| Serial Number | 79296373 |
| Word Mark | STEPSTONE |
| Filing Date | Tuesday, February 18, 2020 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, September 28, 2021 |
| Registration Number | 6495626 |
| Registration Date | Tuesday, September 28, 2021 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, July 13, 2021 |
| Goods and Services | Education, namely, classes, seminars in the field of computers and business; providing of training in the field of computers, business; entertainment, namely, live music concerts, sports competitions; organizing sporting and cultural activities, namely, sports competitions, cultural shows; instruction and training, in particular in the field of personnel recruitment, employment, career planning and preparing of résumés; vocational guidance being training advice; providing education, namely, classes, seminars, and assessment relating thereto, in the field of staffing, recruitment and retention of employees, employment, employee retention, workforce and talent management, career development and cv creation for employers and candidates; personnel training; consultancy relating to education and training of personnel, providing of online information and news in the field of vocational training services; vocational training services; information relating to education, training, entertainment, recreation, sport and print publishing; consultancy services relating to the education and training of management and of personnel; teaching and training in business, industry and information technology; provision of educational courses, lectures and seminars in the field of computers, business; providing of educational testing, training and assessment relating thereto by means of computers; training of personnel in the areas of personnel recruitment and retention, human resources and business management; arranging and conducting of business conferences and seminars; training in the use of data processing equipment and in computer programming; training services concerned with the use of computer software; training in the field of design, advertising and communication technologies; training and instructional services relating to telecommunications broadcasting, television and radio; development of educational materials in the field of computers and business |
| Description of Mark | The mark consists of a graphic of a blue rounded triangle with a transparent stripe dividing the shape into two parts from the lower left corner to part way up the right side. To the right of the graphic is the word "StepStone" in blue. |
| Goods and Services | Downloadable computer software for use in database management, creating searchable databases of information; downloadable mobile applications for use in database management, creating searchable databases of information; downloadable application software for mobile devices for use in database management, creating searchable databases of information; downloadable computer databases in the field of personnel recruitment; downloadable interactive databases software for a human resources management system which enables electronic processing and management of job candidate videos and data and facilitates the maintenance of and access to a searchable proprietary database of job candidates for employers over a global computer network; downloadable database software for staff management, business management administration, tracking, monitoring, automations and assessment of staffing, hiring, recruiting and employee retention processes, workforce logistics management and planning and decision support; downloadable machine readable computer programs using artificial intelligence for creating searchable databases of information for personnel recruitment; a database of information relating to human resources, career, employment, recruitment, retention and placement, recorded on computer media; downloadable software used to automate and facilitate the employee recruiting process, to manage and track information regarding job candidates, to provide employee assessment and survey tools for employers and to manage on-line employee applications; computer hardware and downloadable computer software for database management; downloadable computer software and hardware to enable searching of data and connection to databases and the internet; downloadable computer software for application and database integration; downloadable computer software for image processing, for document management, for printer management, for network transmission and reception, for document creation, for database management and for document and image processing; electronic databases recorded on computer media in the field of employment recruitment; apparatus, instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing music, sounds, images, text, computer connectivity, broadcast reception signals, software, information, data and software code; sound, video and data recordings in the field of personnel recruitment; cards bearing encoded or magnetic data for operating automatic vending machines or apparatus; downloadable computer programs stored on data carriers, including magnetic data carriers using artificial intelligence for creating searching searchable databases of information for personnel recruitment; data carriers for computers having software recorded thereon for use in database; blank data storage media and devices; prerecorded data carriers for use with computers in the field of personnel recruitment; recorded programs for data processing apparatus for data management |
| Goods and Services | Telecommunications, in particular digital, electronic and online communications, namely, digital network communications, electronic online message alerts; telecommunication access services provided via internet platforms and portals; providing Internet chat lines and chat rooms, and forums for transmission of messages among users, business discussions; hotline or call center telephone services; providing press services in connection with online services, namely, the gathering, supplying and transmission of messages and information of all kinds, being online press agency services, including by means of on-demand services and other electronic media services; transmission of multiple use of media information in the form of text or image material by online press agencies for content syndication; transmission of information stored on databases, in particular including communication by means of interactive computer systems; supplying, namely, transmission of news and general information, being press agency services, including electronic agencies, and broadcasting of television programs and radio programs on the world wide web; telecommunications services, namely, transmission of data in the fields of employment, personnel recruitment, the insertion of adverts, preparation of résumés and data regarding forwarding of replies to such advertisements by means of a computer network; providing access to interactive databases relating to various types of advertisements, including advertisements in the field of job recruitment, advertisements arranged according to category and advertisements relating to employment; forwarding responses to advertisements via a computer network; electronic communications services; delivery of messages and data by electronic transmission; providing access to the internet; providing telecommunications access to electronic publications and data via computer networks; providing telecommunication access for the downloading and/or processing and/or displaying purposes; provision of multi-user access to computer networks for the transfer and dissemination of a wide range of information; electronic mail transmission and mailbox access services; telecommunication services for access to information, text, sound, images and data via communication and computer networks; rental of telecommunications apparatus, modems and equipment for the transmission of messages; paging services via telecommunications equipment; message collection and transmission services; provision of access to data or documents stored electronically in central files for remote consultation; providing access to global computer networks and other computer networks; providing access, and leasing access time, to computer databases; transmission of database information via telecommunications networks; electronic exchange of data stored in databases accessible via telecommunication networks |
| Goods and Services | Paper and cardboard; printed matter, namely, magazines and pamphlets in the field of personnel recruitment; books, brochures and publications, namely, magazines, and pamphlets in the field of personnel recruitment; printed instructional and teaching material in the field of personnel recruitment, except apparatus |
| Pseudo Mark | STEP STONE |
| Indication of Colors claimed | The color(s) blue is/are claimed as a feature of the mark. |
| Goods and Services | Application service provider (asp) services, namely, hosting of web sites and featuring software for the design, development, customization, implementation, operation, management and maintenance of websites; computer programming and computer systems analysis; providing online non-downloadable customized database software for others in the fields of staff management, management administration, tracking, monitoring, automations and assessment of staffing, pre-hiring, hiring, post-hire, recruiting and employee retention processes, workforce logistics management and planning and decision support; advisory services relating to computer programming; designing websites for advertising purposes; consultancy services relating to the creation, development, maintenance and use of webpages; consultancy and advice in the design and development of computer hardware and software; consultancy and advice relating to the evaluation, choosing and implementation of computer software, firmware, hardware and of data processing systems; hosting an e-commerce platform on the Internet; creating electronically stored web pages for online services, especially for pre-hire attraction of candidates on the Internet; creating, updating, networking and installation of computer software; intranet site design, development and maintenance; research, development and project analysis, in particular in the field of information technology and other computer-related technologies; development of data bases; providing web-based non-downloadable software solutions for computer hardware, business data reporting and evaluation capabilities with detailed configuration options, integrated workflow support and individualized customization |
| 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, November 20, 2020 |
| Primary Code | 038 |
| 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 | Friday, November 20, 2020 |
| 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 | Friday, November 20, 2020 |
| Primary Code | 016 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 041 - Education; providing of training; entertainment; sporting and cultural activities. |
| US Class Codes | 100, 101, 107 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, November 20, 2020 |
| Primary Code | 041 |
| 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, November 20, 2020 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | The Stepstone Group EMEA GmbH |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 98 - Unknown |
| Address | DE |
| Party Name | StepStone Continental Europe GmbH |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | DE |
| Party Name | StepStone Continental Europe GmbH |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | DE |
| Party Name | StepStone Continental Europe GmbH |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | DE |
| Event Date | Event Description |
| Thursday, October 22, 2020 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Wednesday, November 18, 2020 | LIMITATION FROM ORIGINAL APPLICATION ENTERED |
| Friday, November 20, 2020 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, November 20, 2020 | ASSIGNED TO EXAMINER |
| Friday, November 20, 2020 | NON-FINAL ACTION WRITTEN |
| Saturday, November 21, 2020 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Tuesday, November 24, 2020 | APPLICATION FILING RECEIPT MAILED |
| Wednesday, December 9, 2020 | REFUSAL PROCESSED BY MPU |
| Wednesday, December 9, 2020 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Sunday, December 27, 2020 | REFUSAL PROCESSED BY IB |
| Thursday, June 3, 2021 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, June 3, 2021 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, June 3, 2021 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, June 4, 2021 | EXAMINERS AMENDMENT E-MAILED |
| Friday, June 4, 2021 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Friday, June 4, 2021 | EXAMINERS AMENDMENT -WRITTEN |
| Friday, June 4, 2021 | EXAMINER'S AMENDMENT ENTERED |
| Friday, June 4, 2021 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Saturday, June 12, 2021 | LIMITATION OF GOODS RECEIVED FROM IB |
| Wednesday, June 16, 2021 | LIMITATION FROM THE IB EXAMINED, NO ACTION IS NEEDED |
| Wednesday, June 23, 2021 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, June 30, 2021 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Friday, July 9, 2021 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Tuesday, July 13, 2021 | PUBLISHED FOR OPPOSITION |
| Tuesday, July 13, 2021 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Sunday, August 1, 2021 | NOTIFICATION PROCESSED BY IB |
| Tuesday, September 28, 2021 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, December 28, 2021 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Wednesday, March 16, 2022 | FINAL DISPOSITION PROCESSED |
| Wednesday, March 16, 2022 | FINAL DISPOSITION NOTICE SENT TO IB |
| Monday, April 4, 2022 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Thursday, January 16, 2025 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Friday, March 21, 2025 | NEW REPRESENTATIVE AT IB RECEIVED |