| Serial Number | 85806805 |
| Word Mark | TELEFONICA DIGITAL |
| Filing Date | Wednesday, December 19, 2012 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Friday, October 2, 2020 |
| Registration Number | 4487191 |
| Registration Date | Tuesday, February 25, 2014 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, December 10, 2013 |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Disclaimer with Predetermined Text | "DIGITAL" |
| Goods and Services | Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, namely, cameras, digital cameras, movie cameras, motion picture cameras, video projectors, cinematographic apparatus, sensing and signalling devices for measurement and quality control of materials processing by laser; compasses, surveyors' levels, optical scanners, optical reflectors, graduation calibration checkers, lifesaving rafts; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electrical conductors, electric switches, transformers, accumulators, voltage regulators, and electrical controllers; apparatus for recording, transmission and reproduction of sound or images; magnetic data carriers, namely, pre-recorded magnetic data carriers featuring music and instruction in the field of telecommunications; blank recordable optical disc; automatic vending machines and mechanisms for coin-operated apparatus sold as a unit; cash registers, calculating machines, data-processing equipment and computers; recorded computer programs, namely, computer operating recorded programs, recorded computer game programs; computer and television screens, computer keyboards, computer mice, blank CD-ROMs for sound or video recording; telephone apparatus, image and sound transmitters and receivers, automatic telephone exchanges; telephones; telephone repeaters; answering machines; fire extinguishing apparatus; downloadable electronic publications in the nature of books, magazines, manuals, hand-outs, workbooks, educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, posters and educational booklets in the field of computers and telecommunications; electronic diaries; intercommunication apparatus, namely, apparatus for transmission of communication; interfaces for computers; computer game programs; electronic pens for visual display units; data processing equipment in the nature of optical disk readers; computer peripheral equipment; magnetic coded cards, in the nature of pre-paid telephone calling cards, gift cards, debit cards, credit cards; television apparatus, namely, televisions; coin-operated mechanisms for television sets; modems |
| Goods and Services | Retail store services and online retail store services featuring telephony goods, image and sound transmitters and receivers and data processing equipment and computers and recorded computer programs; sales promotion for others, demonstration of goods; import and export commercial agencies in the field of telephony goods, transmitters and receivers of images and sound and data processing equipment and computers and recorded computer programs; assistance in business management and product commercialization, within the framework of a franchise contract; business management and organization consultancy, business appraisals, preparing business reports and business investigations, business management assistance and consultancy, conducting marketing studies, marketing research services, commercial information agencies, and import-export agencies; business efficiency expert services; market and public opinion polling; accounting services; telephone answering for unavailable subscribers; advertisement services; dissemination of advertising matter and rental of advertising space; distribution and dissemination of advertising materials, namely, distribution of leaflets either directly or by post and distribution of samples; online advertising services on a computer network; compilation and provision of trade and business statistical information; electronic advertising services, namely, dissemination advertising via the internet for others |
| Goods and Services | Telecommunications services, namely, local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable, and satellite transmissions; telecommunications services for providing multiple-user access to a global computer network for the transmission and dissemination of any information, images and sounds; telephone services, namely, local and long distance telephone services; mobile telecommunications services, namely, communications by means of mobile phones; mobile media services in the nature of electronic transmission of entertainment media content; providing an Internet website portal featuring information in the field of telecommunications; mobile telecommunication network services, namely, wireless telephone services; fixed line telecommunication services, namely, satellite transmission, e-mail services; provision of wireless broadband communications services; broadband services, namely, providing internet access via broadband networks; communications consisting of providing multiple user access to a global computer data network Internet/Intranet for the transmission and dissemination of information, images or sound of all kinds; electronic mail services; message sending, receiving and forwarding; providing access to commercial transactions via electronic communications networks, namely, providing electronic transmission of credit card transaction data and electronic payment data via a global computer network; broadcasting and transmission of information via networks or the Internet; provision of access to an electronic on-line network for information retrieval; providing telecommunication connections to the Internet or data bases; telecommunications gateway services, namely, telecommunications routing and junction services; communications by optical fiber networks; communications via computer terminals; computer aided transmission of messages and images; satellite transmission, information about telecommunication; news agency services for electronic transmission of news data, transmission of news items to news reporting organizations; transmission of news and information regarding daily world and local events; radio broadcasting services; television broadcasting services; broadcasting services relating to Internet protocol TV; provision of access to Internet protocol TV; provision of Internet access; electronic transmission of mail and text messages; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely, rental of access time to the internet; rental of access time to the Internet for use in accessing the databases of others; providing access to databases |
| Goods and Services | Educational and entertainment services, namely, organizing community sporting and cultural events; arranging, organizing and conducting triathlon, cycling, running events and cultural shows; organization of exhibitions for cultural or educational purposes; providing non-downloadable prerecorded music, information in the field of music, multimedia production services, production of special effects including model-making services, computer-generated imagery and computer-generated graphics for the production of motion pictures, videos, and movie trailers, provided by means of telecommunication networks; information services relating to education, namely, providing information about online education, training, entertainment, sporting and cultural activities provided by means of telecommunication networks; organization of cultural shows; organizing community festivals featuring a variety of activities, namely, sporting events, art exhibitions, flea markets, ethnic dances and the like; organization of sports competitions; providing information about education, entertainment and recreation activities; education, entertainment and recreation in holiday clubs and camps, namely, conducting arts and crafts workshops and organizing sporting competitions, namely, swimming meet, soccer competition; organization and conducting contests; arranging and conducting of educational colloquiums, conferences, congresses, seminars and symposiums in the field of telecommunications, computer software; publication of books, publication of texts, other than publicity texts; services relating to the editing of radio and television programmes, radio entertainment production, televised entertainment in the nature of on-going television programs in the field of news, comedy, variety; television show production and television programming services provided by means of internet protocol technology; provision of entertainment by means of television and internet protocol television in the nature of ongoing Internet Protocol Television (IPTV) television programming segments in the field of, telecommunications, computer software, personal relationships |
| Goods and Services | Hosting the websites of others on a computer server for a global computer network; creating and maintaining websites for others; creating an Internet platform for electronic commerce, namely, creating electronic commerce websites for others; provision of Internet search engines, hosting computer websites; computer programming; providing information regarding computer hardware and programs design and development; computer programming for processing electronic data; computer design and computer engineering; computer project management services; consultancy on office and workplace automation and consultancy relating to computer hardware and computer programs; computer systems analysis carried out by computer consultants for database recovery and for installing computer software; design and development of computer hardware and software, computer system design, design and development of computer hardware, computer software design, installation of computer software, maintenance of computer software, updating of computer software, duplication of computer programs, computer systems analysis, recovery of computer data, conversion of data or documents from physical to electronic media, data conversion of computer programs and data, not physical conversion; rental of web servers, computer rental, rental of computer software, consultancy services in the field of design and development of computer hardware; conducting technical project feasibility studies, product research and development for others; scientific and technological services, namely, research and design in the field of computer networking hardware; industrial research in the field of telecommunications; industrial analysis, namely, product failure analysis services |
| Section 2(f) Limitation Statement | As to "TELEFONICA" |
| Translation of Words in Mark | The English translation of "TELEFONICA" in the mark is "TELEPHONIC". |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, October 2, 2020 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, October 2, 2020 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, October 2, 2020 |
| Primary Code | 038 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, October 2, 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, October 2, 2020 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Telefonica, S.A. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Madrid 28013 ES |
| Party Name | Telefonica, S.A. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Madrid 28013 ES |
| Party Name | Telefonica, S.A. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Madrid 28013 ES |
| Event Date | Event Description |
| Friday, October 2, 2020 | CANCELLED SEC. 8 (6-YR) |
| Monday, February 25, 2019 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Friday, August 15, 2014 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, February 25, 2014 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, December 10, 2013 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, December 10, 2013 | PUBLISHED FOR OPPOSITION |
| Wednesday, November 20, 2013 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Friday, November 1, 2013 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Thursday, October 31, 2013 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, October 31, 2013 | EXAMINER'S AMENDMENT ENTERED |
| Thursday, October 31, 2013 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Thursday, October 31, 2013 | EXAMINERS AMENDMENT E-MAILED |
| Thursday, October 31, 2013 | EXAMINERS AMENDMENT -WRITTEN |
| Wednesday, October 30, 2013 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Wednesday, October 30, 2013 | FINAL REFUSAL E-MAILED |
| Wednesday, October 30, 2013 | FINAL REFUSAL WRITTEN |
| Wednesday, October 9, 2013 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, October 8, 2013 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, October 8, 2013 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, July 11, 2013 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, July 11, 2013 | NON-FINAL ACTION E-MAILED |
| Thursday, July 11, 2013 | NON-FINAL ACTION WRITTEN |
| Wednesday, July 10, 2013 | DATA MODIFICATION COMPLETED |
| Wednesday, July 10, 2013 | ASSIGNED TO LIE |
| Wednesday, June 19, 2013 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, June 18, 2013 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, June 18, 2013 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, April 5, 2013 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Friday, April 5, 2013 | NON-FINAL ACTION E-MAILED |
| Friday, April 5, 2013 | NON-FINAL ACTION WRITTEN |
| Thursday, April 4, 2013 | ASSIGNED TO EXAMINER |
| Tuesday, January 8, 2013 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
| Saturday, December 22, 2012 | NEW APPLICATION ENTERED IN TRAM |