| Serial Number | 88710662 |
| Word Mark | QUADIENT BECAUSE CONNECTIONS MATTER |
| Filing Date | Friday, November 29, 2019 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, February 2, 2021 |
| Registration Number | 6259219 |
| Registration Date | Tuesday, February 2, 2021 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, November 17, 2020 |
| Goods and Services | Machines for sorting mail, in particular machines for processing mail including folders and inserters, and structural parts and spare parts of such machines; letter sorting machines; electronically and power operated splitters, namely, paper processing machines for automatically separating computer-produced documents in a continuous strip; electronically and power operated extractors, namely, machines used for opening letters and automatically extracting the contents; automatic distribution machines for loading, unloading, and conveying mail and parcels; electronically and power operated addressing and bar code equipment for mail applications, namely, addressing and encoding machines |
| Goods and Services | Letter scales, namely, postal scales; bar code readers; recorded software for managing mail dispatch of letters, messages, parcels, and newspapers, as well as franking and the processing of all related documents; downloadable computer software for adjusting electronic communication systems and digital printing systems; apparatus and instruments being computers, downloadable software, electronic calculators, computer servers, communication servers, computer database, downloadable computer application software and devices all for generating, calculating, controlling, inputting, storing, converting, processing, collecting, transmitting, switching and receiving of data, information, signals and messages; computers and computer peripheral devices, especially printers; downloadable software in the nature of recorded programs for calculating the cost to ship mail and parcels; electric apparatus for parcels and mail, namely, public addressing machines and instruments and encoding apparatus, weighing apparatus to check mail franking, bar code readers, printers; downloadable software for database management; downloadable computer software for use in database management in the field of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; downloadable computer software for synchronizing data between hand-held or portable computers and host computers in the field of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; downloadable computer operating system software; downloadable telecommunication computer software for electronically transmitting documents and facsimile; downloadable computer software for managing mail dispatch of letters, messages, parcels, and newspapers, as well as franking and processing of all related documents and telecommunication apparatus, namely, modems to enable connection to databases, computer networks, global computer networks as well as the Internet; downloadable computer software for automating and managing business processes in the field of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; downloadable computer software for sending, receiving and managing facsimile, e-mail, voice mail and Internet messaging in the field of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; downloadable computer software for tracking, monitoring and locating packages, parcels, mail and pallets during their processing, transport and delivery for commercial use in the field of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; computer hardware, namely, computers, data processing equipment being disk changers, computer peripheral devices, computer keyboards, data processing equipment being interfaces, data processing equipment being readers, data processing equipment being downloadable computer software for tracking, monitoring and locating packages, parcels, mail and pallets during their processing, transport and delivery; hand-held computers; portable computers; downloadable computer software for tracking, monitoring and locating packages, parcels, mail and pallets during their processing, transport and delivery for computer programs in the field of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; recorded computer programs for tracking, monitoring and locating packages, parcels, mail and pallets during their processing, transport and delivery; downloadable computer software for image processing used for mobile telephones in the field of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; downloadable electronic publications in the nature of books, newsletters, magazines, pamphlets, workbooks, journals, and hand-outs provided on-line from databases and the Internet in the fields of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; computer peripherals; pre-recorded computer data media in the nature of DVDs and CDs featuring physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; magnetic and optical data media in the nature of CDs and DVDs featuring physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; downloadable computer software platforms for retail and wholesale of mail processing machines and apparatus and of consumables for these machines and apparatus, for computer-assisted mail franking, for selecting and processing of private and company addresses, for optimizing parcel and mail dispatch rates and managing their spending, for tracking parcel and mail during transport and dispatch, for managing electronic transmission of facsimile, e-mail, voice mail and Internet messages |
| Goods and Services | Franking machines, namely, apparatus to check mail franking for office use; franking machines being counter equipment for franking applications, namely, apparatus to check franking specifically designed to be placed on counters for office use; franking machines, namely, electronic apparatus for controlling of the franking being the payment and recording of mail and transport costs via private dispatch services, for letters and parcels, especially by remote control and downloading, via the Internet and intranet networks; franking machines, namely, electronic coin-operated booths for franking letters and parcels that are sent by private mail services or private transporters; Equipment, apparatus and devices for processing mail, namely, franking machines; Structural parts of franking machines, namely, franking machine bases and heads, parts and spare parts of machines for franking; letter openers; postal machines for post offices, namely, distribution machines for letter collating and franking for postal applications; franking machines known as counter equipment for franking applications, namely, machines for franking specifically designed to be placed on counters for office use; printing products in the nature of printed matter, namely, printed newspapers, photographs, magazines, books, printed periodicals, newsletters, and brochures in the field of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; envelopes; mailing labels, not of textile; paper for packaging and wrapping; address snapshots being postage labels; address stamps; sealing machines for offices; printed manuals for physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, including associated tracking services booklets in the field of physical mail processing, digital communications management, as well as supply chain and e-commerce process optimization solutions from point of sale to delivery, and associated tracking services; paper and plastic bags being envelopes and pouches for packaging |
| Goods and Services | Custom office furniture especially designed for storing and displaying equipment, apparatus and devices for mail processing |
| Goods and Services | Business assistance and consulting services, namely, business assistance selecting and processing of private and company addresses by means of computer networks, business assistance and consulting services in the field of mail management, business assistance and consulting services for business management in the field of logistics, transport, and dispatch of merchandise, parcels and mail; document reproduction in the nature of photocopying services; compiling and analyzing statistics for business purposes, namely, drawing up statistics; business assistance services, namely, assistance to companies in optimizing parcel and mail dispatch rates and in the management of their spending, these services can be provided online; computerized file management; compilation of information into computer databases; business assistance services, namely, assistance to companies in managing their dispatch services for letters or parcels; transportation logistics services, namely, administrative organization of the transport, delivery, distribution, sorting, carriage and storage of goods and parcels; retail and wholesale store services featuring postal scales, apparatus to check franking, bar code readers, software, machines for processing mail being folders and inserters, machines for sorting letters, envelopes, wrapping paper, bags being envelopes and pouches of paper and plastic for packaging; temporary personnel services, namely, providing personnel for others for performing mail processing operations; corporate management assistance for managing the dispatch of letters or parcels; freight management services, namely, shipment tracking during transport by the electronic location of the destination of products and goods, particularly documents, packages, parcels |
| Goods and Services | Financial services, namely, financial management in the nature of financial account management services for remote franking of letters and parcels; Financial services, namely, postal credit recharging services; financial services for processing transfers and cost deductions of franking letters and parcels; leasing and rental with and without promise of sale of office equipment, machines, apparatus and devices in the field of processing, transporting and delivering mail; real estate leasing and rental of commercial and industrial properties with and without promise of sale of industrial plants, commercial workshops, offices and commercial premises; financial portfolio management of financial shares and financial securities and financial management operations relating thereto; real estate management services, namely, management of commercial and office buildings; financial customs brokerage services |
| Goods and Services | Installation, maintenance and repair of mail processing-related machines, devices, apparatus and equipment |
| Goods and Services | Telecommunication services, namely, providing access to telecommunication networks, providing connections to the internet and databases, providing electronic telecommunications connections; telecommunication services, namely, providing access to global computer networks; telecommunications services for providing multiple-user access to a global computer telecommunication networks; Providing electronic communication services via computers grouped on a global communication network known as the Internet; Providing electronic communication services via a private or restricted access network known as intranet; communications by computer terminals; transmission of electronic mail; electronic messaging; transmission of information by electronic means, namely, by global telecommunication networks being the Internet and private and restricted access networks being the Intranet; computer transmission of information accessed via access code to computer, data communication databases and database servers; broadcast communication services, namely, transmitting and broadcasting data, sounds, images and signals for others; communication services, namely, transmitting information via the Internet, radio, television on the transport of letters and parcels; transmission of customer communication via digital, wireless, electronic, global communication networks; Providing multiple use access to global computer information networks for the dissemination of wireless application protocols; text messaging services, web messaging; transmission of information by electronic communication networks, namely, communication of information by electronic means; communication services, namely, providing electronic transmission of information stored in a database via interactively communicating computer systems; electronic data transmission; electronic transmission of images via television and video broadcasting; Providing electronic telecommunication connections, namely, provision of access to electronic data connections; electronic transmission of information via interactively communicating computer systems and a global computer network; transmission of information stored in a database via interactively communicating computer systems |
| Goods and Services | rental of storage containers; Transport and delivery of goods, mail and parcels; packaging and storage of goods being mail and parcels; mail and parcel transport organization services; freighting services; rental of transport vehicles; sorting related to storage services and storage of goods, mail and parcels; non-electric deliveries via truck, air, barge, especially via transportation to the recipient and a point-of-sale or intermediary depot, as a result of orders, particularly through the Internet, computerized and not computerized, and on behalf of goods suppliers, through the Internet and via any computer, communication and electronic means, and their clients, individuals and institutions; transportation information; physical storage of electronically-stored data or documents; freight brokerage; transport brokerage; rental without commitment to sell of equipment, machines, apparatus and devices related to the processing, transport and delivery of mail; franking of mail, namely, computer-assisted mail franking, mail franking via the Internet |
| Goods and Services | Computer services, namely, providing virtual and non-virtual application, load balancing, call flow servers to others, particularly providing users access to a server for services in the fields of processing, logistics and transport of merchandise, parcels and mail; Design and development of computer software; computer software maintenance; Providing technological research and advice services, namely, research and expertise in the nature of technical support and advice in the field of mail and parcel processing techniques; Providing consulting and assistance services for the installation, maintenance and updating of computer software systems for the electronic processing of data for tracking, monitoring and locating parcels, mail and pallets during their processing, transport and delivery; consulting services for the installation of computer software systems for the electronic processing of data for tracking and locating packages, mail and pallets during their transport and delivery; conversion of computer programs and data other than physical conversion; conversion of data and documents from physical to electronic media; design, development and maintenance of computer software for customer-specific communication systems and digital printing systems; Consulting services provided by consultants, namely, computer software consulting for software migration, software integration and software installation |
| 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, 031, 034, 035 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, December 5, 2019 |
| 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 | Thursday, December 5, 2019 |
| 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 | Thursday, December 5, 2019 |
| 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 | Thursday, December 5, 2019 |
| 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 | Thursday, December 5, 2019 |
| 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 | Thursday, December 5, 2019 |
| Primary Code | 036 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, December 5, 2019 |
| Primary Code | 037 |
| 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 | Thursday, December 5, 2019 |
| 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 | Thursday, December 5, 2019 |
| 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 | Thursday, December 5, 2019 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | QUADIENT GROUP AG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Appenzell 9050 CH |
| Party Name | QUADIENT GROUP AG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | Appenzell 9050 CH |
| Party Name | QUADIENT GROUP AG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | Appenzell 9050 CH |
| Event Date | Event Description |
| Tuesday, February 2, 2021 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, November 17, 2020 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, November 17, 2020 | PUBLISHED FOR OPPOSITION |
| Wednesday, October 28, 2020 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, October 13, 2020 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, October 13, 2020 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, October 13, 2020 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Tuesday, October 13, 2020 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, October 13, 2020 | EXAMINERS AMENDMENT -WRITTEN |
| Friday, September 11, 2020 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, September 10, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, September 10, 2020 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, March 10, 2020 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, March 10, 2020 | NON-FINAL ACTION E-MAILED |
| Tuesday, March 10, 2020 | NON-FINAL ACTION WRITTEN |
| Monday, March 2, 2020 | ASSIGNED TO EXAMINER |
| Monday, January 27, 2020 | PRELIMINARY/VOLUNTARY AMENDMENT - ENTERED |
| Friday, January 24, 2020 | ASSIGNED TO LIE |
| Thursday, January 16, 2020 | TEAS VOLUNTARY AMENDMENT RECEIVED |
| Thursday, December 5, 2019 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
| Tuesday, December 3, 2019 | NEW APPLICATION ENTERED IN TRAM |