| Serial Number | 87690849 |
| Word Mark | PAYCOM PAY |
| Filing Date | Monday, November 20, 2017 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, July 16, 2019 |
| Registration Number | 5807635 |
| Registration Date | Tuesday, July 16, 2019 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, September 18, 2018 |
| Goods and Services | Educational services, namely, providing podcasts and non-downloadable webinars in the field of human resources management, human capital management, and technology; Educational and training services, namely, providing online classes, seminars, and workshops in the field of human resources management and human capital management;. Providing an online educational classroom environment for employers pertaining to payroll processing, tax deposit filing and reporting, employee time and attendance record keeping, pension record keeping, employee leasing, submitting and tracking vendor invoices; employee training in the field of career development; providing on line non downloadable electronic publications, namely, newsletters, white papers, case studies and magazines in the field of human resources, payroll administration, pre-employment and benefits administration, computer security and information technology, career development, disaster planning and computer system security; providing a website featuring resources, namely, a website featuring primarily non-downloadable publications in the nature of whitepapers and blog articles in the field of human resources |
| Goods and Services | Downloadable MP3 files and podcasts in the field of human resources management ; Downloadable computer software, namely, mobile applications, for use in managing data and data applications in the field of human resources management, human capital management, and payroll processing |
| Pseudo Mark | PAY COM PAY |
| Goods and Services | Payroll tax debiting services; Tax payment processing services; Financial transaction services, namely, providing secure commercial transactions and payment options; Administration of employee benefits plans concerning insurance and finance; Providing financial services to employers, namely, payroll tax debiting and, benefits administration, workers compensation claims administration, insurance agency, employee pension and retirement funds administration; Insurance claims administration; Financial affairs and monetary affairs, namely, financial information, management and analysis services; Payroll tax debiting services; Administration of employee benefit plans concerning insurance and finance; Workers compensation claims administration; Financial administration of employee pension plans and retirement plans; Providing a web site featuring information for employee benefits brokers and consultants in the field of insurance and financial benefits administration, health care benefits reform |
| Goods and Services | Human resources management and human capital management; Payroll processing and preparation services; Tax filing services; Human resources analysis and consulting services regarding human capital management tools; Consulting services in the field of human resources development tools, namely, for the promotion of employee retention, career growth, and increased productivity for employees and employers; Tracking, comparing and monitoring employee expenses for others for cost accounting purposes; Providing business services to employers, namely, payroll processing, human resources management, human capital management, and travel and expense management services; providing services in the nature of employee time and attendance record keeping for the purpose of tax filing and human resources and human capital management and analysis; tax reporting, namely, tax filing; business advisory and consulting services relating to software for aiding in compliance with statutory, industry or best practice provisions; computerized database management services; statistical information services for business purposes; providing electronic payroll tax preparation; Providing business management, employment, statistical, payroll and financial recordkeeping for human resources and human capital management and analysis; Personnel recruitment consultancy services in the nature of assistance with tools for recruitment and applicant tracking; Providing on-line employment placement services, namely, matching resumes and potential employers via a global computer network; Financial record keeping for pension accruement and payment purposes; disseminating the advertisements of others via a global computer network; business investigations; conducting business surveys; business research; business auditing; Conducting employee surveys for others for purposes of improving employee performance and morale; Business administration of employee benefit plans concerning legal services; Employment hiring, recruiting, placement, staffing and career networking services; Testing to determine employment skills for training purposes; Business services namely, timekeeping services for others; providing a web site featuring information for employee benefits brokers and consultants in the field of payroll processing, tax deposit filing and reporting, human resources management, human capital management, business management, employee time and attendance record keeping for payroll purposes, pension record keeping for administration of the funds, employee recruiting and outsourcing; data processing services |
| Goods and Services | Tracking and monitoring regulatory requirements in the field of human resources management, human capital management, and employment benefits for informational purposes; Providing an interactive web site for employment background screening; Pre-employment background screening; Regulatory compliance consulting in the field of employment eligibility verification tools |
| NOT AVAILABLE | "PAY" |
