| Serial Number | 88112193 |
| Word Mark | RAKUTEN PAY |
| Filing Date | Tuesday, September 11, 2018 |
| Status | 606 - ABANDONED - NO STATEMENT OF USE FILED |
| Status Date | Monday, October 30, 2023 |
| Registration Number | 0000000 |
| Registration Date | NOT AVAILABLE |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, August 4, 2020 |
| Goods and Services | Integrated circuit (IC) card read and write apparatus; computer application software, namely, computer operating software for processing electronic payments and for transferring funds to and from others; downloadable image and video files containing information in the field of finance; computer software for collecting information from credit card use and electronic money use, and for making payment by credit cards and electronic money; magnetic card readers for credit cards; tablet computers, and parts and fittings thereof; computer programs for tablets, namely, downloadable mobile applications for processing electronic payments and for transferring funds to and from others; blank recording media, namely, blank magnetic data carriers on which computer programs for tablets are recorded; cash registers; personal digital assistants; computer programs for personal digital assistants, namely, computer operating software for processing electronic payments and for transferring funds to and from others; computer programs for cellular phones including smart phones, namely, computer operating software for processing electronic payments and for transferring funds to and from others; cellular phones including smart phones; parts and fittings for cellular phones including smart phones; blank recording media, namely, blank magnetic data carriers on which computer programs for cellular phones including smart phones are recorded; automated teller machines; blank integrated circuit (IC) cards; smart watches; smartphones; computers; electronic payment terminals; wireless POS (point of service) devices and computer operating programs therefor; encoded electronic chip cards containing programming used to process electronic payments and for transferring funds to and from others; blank magnetic cards; pre-recorded magnetic tapes, integrated circuit (IC) cards, magnetic discs, optical discs, optical magnetic discs and other video disks and video tapes containing information in the field of processing electronic payments and transferring of funds; downloadable computer programs for management and transaction tracking of virtual currency, cryptocurrency or tokens; computer programs in the field of block chain networks or distributed networks for processing electronic payments and for transferring funds to and from others; downloadable computer programs in the field of block chain network for virtual currency or cryptocurrency or distributed network for virtual currency or cryptocurrency for processing electronic payments and for transferring funds to and from others; downloadable computer programs for block chain network or distributed network for promoting the goods and services of others through the administration of sales and promotional incentive schemes involving loyalty points; application software for payment or settlement of electronic money, credit cards and debit cards used with barcode or QR code readers; downloadable computer programs for operating integrated circuit (IC) card read and write apparatus; electronic terminals for payment and settlement of electronic money; downloadable computer programs for operating terminals for payment and settlement of electronic money; downloadable computer programs for payment and settlement of electronic money; downloadable computer programs for recharging integrated circuit (IC) cards; apparatus for recharging integrated circuit (IC) cards; downloadable computer programs for operating near field communication (NFC) technology-enabled readers; near field communication (NFC) technology-enabled readers; downloadable computer programs for wearable computer, namely, computer operating software; downloadable computer programs for operating automatic vending machines; automatic vending machines; document printers for use with computers for printing receipts |
| Goods and Services | agency services of delivery of goods, packages and parcels; agency services of freight transportation, namely, freight brokerage and providing information relating to freight brokerage and to transportation of freight; arranging and booking of transportation for travel tours; providing information in the field of arranging and booking of travel for package tours; transportation, from and to airports, of passengers, personal belongings and luggage by land vehicles; consulting and providing information in the field of arranging of transportation for travel tours; consultancy, advisory and booking services relating to transportation for travel; travel guiding for tourists; providing information of travel guiding tourist; agency services for transportation of goods for tourists; arranging of transportation tours, package transportation tours and transport for sightseeing tours, and consulting and providing thereof; travel tour reservation, and consulting and providing information thereof; booking of seat reservations for tourist travelers, and consulting and providing information thereof; transportation reservation, and consulting and providing information thereof; transportation by railroad, land vehicles, sea crafts and air crafts, and arranging thereof; temporary storage of others' hand baggage; temporary storage of delivered goods; transportation for passengers and passenger's luggage; rental of bicycles, and providing information thereof; rental of cars, and providing information thereof |
| Goods and Services | rental of access time to global computer networks |
| Goods and Services | money transfer and fund transfer via the Internet; agency services for collecting gas, electric power, telephone utility payments or other utility rates, and providing information relating thereto; savings account services; issuance services of cash cards, namely, issuing debit cards; agencies for issuance of cash cards; payment processing services, namely, credit card, debit card, or travelers' checks payment processing services; issuance of cash card and debit card; cash card and debit card transaction processing services; providing information of transaction details of credit cards and debit cards; financial management of reimbursement payment for others, namely, compensating the goods purchased by using credit cards or debit cards; agency services for credit cards or debit cards payment processing services; credit guarantee on occasion of credit card use or debit card use; financing services for credit card users or debit card users; providing information of issuance or transaction details of credit cards; financial management of reimbursement payment for others, namely, compensating for repair of goods purchased by using credit cards; financial agency services for conclusion of credit card member contract, and providing information thereof; providing information relating to transaction details of electronic money; payment processing for users of credit cards or electronic money, and providing information thereof; payment processing of charge cards; providing information regarding transaction details of credit cards; fund transfer by using computers; payment processing of commercial transaction by using computer communication systems; agency services for payment processing of commercial transaction by using computer communication systems; factoring agency services; issuance services of prepaid cards; rental of payment settlement machines for credit card/debit card, namely, card readers and card writers; foreign exchange transactions; trading of overseas market securities futures; agencies for brokerage of overseas markets of securities and securities index futures; brokerage for hire-purchase; providing stock market information; financial assessment of company credit; trusteeship of money, securities, monetary claims, personal property, land, rights on land fixtures, surface rights or lease on land; acquisition and transfer of monetary claims; credit bureau; providing of financial information; trusteeship of financial futures contracts; management of buildings; agency services for the leasing or rental of buildings; leasing or renting of buildings; real estate agency services for the purchase and sale of buildings; agency services for the purchase or sale of buildings; real estate appraisal; providing information on buildings or land; rental of cash dispensers or automated-teller machines; agencies for cash disbursement balance or account balance inquiry; agencies for cash automatic payment or transfer; evaluation of the creditworthiness of private companies and individuals; personal liability insurance underwriting; agencies for bond subscriptions; debt collection agency services; liability guarantee and acceptance of bills, namely, financial guarantee surety; rental of paper money and coin counting or processing machines; loans and discount of bills; charitable fund raising; clearing-houses, financial; consultancy and brokerage services relating to accident insurance; accident insurance underwriting; electronic payment services involving electronic processing and subsequent transmission of bill payment data; agencies for collecting payments relating to sale of goods or offer of services; agencies for commodity futures trading; brokerage of credit purchase; letter-of-credit related services, namely, issuing letters of credit; money transfer and fund transfer, and providing information thereof; providing bank account information by telephone or internet; promoting of bank account for transfer deposit exclusive; money transfer and fund transfer through bank accounts; life insurance underwriting; life insurance brokerage; issuance of prepaid electronic virtual currency; issuance of tokens of value and providing information thereof; issuance of prepaid electronic money; claim adjustment in the field of insurance, excluding life insurance; insurance underwriting services for all types of insurance, excluding life insurance; agencies for insurance, excluding life insurance; lending against security; issuance services of electronic money; collection of publication financial funds on behalf of credit issuer of electronic money; providing information of electronic money transaction; agency services of electronic money payment processing services; agency services of electronic money deposit on electric money cards for electronic money users; agency services of electronic money deposit on media including integrated circuit cards or mobile telephone for electronic money user; agency services for collecting payment for goods by direct debit of financial institution by means of communications by computer terminals; issuance of electronic prepaid cards using computer terminal; issuance of electronic prepaid cards; settlement of and management of electronic commerce payment; electronic money transfer services; agency services for inquiry of bank statement by telephone, facsimile, or internet; land management; agency services for the leasing or rental of land; leasing of land; real estate agency services regarding the purchase and sale of land; real estate agency services for the purchase or sales of land; domestic exchange debt settlement; issuance of prepaid card capable of deposit; hire-purchase financing; insurance consultancy; insurance underwriting for all types of insurance; insurance brokerage; providing insurance information; insurance premium rate computing; safekeeping of valuables including securities and precious metals in the nature of safe deposit box services; trading of securities options and overseas market securities futures; securities underwriting; securities lending; securities offering; brokerage services relating to securities subscription or offering; trading of securities, securities index futures, securities options, and overseas market securities futures; agencies for brokerage of securities, securities index futures, securities options, and overseas market securities futures; agencies for brokerage of domestic markets of securities, securities index futures and securities options; trading of securities index futures; agencies for brokerage of in overseas markets of securities and securities index futures; agencies for brokerage of forward agreement of securities, for forward agreement of securities index futures, for forward agreement of securities options, spot and forward transaction of securities index futures; brokerage for securities liquidation, acceptance of deposits and acceptance of fixed interval installment deposits; providing transaction information of a bank account; agencies for issuance of travelers' checks; exchanging money; providing taxi payment services, namely, payment processing of electronic invoices; credit guarantee for installment sale users; credit bureau services; issuing of travelers' checks; issuance of travelers' checks and purchase thereof; bill payment services in the nature of overseas remittance for traveler; issuance services of IC cards for credit; electronic processing of electronic payments via a global computer network, and advisory services, consultancy and providing of information thereof; identification and electronic settlement relating to electronic transaction using online account, and advisory services, consultancy and providing of information thereto; issuance, management, or trading of virtual currency, cryptocurrency, or token of value; advisory, consultancy and information services relating to issuance, management, or trading of virtual currency, cryptocurrency, or tokens of value; issuance, management, or trading of tokens of value, and advisory, consultancy and information services relating to issuance, management, or trading of tokens of value; electronic payments processing or agencies for thereto; money transfer services; consigned collection of payment for goods; redeeming points issued for promoting goods and services for virtual currency or cryptocurrency, and management thereof; agency services for redeeming points issued for promoting goods and services for virtual currency or cryptocurrency and for managing the aforesaid services; virtual currency trading or cryptocurrency trading; payment processing services, using biometric identification such as iris individual certification or face individual certification, of electronic money, credit card and debit card users; payment processing services using bar-code reader or QR code reader for electronic money, credit card, or debit card users; payment processing services using near field communication for electronic money, credit card, or debit card users; agency services for the issuance, management, and payment of trading stamps, vouchers, tokens, discount cards, reward cards, including electronic vouchers, and providing information thereof |
| Goods and Services | providing shopping mall advertising for others on the Internet; providing website advertising space on the Internet, and providing information thereof; advertising for companies; commercial information agency services for information related to the sales contracts of goods on the Internet; promoting the goods and services of others through advertisements on Internet web sites; promoting the goods and services of others through the administration of sales and promotional incentive schemes involving trading stamps, vouchers, tokens, discount cards, and reward cards, and providing market research, consultation and information thereof; providing business research, consultation and information regarding issuance systems of trading stamps, vouchers, tokens, discount cards, reward cards; agency services for recruiting member stores and individual members of trading stamps, vouchers, tokens, discount cards, reward cards, and administration services thereof; marketing; providing