| Serial Number | 79205358 |
| Word Mark | PAYONE |
| Filing Date | Friday, November 18, 2016 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, August 30, 2024 |
| Registration Number | 5398620 |
| Registration Date | Tuesday, February 13, 2018 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, November 28, 2017 |
| Description of Mark | The mark consists of the wording "PAYONE" to the right of four squares, with two squares in each row. The color dark blue appears in the text of the word "PAY", and in the left box in the top row, and in both boxes in the bottom row. The color light blue appears in the text of the word "ONE", and in the top right box. |
| Goods and Services | Pre-recorded data carriers featuring computer programs and software for electronic payment transactions, for creating spreadsheets, for managing bank accounts, and for tax preparation, all in the field of finance; downloadable computer programs and software for electronic payment transactions, for creating spreadsheets, for managing bank accounts, and for tax preparation, all in the field of finance; risk management software |
| Goods and Services | Telecommunications, namely telecommunications consultation and electronic data transmission; providing access to billing platforms on the Internet; providing telecommunication connections to a global computer network; providing access to e-commerce platforms on the Internet for the purpose of exchange of data; value-added telecommunication services, namely, electronic data transmission; electronic transmission of e-mail; rental of telecommunication apparatus; rental of access time to global computer networks |
| Pseudo Mark | PAY ONE |
| Goods and Services | Financial and monetary affairs, namely providing financial information, management and analysis services; financial clearing houses; issue of bank cards, credit cards, debit cards and electronic payment cards; factoring agencies; payment processing, namely credit card and debit card transaction processing services; negotiation of contracts with regard to the acceptance of debit and credit cards for third parties, particularly for traders and credit and debit card companies; financial risk management, namely confirmation of financial information in the context of execution and processing of electronic payment transactions as well as in the framework of payment verification; debtor management for others, namely, management and administration of client accounts and electronic payment processing |
| Indication of Colors claimed | The colors dark blue and light blue are claimed as a feature of the mark. |
| Goods and Services | Management of computerized files for others; updating and management of data in computer databases; statistical evaluations of business information for businesses and end consumers for billing purposes; billing services in the field of distance selling and stationary trading; business consultancy; accounting, debtor accounting for others; the aforesaid services not in the fields of pharmacy and biotechnology |
| Goods and Services | Licensing of billing software |
| Goods and Services | Design and development of computer hardware and software; updating, design, implementation, rental and maintenance of computer software; programming of telecommunication solutions, namely, telecommunications software; computer software consulting; information technology consulting |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, August 30, 2024 |
| Primary Code | 035 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, August 30, 2024 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, August 30, 2024 |
| Primary Code | 038 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, August 30, 2024 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, August 30, 2024 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, August 30, 2024 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | PAYONE GmbH |
| Party Type | 32 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | BS PAYONE GmbH |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | PAYONE GmbH |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | DE |
| Party Name | PAYONE GmbH |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | DE |
| Party Name | PAYONE GmbH |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | DE |
| Event Date | Event Description |
| Thursday, April 13, 2017 | SN ASSIGNED FOR SECT 66A SUBSEQ DESIG FROM IB |
| Monday, April 17, 2017 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, April 17, 2017 | ASSIGNED TO EXAMINER |
| Friday, April 21, 2017 | APPLICATION FILING RECEIPT MAILED |
| Tuesday, April 25, 2017 | NON-FINAL ACTION WRITTEN |
| Wednesday, April 26, 2017 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Thursday, April 27, 2017 | REFUSAL PROCESSED BY MPU |
| Thursday, April 27, 2017 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Friday, May 12, 2017 | REFUSAL PROCESSED BY IB |
| Thursday, October 12, 2017 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Thursday, October 12, 2017 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, October 17, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, October 17, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, October 18, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, October 18, 2017 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, November 8, 2017 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, November 22, 2017 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, November 22, 2017 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Tuesday, November 28, 2017 | PUBLISHED FOR OPPOSITION |
| Tuesday, November 28, 2017 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, February 13, 2018 | REGISTERED-PRINCIPAL REGISTER |
| Thursday, February 15, 2018 | CHANGE OF OWNER RECEIVED FROM IB |
| Sunday, May 13, 2018 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Wednesday, May 23, 2018 | FINAL DISPOSITION PROCESSED |
| Friday, July 13, 2018 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Thursday, May 7, 2020 | CHANGE OF OWNER RECEIVED FROM IB |
| Saturday, December 17, 2022 | INTERNATIONAL REGISTRATION RENEWED |
| Friday, December 8, 2017 | NOTIFICATION PROCESSED BY IB |
| Wednesday, May 23, 2018 | FINAL DISPOSITION NOTICE SENT TO IB |
| Monday, February 13, 2023 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Friday, August 30, 2024 | CANCELLED SECTION 71 |