| Goods and Services | Software as a service (SAAS) services featuring software for use in managing data and data applications in the field of human resources management and human capital management, employee on-boarding, employee records, payroll preparation and processing, payroll tax debiting, benefits administration, performance management, compensation management, succession planning, talent management, and time and labor management; Providing temporary use of online non-downloadable software for providing employers with a compatible interface between payroll processing software and software for financial management and management of human resources; Providing temporary use of online non-downloadable computer software in the field of accounting for preparing and processing business employee payroll for employers, and for printing payroll documents, namely, reports, checks, and tax forms; Providing temporary use of non-downloadable computer software for performing employee and personnel related services, namely, payroll processing, preparation, and administration, payroll tax calculation and preparation, monitoring tax regulation compliance, electronically processing payroll, tax filing and reporting, printing payroll reports, checks, and tax forms, employee benefits administration, managing human resources documents, providing employee risk and safety training, providing information about employee counseling and support programs, administering employee pension and retirement funds and employee flexible spending accounts, administering workers compensation claims and payments, processing and storing employee recruiting documents, conducting pre-employment background screening, processing employee time and attendance records, scheduling appointments, providing information for new employee assimilation, employee recordkeeping management, recording and tracking employee performance management, database management of compensation, providing information about employee job training and professional development and succession planning; providing a web site featuring technology that enables employee benefits brokers and consultant users to view online videos in the field of benefits administration, payroll processing, tax deposit filing and reporting, human resources management, human capital management, business management, employee time and attendance record keeping, pension record keeping, employee recruiting, pre-employment background screening, outsourcing, health care reform and unemployment compensation management services; Providing a web based system and online portal featuring non-downloadable software for employee benefits brokers and consultants to use in employee benefits administration, pension record keeping, and unemployment compensation management; Application service provider services, namely, providing, hosting, managing, developing, and maintaining software applications of others in the field of employment to allow off-site field employees to submit time and labor data to employers via wireless communication and wireless delivery of content to handheld computers and mobile electronic devices; personnel recruitment tools and software, namely, providing online, non-downloadable personnel recruitment software and software tools for use in data and database management |
| 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 | Friday, December 1, 2017 |
| Primary Code | 009 |
| First Use Anywhere Date | Tuesday, October 31, 2017 |
| First Use In Commerce Date | Tuesday, October 31, 2017 |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, December 1, 2017 |
| Primary Code | 035 |
| First Use Anywhere Date | Tuesday, October 31, 2017 |
| First Use In Commerce Date | Tuesday, October 31, 2017 |
| 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 | Friday, December 1, 2017 |
| Primary Code | 036 |
| First Use Anywhere Date | Tuesday, October 31, 2017 |
| First Use In Commerce Date | Tuesday, October 31, 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 | Friday, December 1, 2017 |
| Primary Code | 041 |
| First Use Anywhere Date | Tuesday, October 31, 2017 |
| First Use In Commerce Date | Tuesday, October 31, 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 | Friday, December 1, 2017 |
| Primary Code | 042 |
| First Use Anywhere Date | Tuesday, October 31, 2017 |
| First Use In Commerce Date | Tuesday, October 31, 2017 |
| 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 | Friday, December 1, 2017 |
| Primary Code | 045 |
| First Use Anywhere Date | Tuesday, October 31, 2017 |
| First Use In Commerce Date | Tuesday, October 31, 2017 |
| Party Name | Paycom Payroll, LLC |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Oklahoma City, OK 73142 |
| Party Name | Paycom Payroll, LLC |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Oklahoma City, OK 73142 |
| Party Name | Paycom Payroll, LLC |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Oklahoma City, OK 73142 |
| Event Date | Event Description |
| Friday, January 26, 2018 | PRIORITY ACTION E-MAILED |
| Thursday, November 23, 2017 | NEW APPLICATION ENTERED |
| Friday, December 1, 2017 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, January 19, 2018 | ASSIGNED TO EXAMINER |
| Friday, January 26, 2018 | PRIORITY ACTION WRITTEN |
| Friday, January 26, 2018 | NOTIFICATION OF PRIORITY ACTION E-MAILED |
| Wednesday, July 25, 2018 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, July 25, 2018 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, July 26, 2018 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Saturday, May 25, 2019 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Tuesday, July 31, 2018 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, August 10, 2018 | ASSIGNED TO LIE |
| Wednesday, August 29, 2018 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, September 18, 2018 | PUBLISHED FOR OPPOSITION |
| Tuesday, September 18, 2018 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, November 13, 2018 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Monday, May 13, 2019 | TEAS STATEMENT OF USE RECEIVED |
| Monday, May 13, 2019 | USE AMENDMENT FILED |
| Saturday, May 25, 2019 | STATEMENT OF USE PROCESSING COMPLETE |
| Tuesday, July 16, 2019 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, July 16, 2024 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Monday, June 10, 2019 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Tuesday, June 11, 2019 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Wednesday, May 18, 2022 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Monday, October 16, 2023 | NOTICE OF SUIT |