business information related to discount coupons including electronic coupons; business consultancy; promoting goods and services of others through advertisements, and providing information thereof; advertising agency services for promoting the goods and services of others, and providing information thereof; dissemination of advertising material; providing or rental of advertising spaces on websites; rental or leasing of publicity materials; market research and analysis services; providing commercial information regarding the goods and services of others; providing information concerning commercial sales of goods; promoting the goods and services of others through the administration of sales and promotional incentive schemes involving cash rebates including electronic cash rebates, and consulting and providing information thereof; promoting the goods and services of others; agency service for publicity and sales promotion relating to goods and services of others; providing consumer information of shops and restaurants at which consumers can use trading stamps, vouchers, tokens, discount cards, reward cards, and related discount devices; providing information regarding commercial sales transactions; business information and accounting services; promoting the goods and services of others through the issuance of gift cards; promoting the sale of credit card accounts through the administration of incentive award programs; recruitment and management of member or of member shops to join credit card network on behalf of credit card company; providing taxi payment services, namely, issuing electronic invoices; mediation and conclusion of commercial transactions and contracts for others, namely, mediating or acting as agent with respect to the contracts for arranging of transportation for travel tours, and providing information thereof; arranging for pickup, delivery, storage, and transportation of freight via ground, sea, and air carriers; providing information regarding arranging for pickup, delivery, storage, and transportation of freight via ground, sea, and air carriers |
| Goods and Services | providing information in the field of temporary accommodations; agency services for booking hotel accommodation; providing foods and drinks and relaxing spaces for tourists at lounges and providing information thereof; providing foods and drinks for tourists at restaurants and bars and food and drink catering, and providing information thereof; providing foods and drinks, and providing information thereof |
| Disclaimer with Predetermined Text | "PAY" |
| Goods and Services | rental of computer systems; rental of memory storage of computer servers; rental of memory storage of servers on communication networks; providing online non-downloadable application software using communication networks, namely, software for processing electronic payments and transfer of funds to and from others; designing, developing and maintaining computer programs; rental of computers; providing online non-downloadable computer programs for processing electronic payments and transfer of funds to and from others; providing online non-downloadable computer programs for administration of electronic payment settlement systems; providing or rental of block chain network or distributed network platforms, namely, platform as a service (PAAS) featuring computer software platforms for managing cryptocurrency transactions using blockchain technology; rental of block chain network or distributed network software; rental of computers for use with block chain networks or distributed networks; designing, developing and maintaining computer programs for use with block chain networks or distributed networks; rental of computer programs for block chain network or distributed network for virtual currency or cryptocurrency transactions; providing or rental of block chain network or distributed network for virtual currency or cryptocurrency, namely, platform as a service (PAAS) featuring computer software platforms for managing cryptocurrency transactions using blockchain technology; rental of computers for block chain network for virtual currency or cryptocurrency transactions or distributed network for virtual currency or cryptocurrency transactions; designing, developing and maintaining computer programs for block chain network or distributed network for virtual currency or cryptocurrency transactions; rental of computer programs for block chain network or distributed network for promoting the goods and services of others through the administration of sales and promotional incentive schemes involving loyalty points; provision or rental of block chain network or distributed network platforms, namely, platform as a service (PAAS) featuring computer software platforms for managing cryptocurrency transactions using blockchain technology, for promoting the goods and services of others through the administration of sales and promotional incentive schemes involving loyalty points; providing or rental of computers for block chain network or distributed network platforms, namely, platform as a service (PAAS) featuring computer software platforms for managing cryptocurrency transactions using blockchain technology, for promoting the goods and services of others through the administration of sales and promotional incentive schemes involving loyalty points; designing, developing and maintaining computer programs for block chain network or distributed network platforms, namely, platform as a service (PAAS) featuring computer software platforms for managing cryptocurrency transactions using blockchain technology, for promoting the goods and services of others through the administration of sales and promotional incentive schemes involving loyalty points; electronic monitoring of credit card activity to detect fraud via the internet |
| 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 | Tuesday, September 18, 2018 |
| Primary Code | 009 |
| 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 | Tuesday, September 18, 2018 |
| 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 | Tuesday, September 18, 2018 |
| 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 | NOT AVAILABLE |
| 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 | Tuesday, September 18, 2018 |
| 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 | Tuesday, September 18, 2018 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 043 - Services for providing food and drink; temporary accommodations. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Tuesday, September 18, 2018 |
| Primary Code | 043 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | RAKUTEN GROUP, INC. |
| Party Type | 21 - New Owner After Publication |
| Legal Entity Type | 03 - Corporation |
| Address | TOKYO 158-0094 JP |
| Party Name | Rakuten, Inc. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Tokyo 158-0094 JP |
| Party Name | Rakuten, Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Tokyo 158-0094 JP |
| Event Date | Event Description |
| Monday, October 30, 2023 | ABANDONMENT NOTICE E-MAILED - NO USE STATEMENT FILED |
| Monday, October 30, 2023 | ABANDONMENT - NO USE STATEMENT FILED |
| Wednesday, March 1, 2023 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Tuesday, February 28, 2023 | SOU EXTENSION 5 GRANTED |
| Friday, February 10, 2023 | SOU EXTENSION 5 FILED |
| Monday, February 27, 2023 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Friday, February 10, 2023 | SOU TEAS EXTENSION RECEIVED |
| Thursday, September 1, 2022 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Tuesday, August 30, 2022 | SOU EXTENSION 4 GRANTED |
| Tuesday, August 30, 2022 | SOU EXTENSION 4 FILED |
| Tuesday, August 30, 2022 | SOU TEAS EXTENSION RECEIVED |
| Thursday, February 24, 2022 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Tuesday, February 22, 2022 | SOU EXTENSION 3 GRANTED |
| Tuesday, February 22, 2022 | SOU EXTENSION 3 FILED |
| Tuesday, February 22, 2022 | SOU TEAS EXTENSION RECEIVED |
| Wednesday, September 15, 2021 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Monday, September 13, 2021 | SOU EXTENSION 2 GRANTED |
| Monday, September 13, 2021 | SOU EXTENSION 2 FILED |
| Monday, September 13, 2021 | SOU TEAS EXTENSION RECEIVED |
| Wednesday, June 16, 2021 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Tuesday, February 9, 2021 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Friday, February 5, 2021 | SOU EXTENSION 1 GRANTED |
| Friday, February 5, 2021 | SOU EXTENSION 1 FILED |
| Friday, February 5, 2021 | SOU TEAS EXTENSION RECEIVED |
| Tuesday, September 29, 2020 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Tuesday, August 4, 2020 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, August 4, 2020 | PUBLISHED FOR OPPOSITION |
| Wednesday, July 15, 2020 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Thursday, July 2, 2020 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Thursday, June 25, 2020 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, June 25, 2020 | EXAMINER'S AMENDMENT ENTERED |
| Thursday, June 25, 2020 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Thursday, June 25, 2020 | EXAMINERS AMENDMENT E-MAILED |
| Thursday, June 25, 2020 | EXAMINERS AMENDMENT -WRITTEN |
| Thursday, March 5, 2020 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, March 5, 2020 | NON-FINAL ACTION E-MAILED |
| Thursday, March 5, 2020 | NON-FINAL ACTION WRITTEN |
| Tuesday, February 25, 2020 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Tuesday, February 11, 2020 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Wednesday, January 29, 2020 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, January 10, 2020 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, January 10, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, January 10, 2020 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, July 31, 2019 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, July 31, 2019 | NON-FINAL ACTION E-MAILED |
| Wednesday, July 31, 2019 | NON-FINAL ACTION WRITTEN |
| Wednesday, July 3, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, July 3, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, July 3, 2019 | ASSIGNED TO LIE |
| Saturday, June 29, 2019 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, January 2, 2019 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, January 2, 2019 | NON-FINAL ACTION E-MAILED |
| Wednesday, January 2, 2019 | NON-FINAL ACTION WRITTEN |
| Friday, December 7, 2018 | ASSIGNED TO EXAMINER |
| Tuesday, September 18, 2018 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, September 14, 2018 | NEW APPLICATION ENTERED |