| Serial Number | 87269968 |
| Word Mark | TRANSURBAN |
| Filing Date | Thursday, December 15, 2016 |
| Status | 705 - PARTIAL SECTION 8 & 15 ACCEPTED AND ACKNOWLEDGED |
| Status Date | Monday, December 16, 2024 |
| Registration Number | 5516556 |
| Registration Date | Tuesday, July 17, 2018 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, May 1, 2018 |
| Goods and Services | [ Computer hardware and computer software for managing the operation of road toll systems; downloadable software applications for managing the operation of road toll systems and for payment of road tolls; computer hardware and computer software for operating electronic road, bridge and tunnel toll systems and for facilitating the payment of goods and services; computer hardware and computer software that provides functionality in the areas of managing customer relationships, fulfilling customer requirements, managing retail products and services, customer revenue management, managing retail operations, managing data interchange, managing interoperability, identifying, constructing and rating asset usage, managing alarms associated with asset equipment, managing enforcement, monitoring of the network that connects the roadside equipment to the central site, and financial management; apparatus and instruments for recording, transmitting, reception, processing, retrieval, reproduction, manipulation, analyse, display and print out of data; computer equipment and apparatus, namely, electronic toll transponder readers, detectors and operating systems for electronic road, bridge and tunnel toll systems, all for facilitating the payment of goods and services, namely, electronic road, bridge and tunnel toll systems; telecommunications and communication equipment and apparatus, namely, license plate recognition cameras and systems comprising cameras, which facilitate tracking, monitoring and detection of motor vehicle license plates and toll transponders; electronic devices that transmit and receive information through electronic signals to facilitate the payment of goods and services; electronic apparatus for controlling toll points; electric and electronic devices, namely, in vehicle transponder devices; electric apparatus for use in parking control; parking meters; electronic publications, namely, public announcements, information sheets, brochures, toll road documents and articles in the field of road tolls, for use by others; electric and electronic devices and apparatus, namely, electronic toll transponders that transmit and receive information through electronic signals relating to vehicle identification, payment of charges and fees including road tolls, installed in motor vehicles; blank smart cards, encoded smart cards containing programming used for payment of road tolls and for use in financial transactions, magnetic coded cards for use in financial transactions, electronic tags for vehicles, RFID tags, and electronic card readers for the foregoing; electrical control devices for the foregoing, traffic control and guidance apparatus, electronic, luminous or mechanical road signs; software tools for invoice analysis; all associated parts, accessories and fittings for the aforementioned ] |
| Goods and Services | [ Road signs, non-luminous and non-mechanical of metal; metal bollards and barricades for roads; metal traffic control ramps and speed bumps; toll metal gates and car park metal gates, electronic or coin-operated ] |
| Goods and Services | [ Vehicle parking services, namely, pay to park services; Consultancy services in the field of vehicle parking; Transportation infrastructure consulting services; Transportation consulting services; Organisation of motor vehicle parking and storage facilities; ] Operation of toll road, namely, transportation services, namely, providing private highways for others; [ information, consultancy and advisory services in relation to the aforementioned services; ] Transportation information services in the field of private and commercial transportation, and road [ , bridge and tunnel ] toll systems, including information provided on-line, namely, providing transportation information and information regarding driving alerts, traffic data and road safety conditions |
| Pseudo Mark | TRANS URBAN |
| Goods and Services | Operation of toll road, namely, construction, maintenance and repair of roads, highways, [ highway guide rails, highway signs, pedestrian walkways, overpasses, service areas, rest areas, commuter parking lots, toll booths, ] toll collection equipment and toll collection facilities |
| Goods and Services | [ Clothing, namely, shirts, jackets and trousers; Footwear and headgear, namely, hats, caps and visors ] |
| Goods and Services | Financial services, namely, collection and electronic collection of road toll fees; Financial information and advisory services; Payment processing services, namely, facilitating the payment of goods or services; Merchant services, namely, payment transaction processing services; Facilitating the payment of goods and services through the use of electronic devices; Credit services, namely, charge card and credit card payment processing services for road toll payments; Banking services; Road toll systems information services; Consulting services in the field of road toll systems; Financial consultancy services in the area of road toll systems and electronic payment systems; Financial transaction services, namely, providing secure commercial transactions and payment options; Electronic funds transfer services; Electronic commerce payment services, namely, providing a remote transponder device that allows road vehicles to effect payment; Financial services, namely, carbon trading; Carbon brokerage services; Brokerage of carbon credits; Brokerage of carbon offsets; Provision of carbon emissions trading programs; Information, consultancy and advisory services in relation to the aforementioned services; Operation of toll road, namely, highway toll collection services; Provision of information services concerning all of the aforementioned |
| Goods and Services | [ Advertising and promotional services and information services relating thereto; Compilation of advertisements for use as web pages on the Internet; Appraisal and consultancy services in the field of advertising, marketing, and promotions; Providing information regarding advertising, marketing and promotions; ] Promoting the sales of electronic toll programs through the administration of incentive and loyalty award programs; Market research services; Providing statistical information for commercial purposes; Business information services provided via on-line from a computer database or the Internet; Compilation and provision of business and commercial information; [ Business services, namely, facilitating the ordering of goods from computer databases or the Internet; Providing consulting services in the area of e-commerce business solutions; Business consultancy; Business management of motor vehicles parking and storage facilities; Business management of car park toll and payment facilities; Procurement services, namely, procurement of contracts for the operation of toll roads for others; information, consultancy and advisory services in relation to the aforementioned services; ] Business operation of road toll systems; Providing business information services in the field of [ private and commercial transportation, and ] road [ , bridge and tunnel ] toll systems, including information provided on-line[ ; Business operation and management of motor vehicle parking and storage facilities; Business operation and management of car park toll and payment facilities ] |
| Goods and Services | Accident investigation and reporting; traffic flow and monitoring services being surveillance of vehicles under gantries |
| Goods and Services | Transport infrastructure consulting services, namely, technological consultation in the technology field of traffic and transportation systems, traffic and transportation engineering, architectural design services in the field of traffic and transportation, providing quality assurance services in the field traffic and transportation; road toll system consulting services, namely, technological consultation in the technology field of road toll systems, road toll systems engineering, architectural design services in the field of road toll systems, [ providing quality assurance services in the field road toll systems; ] computerized storage and retrieval of business and commercial information; computer software design; installation, maintenance and updating of computer software for electronic road, [ bridge, tunnel and car park ] toll systems all for facilitating the payment of goods and services; computer system design; consultancy in the field of computer hardware and software; [ provision of non-downloadable software including software for electronic road, bridge, tunnel and car park toll systems all for facilitating the payment of goods and services; hosting software as a service (SAAS) including software for electronic road, bridge, tunnel and car park toll systems all for facilitating the payment of goods and services; platform as a service (PAAS) services including software platforms for electronic road, bridge, tunnel and car park toll systems all for facilitating the payment of goods and services; designing and hosting web portals for others, including web portals for electronic road, bridge, tunnel and car park toll systems all for facilitating the payment of goods and services; ] engineering services in the field of accident investigation and consulting services in the fields of forensic science for accident investigations [ ; information, consultancy and advisory services in relation to the aforementioned services ] |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, December 21, 2016 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 036 - Insurance; financial affairs; monetary affairs; real estate affairs. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, December 21, 2016 |
| Primary Code | 036 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, December 21, 2016 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, December 21, 2016 |
| Primary Code | 039 |
| 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 | Wednesday, December 21, 2016 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 045 - Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, December 21, 2016 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 006 - Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; nonelectric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores. |
| US Class Codes | 002, 012, 013, 014, 023, 025, 050 |
| Class Status Code | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Monday, December 16, 2024 |
| Primary Code | 006 |
| 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 | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Monday, December 16, 2024 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 025 - Clothing, footwear, headgear. |
| US Class Codes | 022, 039 |
| Class Status Code | B - Sec. 8 - Class(es) in a Multiple Class registration |
| Class Status Date | Monday, December 16, 2024 |
| Primary Code | 025 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | TRANSURBAN LIMITED |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Docklands, VIC 3008 AU |
| Party Name | TRANSURBAN LIMITED |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | Docklands, VIC 3008 AU |
| Party Name | TRANSURBAN LIMITED |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | Docklands, VIC 3008 AU |
| Event Date | Event Description |
| Monday, December 19, 2016 | NEW APPLICATION ENTERED |
| Monday, February 13, 2017 | NON-FINAL ACTION WRITTEN |
| Wednesday, August 30, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, December 21, 2016 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, December 22, 2016 | NOTICE OF PSEUDO MARK E-MAILED |
| Friday, February 10, 2017 | ASSIGNED TO EXAMINER |
| Monday, February 13, 2017 | NON-FINAL ACTION E-MAILED |
| Monday, February 13, 2017 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, August 10, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, August 29, 2017 | ASSIGNED TO LIE |
| Wednesday, August 30, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, April 11, 2018 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, May 1, 2018 | PUBLISHED FOR OPPOSITION |
| Tuesday, May 1, 2018 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, July 17, 2018 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, March 7, 2023 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Tuesday, March 7, 2023 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Thursday, October 5, 2017 | FINAL REFUSAL WRITTEN |
| Thursday, October 5, 2017 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Thursday, October 5, 2017 | FINAL REFUSAL E-MAILED |
| Thursday, March 22, 2018 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Thursday, March 22, 2018 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, March 23, 2018 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Sunday, March 25, 2018 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, March 7, 2023 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, March 7, 2023 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, March 7, 2023 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Monday, July 15, 2024 | TEAS SECTION 8 & 15 RECEIVED |
| Monday, December 16, 2024 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Monday, December 16, 2024 | REGISTERED - PARTIAL SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Monday, July 17, 2023 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Monday, December 16, 2024 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED |