| Serial Number | 77708539 |
| Word Mark | SUSTAINABLE EARTH BY STAPLES |
| Filing Date | Tuesday, April 7, 2009 |
| Status | 800 - REGISTERED AND RENEWED |
| Status Date | Saturday, February 19, 2022 |
| Registration Number | 4029201 |
| Registration Date | Tuesday, September 20, 2011 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, May 18, 2010 |
| Description of Mark | The mark consists of a globe design with leaves followed by the words "SUSTAINABLE EARTH BY STAPLES". |
| Goods and Services | [Cutlery, namely, knives, forks and spoons] |
| Goods and Services | Paper; writing pads of paper; notebooks; storage boxes made of cardboard; binders; envelopes; [ pens; pencils; highlighters; dry erase markers, ] paper staples, file folders, hanging file folders, non electric staplers; paper hole punchers; [ adhesive tape dispensers for household and commercial use; plastic garbage bags, ] paper napkins, toilet paper, paper towels; disposable absorbent wipes not impregnated with chemicals |
| Goods and Services | Cleaning preparations for use on various surfaces [, and disposable cleaning wipes impregnated with cleaning chemicals for a wide variety of household or commercial products and surfaces] ; white board cleaning spray [, and hand soap] |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | [Filled ink and toner cartridges for printers and facsimile machines] |
| Goods and Services | [Plates, bowls, cups] |
| International Class | 002 - Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. |
| US Class Codes | 006, 011, 016 |
| Class Status Code | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Saturday, February 19, 2022 |
| Primary Code | 002 |
| First Use Anywhere Date | Thursday, April 30, 2009 |
| First Use In Commerce Date | Thursday, April 30, 2009 |
| International Class | 003 - Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. |
| US Class Codes | 001, 004, 006, 050, 051, 052 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, April 10, 2009 |
| Primary Code | 003 |
| First Use Anywhere Date | Thursday, April 30, 2009 |
| First Use In Commerce Date | Thursday, April 30, 2009 |
| International Class | 008 - Hand tools and implements (hand-operated); cutlery; side arms; razors. |
| US Class Codes | 023, 028, 044 |
| Class Status Code | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Saturday, February 19, 2022 |
| Primary Code | 008 |
| First Use Anywhere Date | Thursday, April 30, 2009 |
| First Use In Commerce Date | Thursday, April 30, 2009 |
| 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, April 10, 2009 |
| Primary Code | 016 |
| First Use Anywhere Date | Thursday, April 30, 2009 |
| First Use In Commerce Date | Thursday, April 30, 2009 |
| International Class | 021 - Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel-wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes. |
| US Class Codes | 002, 013, 023, 029, 030, 033, 040, 050 |
| Class Status Code | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Saturday, February 19, 2022 |
| Primary Code | 021 |
| First Use Anywhere Date | Thursday, April 30, 2009 |
| First Use In Commerce Date | Thursday, April 30, 2009 |
| Party Name | WORKLIFE BRANDS LLC |
| Party Type | 35 - New Owner After Registration |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | FRAMINGHAM, MA 01702 |
| Party Name | STAPLES, INC. |
| Party Type | 34 - New Owner After Registration |
| Legal Entity Type | 03 - Corporation |
| Address | FRAMINGHAM, MA 01702 |
| Party Name | STAPLES BRANDS LLC |
| Party Type | 33 - New Owner After Registration |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | FRAMINGHAM, MA 01702 |
| Party Name | STAPLES BRANDS INC. |
| Party Type | 32 - New Owner After Registration |
| Legal Entity Type | 03 - Corporation |
| Address | FRAMINGHAM, MA 01701 |
| Party Name | OFFICE SUPERSTORE EAST LLC |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | FRAMINGHAM, MA 01701 |
| Party Name | Staples The Office Superstore, LLC. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | Framingham, MA 01702 |
| 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 |
| Saturday, April 11, 2009 | NOTICE OF DESIGN SEARCH CODE MAILED |
| Friday, April 10, 2009 | NEW APPLICATION ENTERED |
| Friday, April 10, 2009 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, May 19, 2009 | ASSIGNED TO EXAMINER |
| Tuesday, May 26, 2009 | NON-FINAL ACTION WRITTEN |
| Tuesday, May 26, 2009 | NON-FINAL ACTION MAILED |
| Thursday, November 26, 2009 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, November 26, 2009 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, November 27, 2009 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, December 15, 2009 | EXAMINERS AMENDMENT -WRITTEN |
| Tuesday, December 15, 2009 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, December 15, 2009 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, December 16, 2009 | EXAMINERS AMENDMENT MAILED |
| Tuesday, January 5, 2010 | ASSIGNED TO LIE |
| Tuesday, January 5, 2010 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Friday, January 15, 2010 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Friday, January 22, 2010 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Tuesday, February 2, 2010 | NON-FINAL ACTION WRITTEN |
| Wednesday, February 3, 2010 | NON-FINAL ACTION MAILED |
| Friday, April 9, 2010 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, April 9, 2010 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, April 9, 2010 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, April 12, 2010 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, April 13, 2010 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, April 28, 2010 | NOTICE OF PUBLICATION |
| Tuesday, May 18, 2010 | PUBLISHED FOR OPPOSITION |
| Tuesday, July 13, 2010 | NOA MAILED - SOU REQUIRED FROM APPLICANT |
| Thursday, January 13, 2011 | SOU TEAS EXTENSION RECEIVED |
| Thursday, January 13, 2011 | SOU EXTENSION 1 FILED |
| Thursday, January 13, 2011 | SOU EXTENSION 1 GRANTED |
| Saturday, January 15, 2011 | NOTICE OF APPROVAL OF EXTENSION REQUEST MAILED |
| Wednesday, May 25, 2011 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, May 25, 2011 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Wednesday, July 13, 2011 | TEAS STATEMENT OF USE RECEIVED |
| Wednesday, July 13, 2011 | USE AMENDMENT FILED |
| Monday, July 18, 2011 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Monday, July 18, 2011 | STATEMENT OF USE PROCESSING COMPLETE |
| Friday, August 12, 2011 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Tuesday, August 16, 2011 | LAW OFFICE REGISTRATION REVIEW COMPLETED |
| Wednesday, August 17, 2011 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Tuesday, September 20, 2011 | REGISTERED-PRINCIPAL REGISTER |
| Monday, September 11, 2017 | TEAS SECTION 8 & 15 RECEIVED |
| Wednesday, September 27, 2017 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Sunday, October 8, 2017 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Sunday, October 8, 2017 | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Sunday, October 8, 2017 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED |
| Wednesday, October 18, 2017 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Wednesday, May 8, 2019 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Wednesday, July 17, 2019 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Wednesday, September 11, 2019 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, September 11, 2019 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Sunday, September 20, 2020 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |
| Wednesday, September 30, 2020 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Monday, September 20, 2021 | TEAS SECTION 8 & 9 RECEIVED |
| Wednesday, February 16, 2022 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Saturday, February 19, 2022 | REGISTERED - PARTIAL SEC. 8 (10-YR) ACCEPTED |
| Saturday, February 19, 2022 | REGISTERED - SEC. 9 GRANTED/CHECK RECORD FOR SEC. 8 |
| Saturday, February 19, 2022 | REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) |
| Saturday, February 19, 2022 | NOTICE OF ACCEPTANCE OF SEC. 8 - E-MAILED |
| Thursday, February 2, 2023 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Thursday, February 2, 2023 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Thursday, February 2, 2023 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, February 2, 2023 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Thursday, February 2, 2023 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Thursday, June 20, 2024 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |