| Serial Number | 86868355 |
| Word Mark | STAPLES |
| Filing Date | Thursday, January 7, 2016 |
| Status | 606 - ABANDONED - NO STATEMENT OF USE FILED |
| Status Date | Monday, October 15, 2018 |
| 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, July 19, 2016 |
| Goods and Services | Computer programs for document management; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; radio frequency identification (RFID) tags and readers; Multifunction electronic devices for use in copying, printing, scanning, video capturing and/or transmitting documents and images; software for data, document, and information backup, storage, recovery, migration, application self-healing, and asset discovery; data protection software; computer software for the protection of data enabling automatic enforcement of data protection policies, destruction and encryption of data and the disabling of lost or stolen data processing and carrying devices; software for document investigation and review; Computer software for preparing, scanning, organizing, searching, processing, sharing, password protecting, version tracking, retention scheduling, legal compliance tracking, and accessing stored electronic documents and files, including for cloud storage, and electronic signing of documents; computer application software for mobile devices for use in preparing, scanning, organizing, searching, processing, sharing, password protecting, version tracking, retention scheduling, legal compliance tracking, and accessing stored electronic documents and files, including for cloud storage; computer application software for mobile phones, namely, software for document, file and database management and for access to and management of electronic storage of data |
| Goods and Services | Boxes, cartons, storage containers, and packaging containers made of paper or cardboard; File boxes for storage of business and personal record; cardboard and paperboard boxes for storage of business records, vital records, microfilms, microfiches, computer disks, computer tapes, computer software, computer data, audiotapes, optical disks, films, master recordings, blueprints, medical records and x-rays |
| Goods and Services | Records management services, namely, document indexing for others; Computerized and central file management and business file management; document management services, namely, shipment processing, preparing shipping documents and invoices, tracking documents, packages and freight over computer networks, intranets and the internet for business purposes; duplication of documents; on-line services,namely, inventory management and control services for electronic business records, film media, sound tracks; medical images, data records, and domain name records and documents; inventory management and control services for business and other records in both electronic and paper form; business project development and management services relating to the organization, maintenance, management, storage, retention, and coding of business and other records; photocopying services; business consulting and project management services for others for business purposes in the fields of organization, maintenance, management, storage, retention, filing, and retrieval of business or other records; providing office functions in the nature of filing, retrieval, organization, maintenance, and management of business and other records; online backup tape management system services for business purposes, namely, tracking the location of computer back-up tapes for others, transportation logistics services in the nature of scheduling the delivery and pickup of computer back-up tapes and preparing business reports regarding the status and activity of the computer back-up tapes; management services relating to the destruction and shredding of business records, vital records, computer data, audiotapes, films, master recordings, medical records, x-rays and archival materials and records |
| Goods and Services | film and sound recording services, namely, inspection, rejuvenation and cleaning; technical support services, namely, troubleshooting in the nature of the repair of computer hardware |
| Goods and Services | Computer transmission of online based services accessed via a network reference, namely, a URI, visual code, namely, barcodes, tag, namely, RFID, terminal, namely, PC or mobile device, or any combination thereof; transmission of digital files; Provision of access to data or documents stored electronically in central files for remote consultation; on-line document delivery via a global computer network; facsimile retrieval services for business and other records; relocation of documents in the nature of electronic transmission of data and documents, namely, business records and other records, via computer terminals; providing secure email services; transmission services, namely, online document, electronic records, and email delivery via a global computer network; transmission services, namely, document data transfer services via global computer network and e-mail in the field of business records, electronic business records, film media, sound tracks, images and data records |
| Goods and Services | Physical storage of hard copy data and documents; archival services, namely, collection and storage of historical records and documents; retention services, namely, electronic storage of business records, film media, sound tracks, medical images, data records, and domain name records and documents; document delivery of non-electronic records; Physical storage of paper documents and physical storage of electronically- stored data or documents; relocation, namely, transportation of goods in the nature of documents, computer hardware and software for business records and other records by air, boat, rail, bus, truck; document delivery services by air, road, rail and sea; Physical storage of electronic media, namely, storage of data recorded on optical, digital and magnetic media |
| Goods and Services | document shredding services; consulting services relating to the destruction and shredding of business records, vital records, computer data, audiotapes, films, master recordings, medical records, x-rays and archival materials and records; film and sound recording services, namely, duplication hard drive shredding services |
| Goods and Services | Electronic vaulting services, namely, electronic storage of files and documents; Electronic storage of electronic media, namely, data, documents, files, text, photos, images, graphics, music, audio, video, and multimedia content; Electronic storage of files and documents; conversion of data or documents from physical to electronic media; digitization of documents; Providing temporary use of non-downloadable computer software for tracking documents over computer networks, intranets and the internet; computer services, namely, electronic digitizing paper documents, printed photographic images, artwork, paintings; off-site data backup; digital compression of business files and computer data; computer services, namely, data recovery and data encryption services of electronic business records, film media, sound tracks, medical images, data records, and domain name records and documents; technical support, namely, providing back-up computer programs and facilities for pc's, laptops, desktops and servers; reconstruction and recovery of computer databases, data records, and domain name records and electronic documents; duplication of computer programs; format conversion services, namely, conversion of cds into digital formats, and conversion of data or documents from physical to electronic media; public document retrieval services for business and other records; document data transfer from one computer format to another; conversion of business data and other documents from physical to electronic media, scanning and format conversion services, namely, electronic scanning of photographic images, artwork, and medical x-rays and films and format conversion in the nature of data conversion of electronic information and data conversion of computer programs and data, not physical conversion; consulting and project management services for others in the fields of information technology, data center operations, computer programming; computer programming for others in the fields of organization, maintenance, storage, management, retention and destruction of business records, vital records, computer data, audiotapes, medical records, films, master recordings, archival materials and records; provision of disaster recovery computer facilities, namely, the leasing of computer hardware and software; computer services, namely, data backup and recovery services; technical support, namely, monitoring technological functions of computer network systems, providing back-up computer programs and facilities, and troubleshooting computer software; providing temporary use of on-line non-downloadable software via a global computer network for use in connection with digital archiving services, namely, the capture of files and data comprising electronic data; computer services that assist with file and application backup, file and application recovery, file and application transfer or migration between computers, file and application restoration and file, application and hardware audit, identification and inventory; installation of computer software; updating of computer software; consultancy with regard to computer systems; providing back-up computer programs and facilities; computer data recovery services; computer disaster recovery planning; Technology project management in the field of electronic discovery services via global computer networks for lawyers and corporations; consultation services in the field of information technology; data conversion of computer programs; computer programming for others in the field of organization, maintenance, storage, management, retention and destruction of business records, vital records, computer data, medical records, films, master recordings, and archival materials and records; testing services for others' computer disaster recovery plans; Software as a service (SAAS) services featuring software for encryption and encryption services management; Software as a service (SAAS) services, namely, hosting software for use by others for use in encryption and encryption services management; Encryption and decryption of data, electronic messages and e-mail; Software as a service (SAAS) featuring software for use in preparing, scanning, organizing, searching, processing, sharing, password protecting, version tracking, retention scheduling, legal compliance tracking, and accessing stored electronic documents and files, including document encryption, file synchronization, and cloud storage and electronic signing of documents |
| 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, January 14, 2016 |
| 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, January 14, 2016 |
| Primary Code | 016 |
| 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, January 14, 2016 |
| Primary Code | 035 |
| 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, January 14, 2016 |
| 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, January 14, 2016 |
| 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, January 14, 2016 |
| Primary Code | 039 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 040 - Treatment of materials. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, January 14, 2016 |
| Primary Code | 040 |
| 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, January 14, 2016 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | STAPLES BRANDS INC. |
| Party Type | 22 - New Owner After Publication |
| Legal Entity Type | 03 - Corporation |
| Address | FRAMINGHAM, MA 01701 |
| Party Name | OFFICE SUPERSTORE EAST LLC |
| Party Type | 21 - New Owner After Publication |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | FRAMINGHAM, MA 01701 |
| Party Name | Staples The Office Superstore, LLC |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Framingham, MA 01702 |
| Party Name | Staples The Office Superstore, LLC |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Framingham, MA 01702 |
| Event Date | Event Description |
| Monday, October 15, 2018 | ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED |
| Monday, October 15, 2018 | ABANDONMENT - NO USE STATEMENT FILED |
| Wednesday, March 14, 2018 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Monday, March 12, 2018 | EXTENSION 3 GRANTED |
| Monday, March 12, 2018 | EXTENSION 3 FILED |
| Monday, March 12, 2018 | TEAS EXTENSION RECEIVED |
| Wednesday, October 18, 2017 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Wednesday, September 27, 2017 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Wednesday, September 13, 2017 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Monday, September 11, 2017 | EXTENSION 2 GRANTED |
| Monday, September 11, 2017 | EXTENSION 2 FILED |
| Monday, September 11, 2017 | TEAS EXTENSION RECEIVED |
| Tuesday, March 14, 2017 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Friday, March 10, 2017 | EXTENSION 1 GRANTED |
| Friday, March 10, 2017 | EXTENSION 1 FILED |
| Friday, March 10, 2017 | TEAS EXTENSION RECEIVED |
| Tuesday, September 13, 2016 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, September 13, 2016 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Tuesday, September 13, 2016 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Tuesday, July 19, 2016 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, July 19, 2016 | PUBLISHED FOR OPPOSITION |
| Wednesday, June 29, 2016 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Monday, June 13, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, May 11, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, May 10, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, May 10, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, March 15, 2016 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, March 15, 2016 | NON-FINAL ACTION E-MAILED |
| Tuesday, March 15, 2016 | NON-FINAL ACTION WRITTEN |
| Tuesday, March 8, 2016 | ASSIGNED TO EXAMINER |
| Thursday, January 14, 2016 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
| Monday, January 11, 2016 | NEW APPLICATION ENTERED IN TRAM |