| Serial Number | 85668243 |
| Word Mark | TRUSTED RESULTS. TRANSFORMATIVE TECHNOLOGY. |
| Filing Date | Tuesday, July 3, 2012 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Friday, July 2, 2021 |
| Registration Number | 4645558 |
| Registration Date | Tuesday, November 25, 2014 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, May 28, 2013 |
| Goods and Services | Educational training in the field of human resources, payroll time and attendance, and employee appointment scheduling and employee benefits administration; educational services, namely, conducting in-person and online classes, seminars, conferences, and human resources workshops, and distributing course materials in connection therewith, in the fields of human resources, payroll, time, and attendance, and employee appointment scheduling and employee benefits administration; providing information via the Internet for employers and employees and their families relating to family matters, namely, information in the field of parenting concerning education of children |
| Goods and Services | Computer software for use in performance management, employee and task scheduling, management, reporting and analyses all for maintaining and evaluating personnel records; computer software for use in human resources management; computer software for use in payroll processing, and for use in employee information management; Computer software and manuals distributed therewith in the field of human resources, namely, software for use by employers and employees in managing and processing information relating to employment, payroll, payroll checks, payroll taxes, funds transfers, wage disbursements, benefits, time and attendance, recruiting, and training in the aforementioned fields; computer software and manuals distributed therewith designed for use in searching for elder care facilities and services; computer software for use in providing legal and regulatory compliance information relating to human resources; prerecorded video tapes, pre-recorded video tapes, audio tapes, and motion picture films featuring topics in human resources; payment authorization and transaction processing terminals; point of sale or service terminals; web enabled electronic commerce systems comprising computer hardware and software for enabling point of sale transactions on a global computer network; Electronic materials, namely, books, magazines, newsletters, press releases, data sheets, and brochures featuring legal and regulatory compliance information, newsletters and reports in the field of human resources, instructional, educational and teaching materials, namely, textbooks, workbooks, user manuals and guides featuring topics in human resources, payroll, time and attendance, and employee scheduling, and employee benefits |
| Goods and Services | Printed materials, namely, books, magazines, newsletters, press releases, data sheets, and brochures featuring legal and regulatory compliance information; newsletters and printed reports in the field of human resources; printed instructional, educational and teaching materials, namely, textbooks, workbooks, user manuals and guides featuring topics in human resources, payroll, time, and attendance, and employee scheduling, and employee benefits |
| Goods and Services | Financial services provided to employers, namely, issuance of paychecks to employees, transfers of funds, and deposits to accounts with respect to payroll and payroll disbursements, payroll taxes, payroll deductions, unemployment compensation, wage attachments and benefits; payroll tax debiting and crediting services; tax payment processing services, namely, processing federal, state and local payroll withholding taxes and remittance of taxes to the appropriate taxing authorities; administration of employee benefits concerning the determination of enrollment and eligibility for employers and employees relating to employee health insurance, welfare, transportation, education assistance and retirement benefits; providing information via the Internet in the field of human resources, namely, information relating to employee compensation, payroll tax payment processing, payroll tax debiting services, tax payment processing services, fund transfers, financial counseling, and employee benefits concerning insurance and finance; providing information via the Internet for employers and employees and their families, namely, information in the field of financial planning |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Payroll tax preparation and filing services; payroll processing services; services for wage payroll preparation, namely, payroll checks including withholding of employer and employee taxes, pre and post-tax deductions and processing payroll wage attachments on order of a court or government agency and remittance of attached funds to the appropriate recipient; providing information in the field of human resources; providing information via the Internet in the field of human resources, namely, information relating to employment, payroll preparation, talent management, business administration of employee benefit plans, employee time and attendance, scheduling, and recruiting; referrals in the fields of personal health, well-being, nutrition, personal finance, career counseling, personal legal matters, mental health facilities and professionals, substance abuse, concierge services; expatriate services, namely, providing online directory information service featuring information regarding U.S. Consulates and Embassies; providing information in the field of payroll preparation and processing for expatriate; processing of employee life and work event transactions, namely, payroll preparation, employee compensation, talent management, employee time and attendance, scheduling, employees, contingent workers, and recruiting; providing information via the Internet, namely, information regarding payroll preparation in the nature of payroll check administration, wage payroll preparation in the nature of wage attachments and disbursements; providing information via the Internet in the field of human resources, namely, information relating to payroll checks, including withholding of employer and employee taxes, pre and post-tax deductions, wage attachments and disbursements; business data analysis related to human resources |
| Goods and Services | Pre-employment background investigations; Providing legal information in the nature of information on compliance with laws and regulations relating to human resources, payroll time and attendance, and employee scheduling and benefits; providing information via the internet in the field of employment background and drug and/or alcohol screening for employment purposes; Providing information via the Internet in the field of human resources, namely, regulatory compliance |
| Goods and Services | Counseling in the fields of personal health, well being, nutrition, mental health and drug rehabilitation and substance addiction treatment; providing information via the Internet for employers and employees and their families relating to family matters, namely, preventative child health care and parenting concerning the health of children and drug and alcohol awareness |
| Goods and Services | Providing information via the Internet for employers and employees and their families relating to elder care; providing information in the field of child care services and elder care services |
| Goods and Services | Providing on-line non-downloadable software for use in performance management, employee and task scheduling, management, reporting and analyses all for maintaining and evaluating personnel records; providing on-line non-downloadable software for use in human resources management; providing on-line non-downloadable software for use in payroll processing, and for use in employee information management; Providing temporary use of on-line non-downloadable software in the field of human resources, namely, software for use by employers and employees in managing and processing information relating to employment, payroll, payroll checks, payroll taxes, funds transfers, wage disbursements, benefits, time and attendance, recruiting, and training in the aforementioned fields; self-service, namely, providing a website featuring non-downloadable software that enables users to review and update human resources forms and benefits enrollment, and update personal information |
| 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, July 2, 2021 |
| Primary Code | 009 |
| First Use Anywhere Date | Wednesday, January 9, 2013 |
| First Use In Commerce Date | Wednesday, January 9, 2013 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, July 2, 2021 |
| Primary Code | 016 |
| First Use Anywhere Date | Wednesday, January 9, 2013 |
| First Use In Commerce Date | Wednesday, January 9, 2013 |
| 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, July 2, 2021 |
| Primary Code | 035 |
| First Use Anywhere Date | Wednesday, January 9, 2013 |
| First Use In Commerce Date | Wednesday, January 9, 2013 |
| International Class | 036 - Insurance; financial affairs; monetary affairs; real estate affairs. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, July 2, 2021 |
| Primary Code | 036 |
| First Use Anywhere Date | Wednesday, January 9, 2013 |
| First Use In Commerce Date | Wednesday, January 9, 2013 |
| 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, July 2, 2021 |
| Primary Code | 041 |
| First Use Anywhere Date | Wednesday, January 9, 2013 |
| First Use In Commerce Date | Wednesday, January 9, 2013 |
| 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, July 2, 2021 |
| Primary Code | 042 |
| First Use Anywhere Date | Wednesday, January 9, 2013 |
| First Use In Commerce Date | Wednesday, January 9, 2013 |
| International Class | 043 - Services for providing food and drink; temporary accommodations. |
| US Class Codes | 100, 101 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, July 2, 2021 |
| Primary Code | 043 |
| First Use Anywhere Date | Wednesday, January 9, 2013 |
| First Use In Commerce Date | Wednesday, January 9, 2013 |
| International Class | 044 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. |
| US Class Codes | 100, 101 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, July 2, 2021 |
| Primary Code | 044 |
| First Use Anywhere Date | Wednesday, January 9, 2013 |
| First Use In Commerce Date | Wednesday, January 9, 2013 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, July 2, 2021 |
| Primary Code | 045 |
| First Use Anywhere Date | Wednesday, January 9, 2013 |
| First Use In Commerce Date | Wednesday, January 9, 2013 |
| Party Name | CERIDIAN HCM, INC. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | MINNEAPOLIS, MN 55425 |
| Party Name | CERIDIAN HCM, INC. |
| Party Type | 21 - New Owner After Publication |
| Legal Entity Type | 03 - Corporation |
| Address | MINNEAPOLIS, MN 55425 |
| Party Name | Ceridian Corporation |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Minneapolis, MN 55425 |
| Party Name | Ceridian Corporation |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Minneapolis, MN 55425 |
| Event Date | Event Description |
| Wednesday, August 15, 2012 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Friday, July 6, 2012 | NEW APPLICATION ENTERED |
| Wednesday, July 11, 2012 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Sunday, March 31, 2013 | NON-FINAL ACTION E-MAILED |
| Tuesday, October 9, 2012 | ASSIGNED TO EXAMINER |
| Thursday, October 11, 2012 | NON-FINAL ACTION WRITTEN |
| Thursday, October 11, 2012 | NON-FINAL ACTION E-MAILED |
| Thursday, October 11, 2012 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, March 27, 2013 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, March 28, 2013 | ASSIGNED TO LIE |
| Thursday, March 28, 2013 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, March 28, 2013 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Sunday, March 31, 2013 | NON-FINAL ACTION WRITTEN |
| Sunday, March 31, 2013 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, April 24, 2013 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, April 10, 2013 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, April 17, 2013 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, April 17, 2013 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, April 24, 2013 | EXAMINERS AMENDMENT -WRITTEN |
| Wednesday, April 24, 2013 | EXAMINERS AMENDMENT E-MAILED |
| Wednesday, April 24, 2013 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Wednesday, April 24, 2013 | EXAMINER'S AMENDMENT ENTERED |
| Wednesday, April 24, 2013 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Monday, March 17, 2014 | SU - NON-FINAL ACTION - WRITTEN |
| Wednesday, May 8, 2013 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, May 28, 2013 | PUBLISHED FOR OPPOSITION |
| Tuesday, May 28, 2013 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, July 23, 2013 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Wednesday, October 16, 2013 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Wednesday, January 22, 2014 | TEAS STATEMENT OF USE RECEIVED |
| Wednesday, January 22, 2014 | USE AMENDMENT FILED |
| Friday, February 21, 2014 | STATEMENT OF USE PROCESSING COMPLETE |
| Monday, February 17, 2014 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Monday, March 17, 2014 | NON-FINAL ACTION E-MAILED |
| Monday, March 17, 2014 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, November 25, 2014 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, September 17, 2014 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, September 24, 2014 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, September 24, 2014 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, October 20, 2014 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Tuesday, October 21, 2014 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Wednesday, October 22, 2014 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE MAILED |
| Wednesday, November 19, 2014 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Tuesday, September 4, 2018 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Wednesday, February 27, 2019 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, February 27, 2019 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, July 23, 2020 | REVIEW OF CORRESPONDENCE COMPLETE - ADDRESS UPDATED |
| Tuesday, November 24, 2015 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Tuesday, November 24, 2015 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, August 11, 2016 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Wednesday, May 16, 2018 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Monday, November 25, 2019 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Friday, June 5, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, July 4, 2024 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Friday, July 2, 2021 | CANCELLED SEC. 8 (6-YR) |