| Serial Number | 77981938 |
| Word Mark | R RAKUTEN |
| Filing Date | Monday, January 5, 2009 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Wednesday, April 3, 2019 |
| Registration Number | 4088492 |
| Registration Date | Tuesday, January 17, 2012 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, September 7, 2010 |
| Indication of Colors claimed | The color(s) red, white and black is/are claimed as a feature of the mark. |
| Description of Mark | The mark consists of a white letter "R" centered within a red circle which is situated to the left of the black wording "Rakuten". |
| Goods and Services | Retail department store services; Retail convenience store services; Retail on-line department store services; Retail on-line convenience store services; Computerized on-line ordering featuring general merchandise and general consumer goods; Providing an on-line commercial information directory; Providing a searchable database in the field of business information available via a global computer network; [ Database management services; ] Dissemination of advertising for others via an on-line electronic communications network; Providing advertising space on the Internet, and providing information and consultancy thereon; Provision of advertising space by electronic means and global information networks; Providing a searchable on-line advertising guide featuring the goods and services of other on-line vendors; Auctioneering services, and providing information thereon; Market research services; Advertising services; Advertising agencies; Business advisory services, consultancy and information; Employment agencies; Goods import-export agencies; Mail order services featuring books, gifts, clothing, drinks and food, and providing information thereon; Sales promotion services through the provision of prizes, quizzes, questionnaires and games, and providing information thereon; Referrals for remodeling contractors; Telephone directory assistance services via the Internet; Compilation and systemization of information into computer databases; Providing information on advertising and consultancy thereon; Advertising services in the nature of e-mail blast campaigns for others; Consultancy concerning advertising by e-mail; Preparation and dissemination of advertising matter by e-mail; Commercial consultancy; Organization, management and arrangement of Internet auctions, and providing information thereon; Providing information on items being auctioned over the Internet; Consultancy concerning employment recruiting activities; Promoting the goods and services of others by means of the issuance of loyalty reward cards, and providing information thereon; and Providing consumer product information via the Internet, terminals, web sites, mobile phones and electronic bulletin boards; Providing travelers with information on customs clearance with regard to duty-free shops; [ Organizing and conducting job fairs; ] Providing information on recruitment techniques; Providing information about Internet auctions; Organizing and conducting presentations for products, namely, computer graphics and video game programs; Providing information on politics and economics and policies pertaining thereto; and Moving and relocation services, namely, planning and implementing moves of homes for others; Agencies providing on-track betting tickets via the Internet |
| Goods and Services | Delivery of goods, and providing information thereon; Storage of goods; Transport brokerage; Transportation information regarding railway, car, vessel, flight and bus; Providing a web site and web site links to geographic information, map images, and trip routing; Traffic information; Transport reservation services, and providing information thereon; Travel agency services, namely, making reservations and bookings for transportation, and providing information thereon; Providing information on vehicle rental; Travel and tour reservation ticket service; Providing information on schedules of railway, car, ship, flight via the Internet; Providing information on the status of booking of railway, car, ship, flight; Providing information on transportation expenses of railway, car, ship, flight via the Internet; Travel booking agencies, excluding lodging bookings, for bookings via the Internet; and travel booking agencies, excluding lodging bookings; Providing information via the Internet on arranging travel tours, excluding information on lodging; and providing information on arranging travel tours; Providing travel information on sightseeing locations; Travel information regarding the various destinations; Car rental; Car rental reservation services for others; and Travel agency services, namely, providing information on transportation expenses and fare discounting of railway, car, ship and flight; and Providing a web site featuring information in the field of postal codes |
| Goods and Services | Arranging temporary housing accommodations through reservations; Booking of boarding for animals; Bookings for others with regard to restaurants, cafes, cafeterias, self-service restaurants and snack-bars; Providing information in the field of restaurants, cafes, cafeterias, self-service restaurants and snack-bars; Internet order-taking services, namely, booking catering services for others; Providing information on temporary housing accommodations; Providing information on the status of booking of temporary housing accommodations; Providing information on the boarding for animals; Providing information relating to providing foods and beverages; Providing information on temporary housing accommodations via the Internet and providing information on temporary housing accommodations via other means; Travel agency services, namely, making reservations and bookings for hotels and boarding houses via the Internet and by other means; Providing information on discounted temporary housing accommodation fees; Providing information on discounted fees relating to foods and beverages; and Providing information on discounted fees relating to boarding for animals; and Providing information about facilities for holding weddings and banquets |
