| Serial Number | 79319316 |
| Word Mark | OCTO TELEMATICS |
| Filing Date | Thursday, May 6, 2021 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, February 14, 2023 |
| Registration Number | 6976239 |
| Registration Date | Tuesday, February 14, 2023 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, November 29, 2022 |
| Goods and Services | Electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; downloadable computer application software for mobile phones, handheld computers and web portals, namely, for data collection, analytics and display, risk profiling, crash detection, safety and security alert and notification, vehicle tracking, asset management, and people tracking and profiling; downloadable computer software platforms for data collection, analytics and display, risk profiling, crash detection, safety and security alert and notification, vehicle tracking, asset management, and people tracking and profiling; electronic database in the field of insurance, fleet management, sharing and rental, road tolling, home automation, asset management, and car makers recorded on computer media; data collection computer; telematics apparatus, namely, wireless internet devices which provide telematic services and have a cellular phone function; recorded software for telematics operation; downloadable software in the nature of a mobile application for internet of things (IOT) data collection, enrichment and processing, risk profiling, driving profiling and coaching, distracted driving, vehicle diagnostics and management, remote door opening, car maintenance, alarm notification, crash detection, e-call, b-call, home automation, home renting, loyalty, gamification and reward, and vehicle sharing and renting; data processing equipment; computer apparatus for data analysis; telecommunications equipment, namely, telematics communicating units, internet of things (IOT) home automation communicating units, and wireless beacons; electric control apparatus, namely, engine lock, door lock, and remote home automation actuator for roller-shutters, thermostats, gas and water valves; remote monitoring apparatus, namely, diagnostic on-board diagnostics (OBD) dongle, home monitoring based on sensors for safety and security and energy optimization, road safety sensors, and advanced driver assistance systems (ADAS) sensors; identity verification systems, namely, automated driver identification verifiers for property access management; home and business alarm systems; electronic payment terminal; downloadable electronic publications in the nature of catalogues, user manuals, installation manuals, and operation manual white papers publication in the field of insurance, fleet management, vehicle sharing and rental, road tolling, home automation, asset management, and car manufacturers; downloadable and recorded operational software for satellite navigation systems; downloadable computer software for global positioning systems; encryption apparatus units; digital signal processors; receiving terminals for satellite signals; signaling warning apparatuses including smart card readers, that issue line departure warnings, collision warnings, and fatigue warnings; speed limiters for limiting vehicle engine speed, namely, aftermarket, add-on devices for vehicles in order to limit the maximum speed output of an automobile |
| Goods and Services | Vehicle rental; travel and transport passenger car, van, truck, and heavy duty vehicle reservation services; route planning services; navigation services, namely, navigation for path optimization, risk exposure reduction, and CO2 emission and pollution reduction; provision of traffic data and traffic information services; operation of road toll and road charging systems; vehicle breakdown towing services; reservation services for vehicle rental; booking agency services for car hire; global positioning system navigation services; provision of information relating to road traffic conditions; information services relating to traffic; provision of car parking facilities; car parking; automobile salvage services; travel route planning; tracking of passenger or freight vehicles by computer or via GPS |
| Goods and Services | Telecommunication services, telematics services and telematic communication services, namely, transmission of information via computers connected to the same telematic network; telematic data transmission and file transfer; communication services by computers for the delivery of emergency messages; communications by computer terminals; communications by fiber optic networks; computer aided transmission of messages and images; providing information about telecommunication services; satellite broadcasting; electronic data transmission; providing telecommunications connections to databases; wireless transfer of data via digital mobile telephony; provision of telecommunications access to databases and the internet; electronic exchange of data stored in databases accessible via telecommunication networks; providing access to a global computer network for the transfer and dissemination of information; data communication by electronic means |
| Goods and Services | Financial services, namely, financial advisory and consultancy services; insurance services, namely, insurance underwriting consultation services; advisory services relating to insurance; electronic toll collection services; remote payment services; insurance consultancy; accident insurance underwriting; insurance brokerage; insurance underwriting services for all types of insurance; insurance claim assessments; hire-purchase financing; financial analysis; financial analysis and consultancy; financial sponsorship of insurance-related tradeshows, conferences, and association meetings |
