| Serial Number | 79047554 |
| Word Mark | SOFTWARE1ONE THE SOFTWARE LICENSING EXPERTS |
| Filing Date | Wednesday, October 10, 2007 |
| Status | 706 - SECTION 71 ACCEPTED |
| Status Date | Tuesday, April 23, 2019 |
| Registration Number | 3661006 |
| Registration Date | Tuesday, July 28, 2009 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, May 12, 2009 |
| Description of Mark | The mark consists of the wording "SOFTWARE ONE", the numeral "1", the wording "THE SOFTWARE LICENSING EXPERTS", and a line under the word "ONE". The color grey appears in the wording "SOFTWARE" and the numeral "1", the color black appears in the wording "ONE" and the wording "the software licensing experts"; the color red appears in a line under the "e" in "software" and the word "ONE". The color white constitutes background, outlining, shading or transparent areas, and is not part of the mark. |
| Goods and Services | COMPUTER PROGRAMS AND SOFTWARE FOR USE IN DATA-BASE MANAGEMENT IN THE FIELD OF SECURITY AND LICENSING |
| Goods and Services | PROVISION OF ACCESS TO A GLOBAL COMPUTER NETWORK |
| Pseudo Mark | SOFTWARE ONE ONE THE SOFTWARE LICENSING EXPERTS |
| Indication of Colors claimed | The color(s) black, grey, red, and white is/are claimed as a feature of the mark. |
| Goods and Services | PROFESSIONAL BUSINESS CONSULTING, MANAGEMENT OF COMPUTERIZED FILES, BUSINESS ORGANIZATION AND MANAGEMENT CONSULTANCY |
| Goods and Services | CONSULTING SERVICES IN THE FIELD OF MAINTAINING THE SECURITY AND INTEGRITY OF DATABASES, MONITORING OF COMPUTER SYSTEMS FOR SECURITY PURPOSES |
| NOT AVAILABLE | "SOFTWARE LICENSING EXPERTS" |
| Goods and Services | COMPUTER CONSULTANCY IN THE FIELD OF COMPUTER SECURITY; [ COMPUTER SOFTWARE DEVELOPMENT; COMPUTER SOFTWARE DESIGN; ] COMPUTER TECHNOLOGY SUPPORT SERVICES, NAMELY, HELP DESK SERVICES; MAINTENANCE OF COMPUTER SOFTWARE; INSTALLATION OF COMPUTER SOFTWARE; UPDATING OF COMPUTER SOFTWARE FOR OTHERS [ ; MAINTAINING AND CREATING OF WEBSITES FOR OTHERS; COMPUTER SERVICES, NAMELY, OPTIMIZING AND ANALYZING OF WEBSITES OF OTHERS ] |
| 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, January 4, 2008 |
| 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 | Friday, January 4, 2008 |
| Primary Code | 035 |
| 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, January 4, 2008 |
| Primary Code | 038 |
| 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, January 4, 2008 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 045 - Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, January 4, 2008 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | SoftwareOne AG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Stans CH-6370 CH |
| Party Name | SoftwareONE AG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | CH |
| Party Name | SoftwareONE AG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | CH |
| Event Date | Event Description |
| Thursday, January 3, 2008 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Thursday, February 7, 2008 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Thursday, February 7, 2008 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Wednesday, August 6, 2008 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, January 4, 2008 | NEW APPLICATION ENTERED |
| Friday, January 18, 2008 | ASSIGNED TO EXAMINER |
| Wednesday, February 6, 2008 | NON-FINAL ACTION WRITTEN |
| Thursday, February 7, 2008 | REFUSAL PROCESSED BY MPU |
| Saturday, March 8, 2008 | REFUSAL PROCESSED BY IB |
| Friday, August 1, 2008 | PAPER RECEIVED |
| Tuesday, August 5, 2008 | ASSIGNED TO LIE |
| Wednesday, August 6, 2008 | AMENDMENT FROM APPLICANT ENTERED |
| Wednesday, August 20, 2008 | FINAL REFUSAL MAILED |
| Wednesday, March 11, 2009 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, August 19, 2008 | FINAL REFUSAL WRITTEN |
| Thursday, September 11, 2008 | PAPER RECEIVED |
| Monday, September 15, 2008 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, September 15, 2008 | AMENDMENT FROM APPLICANT ENTERED |
| Tuesday, October 14, 2008 | NON-FINAL ACTION WRITTEN |
| Wednesday, October 15, 2008 | NON-FINAL ACTION MAILED |
| Thursday, March 5, 2009 | PAPER RECEIVED |
| Wednesday, March 11, 2009 | AMENDMENT FROM APPLICANT ENTERED |
| Wednesday, April 8, 2009 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, July 28, 2009 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, October 28, 2009 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, April 7, 2009 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, April 22, 2009 | NOTICE OF PUBLICATION |
| Tuesday, May 12, 2009 | PUBLISHED FOR OPPOSITION |
| Thursday, June 4, 2009 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Thursday, June 4, 2009 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, June 19, 2009 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Wednesday, August 19, 2015 | NOTICE OF ACCEPTANCE OF SEC. 71 & 15 - E-MAILED |
| Thursday, February 22, 2018 | NEW REPRESENTATIVE AT IB RECEIVED |
| Wednesday, November 4, 2009 | FINAL DISPOSITION PROCESSED |
| Wednesday, November 4, 2009 | FINAL DISPOSITION NOTICE SENT TO IB |
| Sunday, April 14, 2013 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, July 20, 2015 | TEAS SECTION 71 & 15 RECEIVED |
| Wednesday, August 19, 2015 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Wednesday, August 19, 2015 | REGISTERED - SEC. 71 ACCEPTED & SEC. 15 ACK. |
| Thursday, May 4, 2017 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Thursday, November 30, 2017 | INTERNATIONAL REGISTRATION RENEWED |
| Monday, December 23, 2019 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Saturday, July 17, 2021 | NEW REPRESENTATIVE AT IB RECEIVED |
| Saturday, July 28, 2018 | COURTESY REMINDER - SEC. 71 (10-YR) E-MAILED |
| Friday, April 5, 2019 | TEAS SECTION 71 RECEIVED |
| Tuesday, April 23, 2019 | REGISTERED-SEC.71 ACCEPTED |
| Tuesday, April 23, 2019 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Saturday, January 11, 2020 | GENERIC MADRID TRANSACTION CREATED |
| Saturday, January 11, 2020 | GENERIC MADRID TRANSACTION SENT TO IB |
| Friday, March 6, 2020 | PARTIAL INVALIDATION PROCESSED BY THE IB |
| Friday, August 6, 2021 | NEW REPRESENTATIVE AT IB RECEIVED |
| Friday, November 1, 2024 | NEW REPRESENTATIVE AT IB RECEIVED |