| Translation of Words in Mark | The wording "RAKUTEN" has no meaning in a foreign language. |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Wednesday, April 3, 2019 |
| Primary Code | 035 |
| First Use Anywhere Date | Monday, June 2, 2008 |
| First Use In Commerce Date | Monday, June 2, 2008 |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Wednesday, April 3, 2019 |
| Primary Code | 039 |
| First Use Anywhere Date | Monday, June 2, 2008 |
| First Use In Commerce Date | Monday, June 2, 2008 |
| International Class | 043 - Services for providing food and drink; temporary accommodations. |
| US Class Codes | 100, 101 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Wednesday, April 3, 2019 |
| Primary Code | 043 |
| First Use Anywhere Date | Monday, June 2, 2008 |
| First Use In Commerce Date | Monday, June 2, 2008 |
| Party Name | RAKUTEN GROUP, INC. |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 03 - Corporation |
| Address | TOKYO 158-0094 JP |
| Party Name | Rakuten, Inc. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Tokyo 1580094 JP |
| Party Name | Rakuten, Inc. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Tokyo 140-0002 JP |
| Party Name | Rakuten, Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Tokyo 140-0002 JP |
| Event Date | Event Description |
| Wednesday, May 12, 2021 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Wednesday, April 3, 2019 | CANCELLED SEC. 8 (6-YR) |
| Wednesday, March 20, 2019 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Wednesday, September 19, 2018 | POST REGISTRATION ACTION MAILED - SEC. 8 |
| Monday, July 23, 2018 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Tuesday, January 23, 2018 | POST REGISTRATION ACTION MAILED - SEC. 8 |
| Friday, January 19, 2018 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Tuesday, January 16, 2018 | TEAS SECTION 8 RECEIVED |
| Tuesday, January 17, 2017 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Thursday, November 19, 2015 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Thursday, November 19, 2015 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Tuesday, August 11, 2015 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, August 11, 2015 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Tuesday, January 17, 2012 | REGISTERED-PRINCIPAL REGISTER |
| Saturday, December 10, 2011 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE MAILED |
| Friday, December 9, 2011 | LAW OFFICE REGISTRATION REVIEW COMPLETED |
| Thursday, December 8, 2011 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Tuesday, November 22, 2011 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, November 22, 2011 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, November 22, 2011 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, May 26, 2011 | NON-FINAL ACTION MAILED |
| Wednesday, May 25, 2011 | SU - NON-FINAL ACTION - WRITTEN |
| Thursday, May 5, 2011 | NOTICE OF DESIGN SEARCH CODE MAILED |
| Wednesday, May 4, 2011 | STATEMENT OF USE PROCESSING COMPLETE |
| Thursday, April 28, 2011 | USE AMENDMENT FILED |
| Wednesday, May 4, 2011 | DIVISIONAL PROCESSING COMPLETE |
| Thursday, April 28, 2011 | DIVISIONAL REQUEST RECEIVED |
| Tuesday, May 3, 2011 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Thursday, April 28, 2011 | TEAS REQUEST TO DIVIDE RECEIVED |
| Thursday, April 28, 2011 | TEAS STATEMENT OF USE RECEIVED |
| Tuesday, November 2, 2010 | NOA MAILED - SOU REQUIRED FROM APPLICANT |
| Tuesday, September 7, 2010 | PUBLISHED FOR OPPOSITION |
| Wednesday, August 18, 2010 | NOTICE OF PUBLICATION |
| Saturday, July 31, 2010 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Saturday, July 31, 2010 | ASSIGNED TO LIE |
| Monday, July 19, 2010 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, July 16, 2010 | EXAMINERS AMENDMENT MAILED |
| Friday, July 16, 2010 | EXAMINER'S AMENDMENT ENTERED |
| Friday, July 16, 2010 | EXAMINERS AMENDMENT -WRITTEN |
| Monday, January 25, 2010 | PRIORITY ACTION MAILED |
| Saturday, January 23, 2010 | PRIORITY ACTION WRITTEN |
| Tuesday, January 12, 2010 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Monday, December 28, 2009 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Wednesday, December 16, 2009 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Monday, December 14, 2009 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, November 20, 2009 | EXAMINERS AMENDMENT MAILED |
| Friday, November 20, 2009 | EXAMINER'S AMENDMENT ENTERED |
| Friday, November 20, 2009 | EXAMINERS AMENDMENT -WRITTEN |
| Tuesday, November 3, 2009 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Monday, November 2, 2009 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Wednesday, October 21, 2009 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Saturday, October 17, 2009 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, September 25, 2009 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, September 25, 2009 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, September 25, 2009 | ASSIGNED TO LIE |
| Wednesday, September 23, 2009 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, March 24, 2009 | NON-FINAL ACTION MAILED |
| Tuesday, March 24, 2009 | NON-FINAL ACTION WRITTEN |
| Friday, March 20, 2009 | ASSIGNED TO EXAMINER |
| Wednesday, February 18, 2009 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Friday, January 9, 2009 | NOTICE OF DESIGN SEARCH CODE MAILED |
| Thursday, January 8, 2009 | NEW APPLICATION ENTERED IN TRAM |