| Goods and Services | Licensing of computer software as part of legal services; consultancy relating to computer software licensing; home and business alarm monitoring services; security guard services; physical security consultancy; locating and tracking of lost people |
| Disclaimer with Predetermined Text | "TELEMATICS" |
| Goods and Services | Design services relating to computer hardware and to computer programs; design and development of telematics systems; technical fault diagnosis; advisory services relating to environmental pollution; technical services in the field of pollution control; environmental testing of exhaust emissions; design and development of navigation systems; land and road surveying; development of computer software application solutions; computer programming in relation to interactive and multimedia applications, namely, telematics solutions based on augmented reality visualization; installation, maintenance and repair of software for computer systems; creation, maintenance and adaptation of software; electronic data storage and data back-up services; hosting of platforms, portals and databases on the internet for others; technical fault diagnosis services; computer software technical support services; programming of multimedia applications; programming of software for internet platforms; installation and maintenance of database software; design of computer databases; electronic storage services for archiving databases; rental of computer software; leasing of single sign-on application software; computer system analysis; computer services for the analysis of data; development of computer programs for analysis of exhaust gas emissions |
| 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 | Wednesday, September 8, 2021 |
| Primary Code | 009 |
| 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 | Wednesday, September 8, 2021 |
| Primary Code | 036 |
| 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 | 6 - Active |
| Class Status Date | Wednesday, September 8, 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 | 6 - Active |
| Class Status Date | Wednesday, September 8, 2021 |
| 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 | 6 - Active |
| Class Status Date | Wednesday, September 8, 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 | 6 - Active |
| Class Status Date | Wednesday, September 8, 2021 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | OCTO TELEMATICS S.p.A. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 35 - NOT AVAILABLE |
| Address | IT |
| Party Name | OCTO TELEMATICS S.p.A. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 35 - NOT AVAILABLE |
| Address | IT |
| Party Name | OCTO TELEMATICS S.p.A. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 35 - NOT AVAILABLE |
| Address | IT |
| Event Date | Event Description |
| Sunday, June 18, 2023 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Friday, June 9, 2023 | NEW REPRESENTATIVE AT IB RECEIVED |
| Wednesday, May 17, 2023 | FINAL DISPOSITION NOTICE SENT TO IB |
| Wednesday, May 17, 2023 | FINAL DISPOSITION PROCESSED |
| Sunday, May 14, 2023 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Monday, February 27, 2023 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, February 14, 2023 | NOTICE OF REGISTRATION CONFIRMATION EMAILED |
| Tuesday, February 14, 2023 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, February 8, 2023 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, February 8, 2023 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Tuesday, November 29, 2022 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, November 29, 2022 | PUBLISHED FOR OPPOSITION |
| Sunday, November 27, 2022 | NOTIFICATION PROCESSED BY IB |
| Wednesday, November 9, 2022 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, November 9, 2022 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, November 9, 2022 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Sunday, October 23, 2022 | NEW REPRESENTATIVE AT IB RECEIVED |
| Friday, October 21, 2022 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, October 19, 2022 | EXAMINER'S AMENDMENT ENTERED |
| Wednesday, October 19, 2022 | ASSIGNED TO LIE |
| Wednesday, October 19, 2022 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Wednesday, October 19, 2022 | EXAMINERS AMENDMENT E-MAILED |
| Wednesday, October 19, 2022 | EXAMINERS AMENDMENT -WRITTEN |
| Tuesday, October 4, 2022 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Tuesday, September 20, 2022 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Friday, September 2, 2022 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, August 4, 2022 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, August 3, 2022 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, August 3, 2022 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Monday, February 28, 2022 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Monday, February 28, 2022 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Monday, February 28, 2022 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Monday, February 28, 2022 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Monday, February 28, 2022 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Monday, February 28, 2022 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Sunday, February 20, 2022 | REFUSAL PROCESSED BY IB |
| Thursday, February 3, 2022 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Thursday, February 3, 2022 | REFUSAL PROCESSED BY MPU |
| Sunday, January 16, 2022 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Saturday, January 15, 2022 | NON-FINAL ACTION WRITTEN |
| Tuesday, January 11, 2022 | ASSIGNED TO EXAMINER |
| Tuesday, September 14, 2021 | APPLICATION FILING RECEIPT MAILED |
| Wednesday, September 8, 2021 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, September 2, 2021 | SN ASSIGNED FOR SECT 66A APPL FROM IB |