| Serial Number | 88979827 |
| Word Mark | PUSHPAY |
| Filing Date | Tuesday, July 24, 2018 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, October 5, 2021 |
| Registration Number | 6512463 |
| Registration Date | Tuesday, October 5, 2021 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, July 23, 2019 |
| Goods and Services | Providing information on education provided on-line from a computer database or the internet; Production and distribution of videos in the field of finance and financial translations; Providing continuing business education courses; Education services, namely, providing tutorial sessions in the field of finance and financial translations; Education services, namely, providing live and on-line classes, seminars, workshops in the fields of finance and financial transactions, charitable giving, customer relationship management, business administration, business management, marketing, event planning and event registration; Providing religious instruction |
| Goods and Services | Computer software for facilitating business transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Computer software for use in business administration and management; Computer software for facilitating financial transactions; Computer software for use in facilitating the payment or receipt of monetary and non-monetary contributions; Computer software for use in merchant processing services; Computer software for facilitating others to make monetary contributions to others for charity; Computer software for facilitating others to contribute to religious institutions; Computer software for facilitating others to contribute to educational institutions; Computer software for facilitating others to make charitable contributions; Computer software for facilitating financial transactions with government entities and government-regulated entities; Computer software for use in processing electronic payments; Computer software for use in database management, use as a spreadsheet, and word processing; Computer software for computer system and application development, deployment and management; Computer software for computer system and mobile application development, deployment and management; Computer software for facilitating financial transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Apparatus for recording, transmission or reproduction of sound or images; Computer application software for mobile phones and handheld computing devices, namely, electronic financial platform software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment for use in payment processing and transactions, and software for use in payment transaction processing; Computer software for use in processing the exchange of monetary and non-monetary payments, and for compiling information and generating reports for business and tax purposes; Computer software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Computer application software for mobile phones, portable media players, handheld computers, tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Computer application software for mobile devices, namely, mobile phones and tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Computer software for event registration; Financial reconciliation software; Computer software for customer relationship management; Computer software for facilitating video and audio broadcasts; Computer software for use in accessing downloadable MP3 files and MP3 recordings of podcasts in the field of financial information; Computer software for use in promoting the activities and events of others; Computer software for providing information to others, namely, software for managing marketing campaigns; Computer software for facilitating electronic communication between others; Computer software for providing online education in the field of donor management and community engagement; Computer software for use in event registration and event management; Downloadable computer software for facilitating electronic communication between others |
| Goods and Services | Communication services in the nature of short message services (SMS), electronic transmission of push notifications and electronic transmission of emails; Video broadcasting services over the Internet or other communication network |
| Pseudo Mark | PUSH PAY |
| Goods and Services | Financial services, namely, merchant payment transaction processing services; Financial consulting services in the field of planned giving for non-profit and charitable organizations; Financial planning services, namely, developing and managing charitable giving programs; Providing online information in the field of charitable monetary giving; Financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services; Financial services, namely, business fundraising provided over a computer network such as the Internet and providing on-line stored value accounts in an electronic commerce environment; Financial and monetary affairs transaction management services, namely, providing secure commercial transaction services and payment options and providing an internet website portal in the field of financial transaction and payment processing services; Payment processing, namely, credit card and debit card transaction processing services; Online payment and transaction processing services; Financial payment and financial transaction services in the form of credit card, debit card loyalty program and payment transaction processing services; Financial transaction services, namely, providing secure commercial transactions and payment options; Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; Merchant services, namely, payment transaction processing services; Providing financial data analysis for others, namely, compiling and analyzing church tithing collection statistics for financial purposes |
| Goods and Services | Customer relationship management; Developing and managing the charitable giving programs of others; Financial services, namely, providing an online computer website that provides commercial financial transaction data, account management, financial reporting, accounting features and related reference information; Facilitating the exchange of needed information for financial compensation via the Internet; Providing a website for managing, conducting and organizing online auctions that are designed to raise money for charities; Promoting charitable giving that that reflects the core values of the donor by providing a method to identify the donor's core values and to select charities that foster those values; Event registration for charitable fundraising purposes and events; Event registration for educational institutions; business data analytic services in the nature of providing analysis of charitable giving data; Providing an online portal for event registration for fundraising events; Online portal for event registration for religious events in the nature of meetings; Online portal for event registration for educational events, cultural events, and social entertainment events |
| Goods and Services | Design and development of computer hardware and software; Providing a social networking website which features technology that enables users to give charitable financial gifts to others; Web site design and development for others; Computer software development for others; Computer software development for others, namely, custom development, deployment, and management of mobile application software for others; Computer services, namely, remote management of databases for others; Software as a service (SAAS) services featuring data dashboards for use in monitoring and managing of church tithing collection operations; Software as a service (SAAS) services featuring data dashboards for use in customer relationship management, monitoring and managing of financial transactions, business administration, business management, marketing, event planning and event registration; Software as a service (SAAS) services featuring software for e-mail campaign management, and development and management of charitable donations and pledges; Software as a service (SAAS) services featuring software containing information in the field of customer services relationship management; Providing online non-downloadable computer software to facilitate electronic communication between others; Design, creation, hosting, maintenance of websites for others; Hosting the software, websites and other computer applications of others on a managed hosted environment in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Hosting, managing, developing maintaining applications, software and websites of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Designing, creating, maintaining and hosting online electronic commerce websites for others; Design, creation, hosting and maintenance of internet sites for third parties; Application service provider (ASP), namely, hosting computer software applications of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management |
| 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 | Saturday, July 28, 2018 |
| Primary Code | 038 |
| First Use Anywhere Date | Wednesday, November 9, 2016 |
| First Use In Commerce Date | Wednesday, November 9, 2016 |
| 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 | Saturday, July 28, 2018 |
| Primary Code | 009 |
| First Use Anywhere Date | Thursday, January 31, 2013 |
| First Use In Commerce Date | Thursday, January 31, 2013 |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Saturday, July 28, 2018 |
| Primary Code | 035 |
| First Use Anywhere Date | Thursday, January 31, 2013 |
| First Use In Commerce Date | Thursday, January 31, 2013 |
| 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 | Saturday, July 28, 2018 |
| Primary Code | 036 |
| First Use Anywhere Date | Thursday, January 31, 2013 |
| First Use In Commerce Date | Thursday, January 31, 2013 |
| 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 | Saturday, July 28, 2018 |
| Primary Code | 041 |
| First Use Anywhere Date | Thursday, May 23, 2019 |
| First Use In Commerce Date | Thursday, May 23, 2019 |
| 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 | Saturday, July 28, 2018 |
| Primary Code | 042 |
| First Use Anywhere Date | Tuesday, April 5, 2016 |
| First Use In Commerce Date | Tuesday, April 5, 2016 |
| Party Name | PUSHPAY USA INC. |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 03 - Corporation |
| Address | REDMOND, WA 98052 |
| Party Name | Pushpay IP Limited |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Auckland 1010 NZ |
| Party Name | Pushpay IP Limited |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | Auckland 1010 NZ |
| Party Name | Pushpay IP Limited |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | Auckland 1010 NZ |
| Event Date | Event Description |
| Tuesday, November 20, 2018 | NON-FINAL ACTION WRITTEN |
| Friday, July 27, 2018 | NEW APPLICATION ENTERED |
| Saturday, July 28, 2018 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, November 9, 2018 | ASSIGNED TO EXAMINER |
| Tuesday, November 20, 2018 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, November 20, 2018 | NON-FINAL ACTION E-MAILED |
| Wednesday, May 8, 2019 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, May 8, 2019 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Wednesday, May 15, 2019 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, May 15, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, May 16, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, June 11, 2019 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, July 3, 2019 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, July 23, 2019 | PUBLISHED FOR OPPOSITION |
| Tuesday, July 23, 2019 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, September 17, 2019 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Monday, March 16, 2020 | SOU TEAS EXTENSION RECEIVED |
| Monday, March 16, 2020 | SOU EXTENSION 1 FILED |
| Monday, March 16, 2020 | SOU EXTENSION 1 GRANTED |
| Wednesday, March 18, 2020 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Thursday, September 17, 2020 | TEAS STATEMENT OF USE RECEIVED |
| Thursday, September 17, 2020 | TEAS REQUEST TO DIVIDE RECEIVED |
| Thursday, September 17, 2020 | DIVISIONAL REQUEST RECEIVED |
| Thursday, October 1, 2020 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Tuesday, November 24, 2020 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Wednesday, December 9, 2020 | DIVISIONAL PROCESSING COMPLETE |
| Thursday, September 17, 2020 | USE AMENDMENT FILED |
| Wednesday, December 9, 2020 | STATEMENT OF USE PROCESSING COMPLETE |
| Tuesday, January 5, 2021 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, January 5, 2021 | SU - NON-FINAL ACTION - WRITTEN |
| Tuesday, January 5, 2021 | NON-FINAL ACTION E-MAILED |
| Tuesday, July 6, 2021 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, July 21, 2021 | ASSIGNED TO LIE |
| Wednesday, July 21, 2021 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, July 21, 2021 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, August 31, 2021 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Wednesday, September 1, 2021 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Tuesday, October 5, 2021 | REGISTERED-PRINCIPAL REGISTER |
| Saturday, August 13, 2022 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Saturday, August 13, 2022 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Saturday, August 13, 2022 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Saturday, August 13, 2022 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Saturday, August 13, 2022 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Saturday, August 13, 2022 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Wednesday, November 8, 2023 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Friday, June 28, 2024 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Thursday, September 5, 2024 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |