| Serial Number | 79284745 |
| Word Mark | QUADIENT |
| Filing Date | Thursday, January 23, 2020 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, November 2, 2021 |
| Registration Number | 6541554 |
| Registration Date | Tuesday, November 2, 2021 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, August 17, 2021 |
| Goods and Services | Downloadable software for the adjustment of electronic communication systems and digital printing systems for shipping and mailing parcels and letters; postal scales, apparatus to check the stamping of mail in the nature of time and date stamping machines for use in the field of shipping and mailing, bar code readers for use in shipping and mailing parcels and letters; downloadable recorded software for managing the sending of mail in the nature of letters, messages, parcels, newspapers, franking and processing all related documents, all in the field of shipping and mailing; apparatus, instruments and devices for the generation, calculation, checking, input, storage, conversion, processing, collection, transmission, switching and reception of data, information, signals and messages from computers and peripheral devices, namely, document printers, all in the field of shipping and mailing; counter equipment for franking applications, namely, apparatus to check franking specifically designed to be placed on meters, namely, optical readers for use in shipping and mailing parcels and letters; electronic apparatus for franking being payment and recording of mail and transport costs being private transmission services, for shipping and mailing letters and parcels, including by remote control, and downloading via Internet and intranet networks, namely, electronic payment terminal for payment and recording of mail and transport costs; electronic pay cubicles, namely, electronic machines to check stamping of letters and packages sent by private mail services or carriers for use in the field of shipping and mailing being time and date stamping machines for letters and packages; software being recorded programs for shipping and mailing parcels and letters; electric apparatus for parcels and letters, namely, letter scales for use in the field of shipping and mailing; downloadable management software for databases for use in the field of shipping and mailing; downloadable computer software for synchronizing data between hand-held or portable computers and host computers for use in the field of shipping and mailing; downloadable software for computer operating systems for use in the field of shipping and mailing; downloadable telecommunication software for electronic transmission of documents and facsimile transmission for use in the field of shipping and mailing; downloadable software and telecommunication apparatus, namely, modems to enable connection to databases, computer networks, global computer networks as well as the Internet for use in the field of shipping and mailing; downloadable software for use in automating and managing business processes in the field of shipping and mailing; downloadable computer software for facsimile, email, voice mail and Internet messaging for use in the field of shipping and mailing; downloadable software for shipping and mailing parcels and letters for commercial use in the field of shipping and mailing; computer hardware, namely, computers, disk changers being data processing equipment, computer peripheral devices, computer keyboards, interfaces being data processing equipment, readers being data processing equipment, mouse being data processing equipment, all for use in the field of shipping and mailing; hand-held computers for use in the field of shipping and mailing; portable computers for use in the field of shipping and mailing; computer programs being downloadable software for shipping and mailing parcels and letters; recorded computer programs for shipping and mailing parcels and letters; computer programs and image processing software used for performing mailing, shipping and parcel locker related functions using mobile telephones; electronic publications being downloadable in the nature of brochures, guides and manuals in the field of shipping and mailing provided on-line from databases or the Internet; computer peripherals for use in the field of shipping and mailing; prerecorded computer data carriers featuring information in the field of shipping and mailing; magnetic and optical data media, namely, magnetic and optical data carriers featuring information in the field of shipping and mailing; downloadable software platforms for shipping and mailing parcels and letters; downloadable software for monitoring and providing information with respect to the distribution and delivery of coin-operated apparatus, all in the field of shipping and mailing |
| Goods and Services | Machines for processing mail, namely, industrial paper folding machines and envelope inserting machines; letter sorting machines; separators, namely, paper processing machines for automatically sorting computer documents in a continuous band; extractors, namely, machines for the opening of letters and automatic retrieval of their content; automatic vending machines, machines for the delivery of letters, mail and parcels |
| Goods and Services | Shipping and delivery services, namely, removal, transport and delivery of parcels and letters via various modes of transport; storage services, namely, storage, distribution, pick-up and packaging for shipment of documents, packages and other freight for others; packaging for the transport and storage of letters, mail and parcels; freight forwarding; storage of letters, mail and parcels; rental without commitment for the sale of all equipment, machines, apparatus and devices in connection with the transport and distribution of mail, namely, rental of mail boxes; provision of transport information in the form of the electronic tracking information for goods, namely, for documents, packages and parcels; rental of storage containers |
| Goods and Services | Electronic franking machines; adhesive bands for stationery or household purposes; address plates for addressing machines; envelope sealing machines for offices; printed forms; address label printing machines; inking ribbons for computer printers; printed materials, namely, paper signs, books, manuals, curricula, newsletters, informational cards, brochures, catalogs and leaflets in the field of shipping and mailing documents, parcels, letters, mail and packages; stamp pads; wrapping paper |
| Goods and Services | Telecommunication services, namely, providing access to telecommunication networks, providing connections to the Internet or databases, providing electronic telecommunication connections; transmission of customer communication information via electronic communication networks; providing all-purpose user access to global computer networks for the transfer and dissemination of wireless application protocol data; text messaging services, text transmission services; transmission of news of all kinds to Internet addresses via Web messaging; electronic transmission of mail and messages by means of electronic mail; communication via analogue computer terminals; communication via digital computer terminals; transmission of information via electronic communication networks; global services for the provision of data by electronic mail, namely, transmission of data by electronic mail; communication services, namely, electronic transmission of data; communication services, namely, electronic transmission of images; providing access to databases via electronic data connections; electronic transmission of information via electronic communication networks; electronic transmission of data via computer |
| Goods and Services | Financial services, namely, financial account management services for electronic remote franking of letters and packages in the form of electronic payment services involving electronic processing and subsequent transmission of bill payment data; financial services for recharging postal credit in the form of preparing funded accounts used to buy postage stamp mail; electronic processing of electronic funds transfers and deductions of franking costs for letters and parcels |
| Goods and Services | Filled inkjet toner cartridges |
| Goods and Services | On-line data processing services, namely, selection and processing of private and company addresses via a global communications network, advisory services for business management in the field of mail management, advisory and consultancy services relating to business management in the fields of logistics, transport and transport of goods, parcels and letters; document reproduction services in the nature of photocopying services; compilation of statistics; business assistance to companies for the optimization of shipping rates for parcels and letters and the business management of the expenditure thereof, such services may be provided online; computerized file management; compilation of information into computer databases, these services may be provided online; business assistance to companies to manage their mailing services for the delivery of letters and packages, such services may be provided online; business administrative organization of transport, delivery, distribution, sorting, forwarding and storage of merchandise and parcels; retail store and wholesale store services featuring postal scales, apparatus to check franking, bar code readers, software, machines for processing mail, document files, carton packers, machines for sorting letters, envelopes, wrapping paper, paper or plastic bags, envelopes, and pouches for packaging; sorting of letters, mail and packages; business management assistance for the transmission of letters and parcels, mail services in the form of presorting, packing, sealing, postal counting, consolidation and delivery of mail to the post office; rental without commitment for the sale of all equipment, machines, apparatus and devices in connection with mail processing, namely, distribution of advertising, marketing and promotional material by mail and business assistance, management and administrative services for customer communications management and parcel locker management and operations |
| Goods and Services | Office furniture especially made for mail processing equipment, apparatus and devices; parcel racks for sending and receiving packages and packaged goods, namely, electronic lockers for parcels |
| Goods and Services | Design, development and maintenance of software for customer-specific communication systems and digital printing systems; consultancy services in the field of software migration, software integration and software installation; research and expertise in the nature of development services with respect to computer software used in the field of processing techniques for mail and parcels; consulting and assistance services in the nature of advisory services for installation, maintenance and updating of software for systems for electronic data processing for tracking, monitoring and locating packages, letters and pallets during processing, transport and delivery; consulting services for installation, maintenance and updating of software for systems for electronic data processing for tracking, monitoring and locating packages, letters and pallets during processing, transport and delivery; conversion of computer programs and data other than physical conversion; conversion of data or documents from physical to electronic media |
| International Class | 002 - Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. |
| US Class Codes | 006, 011, 016 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, May 8, 2020 |
| Primary Code | 002 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 007 - Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs. |
| US Class Codes | 013, 019, 021, 023, 024, 031, 034, 035 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, May 8, 2020 |
| Primary Code | 007 |
| 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 | 6 - Active |
| Class Status Date | Friday, May 8, 2020 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 016 - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks. |
| US Class Codes | 002, 005, 022, 023, 029, 037, 038, 050 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, May 8, 2020 |
| Primary Code | 016 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 020 - Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. |
| US Class Codes | 002, 013, 022, 025, 032, 050 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, May 8, 2020 |
| Primary Code | 020 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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, May 8, 2020 |
| 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 | 6 - Active |
| Class Status Date | Friday, May 8, 2020 |
| 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 | Friday, May 8, 2020 |
| 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 | Friday, May 8, 2020 |
| 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 | Friday, May 8, 2020 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | QUADIENT S.A. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | FR |
| Party Name | QUADIENT S.A. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | FR |
| Party Name | QUADIENT S.A. |
| Party Type | 11 - New Owner Before Publication |
| Legal Entity Type | 99 - Other |
| Address | FR |
| Party Name | Quadient Group AG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 25 - NOT AVAILABLE |
| Address | CH |
| Event Date | Event Description |
| Friday, November 24, 2023 | NEW REPRESENTATIVE AT IB RECEIVED |
| Sunday, May 15, 2022 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Thursday, April 21, 2022 | FINAL DISPOSITION NOTICE SENT TO IB |
| Thursday, April 21, 2022 | FINAL DISPOSITION PROCESSED |
| Wednesday, February 2, 2022 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Wednesday, November 3, 2021 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, November 2, 2021 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, October 13, 2021 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, October 13, 2021 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Sunday, August 22, 2021 | NOTIFICATION PROCESSED BY IB |
| Tuesday, August 17, 2021 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, August 17, 2021 | PUBLISHED FOR OPPOSITION |
| Friday, August 13, 2021 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Wednesday, July 28, 2021 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, July 28, 2021 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, July 28, 2021 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, July 13, 2021 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, July 13, 2021 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, July 13, 2021 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Tuesday, July 13, 2021 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, July 13, 2021 | EXAMINERS AMENDMENT -WRITTEN |
| Monday, July 12, 2021 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, July 12, 2021 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, July 12, 2021 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, April 21, 2021 | ASSIGNED TO EXAMINER |
| Tuesday, January 12, 2021 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, January 12, 2021 | NON-FINAL ACTION E-MAILED |
| Tuesday, January 12, 2021 | NON-FINAL ACTION WRITTEN |
| Monday, December 14, 2020 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, December 14, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, December 14, 2020 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, July 23, 2020 | CHANGE OF OWNER RECEIVED FROM IB |
| Friday, July 3, 2020 | REFUSAL PROCESSED BY IB |
| Thursday, June 18, 2020 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Thursday, June 18, 2020 | REFUSAL PROCESSED BY MPU |
| Sunday, May 17, 2020 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Saturday, May 16, 2020 | NON-FINAL ACTION WRITTEN |
| Tuesday, May 12, 2020 | APPLICATION FILING RECEIPT MAILED |
| Friday, May 8, 2020 | ASSIGNED TO EXAMINER |
| Friday, May 8, 2020 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, May 7, 2020 | SN ASSIGNED FOR SECT 66A APPL FROM IB |