and administration of cloud-based systems and software for enterprise file synchronization, sharing and collaboration; Educational services, namely, conducting classes, seminars, conferences, workshops and training in the fields of usage, setup and administration of networked file synchronization and sharing and enterprise social networking for the workplace such as connecting, communicating and collaborating with others; Educational services, namely, conducting on-line training from a computer database or via the internet or extranets in the fields of usage, setup and administration of networked file synchronization and sharing and enterprise social networking for the workplace such as connecting, communicating and collaborating with others; Provision of training services for business in the field of software instruction |
| Goods and Services | Computer software applications for secure networked file synchronization and sharing and enterprise social networking for the workplace and for providing a range of features to connect, communicate and collaborate with others with essential functionalities, namely, sharing news, creating personal profiles and groups, electronic mail, calendar feature, collaborative document editing and sharing, and messaging; Downloadable computer software applications for secure networked file synchronization and sharing and enterprise social networking for the workplace and for providing a range of features to connect, communicate and collaborate with others with essential functionalities, namely, sharing news, creating personal profiles and groups, electronic mail, calendar feature, collaborative document editing and sharing, and messaging; Software and computer software applications for mobile devices for securely synchronizing and distributing mobile device storage to cloud storage with essential functionalities, namely, reading, renaming, copying, moving, and deleting files stored in the cloud and sending files to other mobile devices, displaying documents and multimedia-files, adding any kind of data in end-2-end encrypted form or unencrypted via a cryptographic cloud system, and providing a range of features to connect, communicate and collaborate with others, namely, sharing news, creating personal profiles and groups, electronic mail, calendar feature, collaborative document editing and sharing, and messaging; Downloadable software applications for use with mobile devices for securely synchronizing and distributing mobile device storage to cloud storage with essential functionalities, namely, reading, renaming, copying, moving, and deleting files stored in the cloud and sending files to other mobile devices, displaying documents and multimedia-files, adding any kind of data in end-2-end encrypted form or unencrypted via a cryptographic cloud system, and providing a range of features to connect, communicate and collaborate with others, namely, sharing news, creating personal profiles and groups, electronic mail, calendar feature, collaborative document editing and sharing, and messaging; audio recordings for providing learning material, instructions for said computer software; video recordings featuring instruction in computer software; Audio recording apparatus for audio conferencing and messaging; Computer software for secure storage and distribution of files and documents and collaborative editing and sharing, secure electronic access to data for electronic health applications with fine-granular access control and access logging, electronic access and distribution of documents, spreadsheets and other data with secure multi-factor user authentication for financial institutions and providing a range of features to connect, communicate and collaborate with audio and video and collaborate company-wide and cross-company with essential functionalities, namely, sharing news, creating personal profiles and groups, electronic mail, calendar feature, collaborative document editing and sharing, and messaging; Downloadable computer software for secure storage and distribution of files and documents and collaborative editing and sharing, secure electronic access to data for electronic health applications with fine-granular access control and access logging, electronic access and distribution of documents, spreadsheets and other data with secure multi-factor user authentication for financial institutions and providing a range of features to connect, communicate and collaborate with audio and video and collaborate company-wide and cross-company with essential functionalities, namely, sharing news, creating personal profiles and groups, electronic mail, calendar feature, collaborative document editing and sharing, and messaging; software for building online communities that inspire interaction among people that share an identity or interest; Digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring online training material in the field of computer software; Biometric sensor with secure interface to cloud storage for user access control; Security hardened computer hardware including printed circuit boards; Educational software featuring instructions for the setup and usage of distributed cloud storage for file synchronization and sharing, enterprise social networking and connecting, communicating and collaborating with others |
| Goods and Services | Communications by computer terminals; Providing cloud storage access over the Internet; Electronic transmission of sound, video and information over a network; Secure electronic transmission of data, sound or images; Electronic transmission and retransmission of sounds, images, documents, messages and data; On-line services, namely, message sending; Providing online chatrooms for the transmission of messages, comments and multimedia content among users; Transmission of short messages, images, speech, sound, music and text communications between mobile telecommunications devices; Telecommunication services, namely, electronic transmission and retransmission of sounds, images, video, documents, messages and data via platforms and portals on the Internet and other media; Transmission of information through video communication systems; Transmission of videos, movies, pictures, images, text, photos, games, user generated content, audio content, and information via the Internet; Provision of telecommunication facilities for the electronic transmission and retransmission of sounds, video, images, documents, messages and data for educational purposes |
| Pseudo Mark | NEXT CLOUD |
| Goods and Services | Computer hardware design of servers and desktop computers with enhanced access control and security features; Design, development and implementation of computer software; hosting of websites, namely, hosting websites featuring file synchronization and sharing, online collaboration, groupware and social networking on the Internet; rental of software; Providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; Document data transfer from one computer format to another; Standard and Post-Quantum (PQ) encryption, decryption and authentication of electronic information, messages and data; Data encryption and decoding services; Data conversion of electronic information |
| 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 | Tuesday, October 25, 2016 |
| Primary Code | 038 |
| First Use Anywhere Date | Sunday, January 1, 2017 |
| First Use In Commerce Date | Sunday, January 1, 2017 |
| 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 | Tuesday, October 25, 2016 |
| Primary Code | 009 |
| First Use Anywhere Date | Sunday, January 1, 2017 |
| First Use In Commerce Date | Sunday, January 1, 2017 |
| 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 | Tuesday, October 25, 2016 |
| Primary Code | 041 |
| First Use Anywhere Date | Sunday, January 1, 2017 |
| First Use In Commerce Date | Sunday, January 1, 2017 |
| 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 | Tuesday, October 25, 2016 |
| Primary Code | 042 |
| First Use Anywhere Date | Sunday, January 1, 2017 |
| First Use In Commerce Date | Sunday, January 1, 2017 |
| Party Name | Nextcloud GmbH |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Stuttgart 70192 DE |
| Party Name | Nextcloud GmbH |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Stuttgart 70192 DE |
| Party Name | Nextcloud GmbH |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Stuttgart 70192 DE |
| Event Date | Event Description |
| Tuesday, January 31, 2017 | ASSIGNED TO EXAMINER |
| Monday, October 24, 2016 | NEW APPLICATION ENTERED |
| Tuesday, October 25, 2016 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Wednesday, October 26, 2016 | NOTICE OF PSEUDO MARK E-MAILED |
| Thursday, February 2, 2017 | NON-FINAL ACTION WRITTEN |
| Thursday, February 2, 2017 | NON-FINAL ACTION E-MAILED |
| Thursday, February 2, 2017 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, August 2, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, August 2, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, August 3, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, August 9, 2017 | SUSPENSION LETTER WRITTEN |
| Wednesday, August 9, 2017 | LETTER OF SUSPENSION E-MAILED |
| Wednesday, August 9, 2017 | NOTIFICATION OF LETTER OF SUSPENSION E-MAILED |
| Tuesday, February 13, 2018 | SUSPENSION LETTER WRITTEN |
| Tuesday, February 13, 2018 | LETTER OF SUSPENSION E-MAILED |
| Tuesday, February 13, 2018 | NOTIFICATION OF LETTER OF SUSPENSION E-MAILED |
| Friday, July 27, 2018 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Friday, July 27, 2018 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Wednesday, August 1, 2018 | FINAL REFUSAL WRITTEN |
| Wednesday, August 1, 2018 | FINAL REFUSAL E-MAILED |
| Wednesday, August 1, 2018 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Tuesday, January 29, 2019 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Saturday, February 2, 2019 | ASSIGNED TO LIE |
| Saturday, February 2, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, February 2, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, February 19, 2019 | EXAMINERS AMENDMENT -WRITTEN |
| Tuesday, February 19, 2019 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, February 19, 2019 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Tuesday, February 19, 2019 | EXAMINER'S AMENDMENT ENTERED |
| Monday, February 25, 2019 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, February 28, 2019 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, April 2, 2019 | PUBLISHED FOR OPPOSITION |
| Wednesday, March 13, 2019 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, April 2, 2019 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, May 28, 2019 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Friday, November 29, 2019 | TEAS STATEMENT OF USE RECEIVED |
| Friday, November 29, 2019 | USE AMENDMENT FILED |
| Sunday, December 29, 2019 | STATEMENT OF USE PROCESSING COMPLETE |
| Saturday, December 7, 2019 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Tuesday, December 31, 2019 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Tuesday, February 4, 2020 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, February 4, 2025 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Monday, December 30, 2019 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |