| Serial Number | 79096586 |
| Word Mark | TOTARA |
| Filing Date | Thursday, February 24, 2011 |
| Status | 706 - SECTION 71 ACCEPTED |
| Status Date | Monday, March 7, 2022 |
| Registration Number | 4173461 |
| Registration Date | Tuesday, July 17, 2012 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, May 1, 2012 |
| Goods and Services | Education and training in the fields of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety offered through workshops, classes, correspondence courses, seminars, conferences, lectures, and electronic training and electronic learning programs; design and provision of training programs in the fields of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety; provision of self-directed work-based learning programs in the fields of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety; provision of on-line electronic publications, namely, textbooks, course books, training manuals, lecture notes and materials, periodicals and newsletters in the fields of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety; arranging, organizing, conduct and provision of workshops, seminars, conferences, colloquiums, lectures, teaching courses, tutorials, courses, podcasts and computer and other electronic device based training in the fields of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety; e-learning, namely, provision of educational and training workshops, classes, correspondence courses, seminars, conferences, lectures, and electronic training and electronic learning programs offered through audio conference, video conference, computer networks, communications networks, and multi-media storage devices in the field of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety; provision of online electronic material for e-learning, namely, non-downloadable electronic publications in the nature of textbooks, course books, training manuals, lecture notes and materials, periodicals in the fields of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety; delivery of online courses, namely, providing a web site featuring on-line courses of instruction in the fields leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety; development of learning objects and multimedia content for online courses in the field of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety; providing a website featuring resources, namely, a website featuring non-downloadable audio-visual publications in the nature of textbooks, course books, training manuals, lecture notes and materials, periodicals, non-downloadable sound recordings, non-downloadable video recordings, non-downloadable instructional and teaching materials in the fields of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety, all accessed via a communications or computer network; correspondence courses in the fields of leadership skills, management skills, compliance skills, sales and customer service skills, new employee initiation and orientation, employee training, career development, business policies and procedures, business management, business improvement, business administration, legal issues pertaining to business operation, and workplace safety; organization of business skills competitions and game quizzes for educational purposes; provision of educational services, namely, assessments, instruction and training for improving the performance of organizations and individuals within organizations through e-learning and knowledge technology |
| Goods and Services | Software for skills assessment, job performance assessment, and skills and business training for use in connection with e-learning and online training; educational and instructional CD-ROMs, CDs and DVDs all for use in connection with e-learning and online training; software for skills assessment, job performance assessment, and skills and business training for use in the field of improving the performance of organizations and individuals within organizations through e-learning, training and education; educational and instructional CD-ROMs, CDs and DVDs, all for use in the field of improving the performance of organizations and individuals within organizations through e-learning, training and education; vocational and educational software for skills assessment, job performance assessment, and skills and business training for improving the performance of organizations and individuals within organizations through business related e-learning, training and education in the areas of career development, leadership skills, management skills, compliance skills, sales and customer service skills; vocational and educational CD-ROMs, CDs and DVDs featuring training and education in the areas of career development leadership skills, management skills, compliance skills, sales and customer service skills for use in improving the performance of organizations and individuals within organizations |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| 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, May 20, 2011 |
| Primary Code | 009 |
| 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, May 20, 2011 |
| Primary Code | 041 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Totara Learning Solutions Limited |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | Te AroWellington 6011 NZ |
| Party Name | Kineo Limited |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Party Name | Kineo Limited |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Party Name | Kineo Limited |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Event Date | Event Description |
| Thursday, May 19, 2011 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Friday, May 20, 2011 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, May 24, 2011 | APPLICATION FILING RECEIPT MAILED |
| Friday, May 27, 2011 | ASSIGNED TO EXAMINER |
| Friday, May 27, 2011 | NON-FINAL ACTION WRITTEN |
| Saturday, May 28, 2011 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Tuesday, May 31, 2011 | REFUSAL PROCESSED BY MPU |
| Tuesday, May 31, 2011 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Saturday, June 18, 2011 | REFUSAL PROCESSED BY IB |
| Wednesday, November 30, 2011 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, December 8, 2011 | ASSIGNED TO LIE |
| Tuesday, December 13, 2011 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, December 13, 2011 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, January 6, 2012 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Monday, January 9, 2012 | FINAL REFUSAL WRITTEN |
| Monday, January 9, 2012 | FINAL REFUSAL E-MAILED |
| Monday, January 9, 2012 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Monday, February 27, 2012 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Monday, February 27, 2012 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, March 1, 2012 | TEAS VOLUNTARY AMENDMENT RECEIVED |
| Monday, March 12, 2012 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, March 12, 2012 | PRELIMINARY/VOLUNTARY AMENDMENT - ENTERED |
| Tuesday, March 27, 2012 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, March 27, 2012 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, April 11, 2012 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, April 11, 2012 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, April 11, 2012 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Tuesday, May 1, 2012 | PUBLISHED FOR OPPOSITION |
| Tuesday, May 1, 2012 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, July 17, 2012 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, October 17, 2012 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Thursday, October 18, 2012 | FINAL DISPOSITION PROCESSED |
| Thursday, October 18, 2012 | FINAL DISPOSITION NOTICE SENT TO IB |
| Sunday, November 4, 2012 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Saturday, December 1, 2012 | NOTIFICATION PROCESSED BY IB |
| Friday, July 19, 2013 | CHANGE OF OWNER RECEIVED FROM IB |
| Friday, August 2, 2013 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Monday, July 17, 2017 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Tuesday, July 10, 2018 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, July 10, 2018 | TEAS SECTION 71 RECEIVED |
| Monday, August 6, 2018 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Monday, August 6, 2018 | REGISTERED-SEC.71 ACCEPTED |
| Monday, August 6, 2018 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Thursday, March 18, 2021 | INTERNATIONAL REGISTRATION RENEWED |
| Saturday, July 17, 2021 | COURTESY REMINDER - SEC. 71 (10-YR) E-MAILED |
| Wednesday, August 11, 2021 | TEAS SECTION 71 RECEIVED |
| Tuesday, October 26, 2021 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Friday, March 4, 2022 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Monday, March 7, 2022 | REGISTERED-SEC.71 ACCEPTED |
| Monday, March 7, 2022 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Tuesday, July 19, 2022 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Tuesday, July 19, 2022 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, July 19, 2022 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, July 19, 2022 | TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS |
| Friday, November 8, 2024 | NEW REPRESENTATIVE AT IB RECEIVED |