| Serial Number | 79182970 |
| Word Mark | THE WORLD UNIVERSITY RANKINGS |
| Filing Date | Monday, October 19, 2015 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, January 5, 2024 |
| Registration Number | 5225192 |
| Registration Date | Tuesday, June 20, 2017 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, April 4, 2017 |
| Goods and Services | Education services, namely, providing seminars, classes, workshops, panel discussions, lectures, conferences, fairs in the field of early, primary, secondary or higher education, university rankings, training, advertising, personnel recruitment, education recruitment and career guidance; information relating to education, provided on-line from a computer database or the internet; organizing sporting and cultural activities, namely, sports and athletic competitions, contests, exhibitions, cultural shows, film festivals; organisation of events for educational purposes; Educational services, namely, organizing and conducting of conferences, seminars, workshops, college recruitment events featuring information about colleges and universities, educational fairs in the field of early, primary, secondary or higher education, university rankings, training, advertising, personnel recruitment, education recruitment and career guidance; providing of training in relation to personal development, namely, training services for personal career development in the field of early, primary, secondary or higher education; vocational guidance; publication of electronic publications, namely, electronic magazines and newsletters; educational testing services, namely, skills and abilities assessment; provision of education services via an online forum, namely, provision of information and advice relating to educational establishments, jobs and careers; provision of information and advice relating to educational and entertainment news and events; Providing educational assessment services, namely, evaluation services and evaluation of performance of universities against bench-mark references, both for the purpose of providing information in relation to higher education; educational services, namely, conducting surveys of academics in higher education for the purpose of providing rankings; educational services, namely, conducting surveys of students in higher education for the purposes of providing information in relation to higher education; provision of information relating to universities, educational courses; information, advisory and consultancy services relating to all the aforesaid services; all of the aforementioned in the fields early, primary, secondary or higher education or education recruitment |
| Description of Mark | The mark consists of the word "THE" with the letter "T" in red, "H" in purple, and "E" in blue to the left of three horizontal rectangles, the top rectangle being red and containing the word "WORLD", the middle rectangle being purple and containing the word "UNIVERSITY", and the bottom rectangle being blue and containing the wording "RANKINGS". The color white in the mark represents transparency and is not claimed as a feature of the mark. |
| Goods and Services | Computer programs for use in providing access to computer networks, use in searching and retrieving information related to early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance, use in database management for university rankings, use as a spread sheet, word processing; computer software for use in providing access to computer networks, use in searching and retrieving information related to early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance, use in database management, use as a spread sheet, word processing; computer software for providing access to information from a variety of sources; storage media and devices, namely, external computer hard drives, blank electronic storage media, blank USB flash drives, blank tapes for storage of computer data; downloadable databases in the field of early, primary, secondary or higher education, university rankings, training, advertising, personnel recruitment, education recruitment career guidance, university rankings; data networks, namely, LAN (local area network) hardware, LAN (local area network) access points for connecting network computer users, Wide area network (WAN) routers; data banks, namely, downloadable databases in the field of early, primary, secondary or higher education, university rankings, training, advertising, personnel recruitment, education recruitment, career guidance; data storage media, namely, external computer hard drives, electronic storage device in the nature of memory media for storing information related to early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance, blank digital storage media, blank electronic storage media; computer software for creating searchable databases of information and data; multimedia programs, namely, interactive multimedia computer programs for use in providing access to computer networks, use in searching and retrieving information related to early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance, use in database management for university rankings, use as a spread sheet, word processing; software for use in the fields of education and recruitment, namely, software for use in providing access to computer networks, use in searching and retrieving information related to early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance, use in database management, use as a spread sheet, word processing; software for use in relation to posting a job vacancy, managing job applications, assessing candidates, collecting feedback and approval; software for use in relation to measuring the effectiveness of recruitment and advertising; downloadable electronic and computerised written articles, books, directories and teaching and instructional materials, manuals, newsletters, periodicals, publications in the nature of journals, booklets and magazines all related to subject areas taught at the early, primary, secondary, college and university level, research guides and educational material all in the field of early, primary, secondary or higher education or education recruitment; all of the aforementioned in the fields of early, primary, secondary or higher education or education recruitment |
| Goods and Services | Provision of online forums for early, primary, secondary or higher education, world university rankings, training, advertising, personnel recruitment, education recruitment and career guidance and access to online global computer networks; streaming of audio and visual material on the Internet; Telecommunication services, namely, transmission of documents, messages, images, text, audio and data in the field of early, primary, secondary or higher education, world university rankings, training, advertising, personnel recruitment, education recruitment career guidance by computer terminals and electronic devices; online interactive electronic bulletin and message board services; data streaming; data transcription; electronic data exchange, namely, electronic exchange of data stored in databases accessible via telecommunication networks; electronic data interchange; electronic data transmission; electronic data communications, namely, data communication by electronic mail; electronic transmission and retransmission of sounds, images, documents, messages and data; transmission of data, audio, video and multimedia files, including downloadable files and files streamed over a global computer network; all of the aforementioned in the fields of early, primary, secondary or higher education or education recruitment |
| Goods and Services | Printed matter, namely, a series of written articles, directories, publications in the nature of journals and magazines, printed periodicals, research guides, teaching and instructional materials, paper signs, books, manuals, curricula, newsletters in the field of early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; printed written articles in the field of early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; printed publications, namely, a series of written articles, directories, publications in the nature of journals and magazines, printed periodicals, research guides, teaching and instructional materials, paper signs, books, manuals, curricula, newsletters, brochures in the field of early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; magazines featuring early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; newsletters in the field of early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; manuals in the field of early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; directories of institutions related to early, primary, secondary or higher education; books in the field of early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; printed periodicals in the field of early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; printed research guides for early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; printed instructional and teaching material except apparatus in the field of early, primary, secondary or higher education, advertising, personnel recruitment, education recruitment, career guidance and university rankings; all of the aforementioned in the fields of early, primary, secondary or higher education or education recruitment |
| Section 2(f) Limitation Statement | as to "THE" |
| Indication of Colors claimed | The color(s) red, purple and blue is/are claimed as a feature of the mark. |
| Goods and Services | Advertising services; business management; business information services, namely, providing business information in the field of early, primary, secondary or higher education, personnel recruitment, education recruitment, career guidance, employment information, job resources and listings, job fairs and resumes, providing information on business; administrative data processing services; data processing services; data management services, namely, analyzing and compiling business data in the field of early, primary, secondary or higher education, university rankings, training, advertising, personnel recruitment, education recruitment and career guidance; data processing services for business; computerised data processing services; collection of data, namely, electronic data collection services for business purposes in the field of early, primary, secondary or higher education, university rankings, training, advertising, personnel recruitment, education recruitment and career guidance; systematization, collating and compilation of business data in computer databases; collection and systematization of business data, namely, electronic data collection services for business purposes in the field of early, primary, secondary or higher education, university rankings, training, advertising, personnel recruitment, education recruitment and career and systemization of information into computer databases; compilation of statistical data relating to business in the field of early, primary, secondary or higher education, university rankings, training, advertising, personnel recruitment, education recruitment and career guidance; provision of information relating to jobs and careers; consumer, business and commercial research; publicity services, namely, publicity agency services, publicity consultation; employment agencies; personnel recruitment services; personnel recruitment services including facilitating the posting of job vacancies, the management of job applications, the assessment of candidates, the collection of feedback and approval, and the measurement of the effectiveness of recruitment and advertising; career guidance, namely, career planning services, providing career information; arranging trade fairs for commercial and advertising purposes; assistance and advice relating to business management and business administration of schools and educational institutions; information, advisory and consultancy services relating to all the aforesaid services; all of the aforementioned in the fields of early, primary, secondary or higher education or education recruitment; providing of consulting in relation to personal development, namely, consulting services for personal career development in the field of early, primary, secondary or higher education |
| NOT AVAILABLE | "WORLD UNIVERSITY RANKINGS" |
| Goods and Services | Electronic data storage; computerised electronic data storage; development of databases; development of data programs, namely, data processing programs used in the field of early, primary, secondary or higher education, university rankings, training, advertising, personnel recruitment, education recruitment career guidance; custom design of software packages comprised of computer software; Hosting of digital content on the Internet in the nature of computerized data, files, applications and information; hosting of websites and weblogs in the field of education; providing temporary use of online non-downloadable computer software for creating and publishing blogs in the field of education; providing temporary use of online non-downloadable computer software for creating and managing online discussion forums in the field of education; providing temporary use of online non-downloadable computer software for uploading and downloading documents, guides, articles and materials relating to education; all of the aforementioned in the fields of early, primary, secondary or higher education or education recruitment |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, January 5, 2024 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, January 5, 2024 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, January 5, 2024 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, January 5, 2024 |
| Primary Code | 035 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, January 5, 2024 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, January 5, 2024 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | The World Universities Insights Limited |
| Party Type | 32 - New Owner After Registration |
| Legal Entity Type | 24 - NOT AVAILABLE |
| Address | GB |
| Party Name | The World Universities Insights Limited |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Party Name | TES Global Limited |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Party Name | TES Global Limited |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Party Name | TES Global Limited |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Event Date | Event Description |
| Wednesday, February 24, 2016 | NON-FINAL ACTION WRITTEN |
| Thursday, February 25, 2016 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Thursday, February 25, 2016 | REFUSAL PROCESSED BY MPU |
| Friday, February 19, 2016 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Monday, February 22, 2016 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, February 22, 2016 | ASSIGNED TO EXAMINER |
| Thursday, February 25, 2016 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Wednesday, June 15, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, July 6, 2016 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Friday, February 26, 2016 | APPLICATION FILING RECEIPT MAILED |
| Friday, March 11, 2016 | REFUSAL PROCESSED BY IB |
| Wednesday, June 15, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, June 16, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, July 6, 2016 | FINAL REFUSAL WRITTEN |
| Wednesday, July 6, 2016 | FINAL REFUSAL E-MAILED |
| Thursday, February 2, 2017 | EXAMINER'S AMENDMENT/PRIORITY ACTION E-MAILED |
| Friday, January 6, 2017 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Friday, January 6, 2017 | EXPARTE APPEAL RECEIVED AT TTAB |
| Friday, January 6, 2017 | JURISDICTION RESTORED TO EXAMINING ATTORNEY |
| Friday, January 6, 2017 | EX PARTE APPEAL-INSTITUTED |
| Wednesday, January 25, 2017 | ASSIGNED TO LIE |
| Wednesday, February 1, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, February 1, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, February 2, 2017 | EXAMINERS AMENDMENT AND/OR PRIORITY ACTION - COMPLETED |
| Thursday, February 2, 2017 | COMBINED EXAMINER'S AMENDMENT/PRIORITY ACTION AUTOMATIC ENTRY |
| Thursday, February 2, 2017 | NOTIFICATION OF EXAMINER'S AMENDMENT/PRIORITY ACTION E-MAILED |
| Tuesday, February 7, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, April 4, 2017 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, February 7, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, February 8, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, February 14, 2017 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, February 14, 2017 | EXPARTE APPEAL TERMINATED |
| Monday, February 27, 2017 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, March 15, 2017 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, April 4, 2017 | PUBLISHED FOR OPPOSITION |
| Tuesday, June 20, 2017 | REGISTERED-PRINCIPAL REGISTER |
| Thursday, August 30, 2018 | NEW REPRESENTATIVE AT IB RECEIVED |
| Thursday, February 28, 2019 | CHANGE OF OWNER RECEIVED FROM IB |
| Sunday, May 9, 2021 | NEW REPRESENTATIVE AT IB RECEIVED |
| Friday, January 5, 2024 | CANCELLED SECTION 71 |
| Wednesday, September 20, 2017 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Monday, September 25, 2017 | FINAL DISPOSITION PROCESSED |
| Monday, September 25, 2017 | FINAL DISPOSITION NOTICE SENT TO IB |
| Saturday, October 28, 2017 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, June 20, 2022 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Friday, September 6, 2024 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Wednesday, September 11, 2024 | INVALIDATION PROCESSED |
| Sunday, September 29, 2024 | TOTAL INVALIDATION PROCESSED BY THE IB |
| Friday, December 27, 2024 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Wednesday, September 11, 2024 | TOTAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |