| Serial Number | 86303723 |
| Word Mark | WOLTERS KLUWER |
| Filing Date | Monday, June 9, 2014 |
| Status | 702 - SECTION 8 & 15 - ACCEPTED AND ACKNOWLEDGED |
| Status Date | Thursday, August 10, 2023 |
| Registration Number | 4763236 |
| Registration Date | Tuesday, June 30, 2015 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, April 14, 2015 |
| Goods and Services | Publishing services, namely, publishing of bulletins, books, magazines, journals, brochures, manuals, newsletters, guides and reports in the field of statutes, case law and regulations for government entities; Publishing of books, treatises, and articles, for academics, accountants, lawyers, business professionals, tax professionals, medical and health professionals, and human resources professionals; Online publication of bulletins, books, magazines, journals, brochures, manuals, newsletters, guides and reports in the fields of law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services; Providing a website featuring non-downloadable publications, videos, webcasts, and course materials, namely, tests, via websites all in the fields of law and business; Providing training and webinars on the use of software and databases; Providing training and education classes and webcasts in the fields of legal and business research; educational services, namely, providing medical and patient educational seminars, courses, classes, intellectual exchanges, and presentations to physicians and consumers by means of an integrated on-line network via the internet; education seminars on the topic of business management; educational services, namely, providing live and video, audio, on-line workshops and courses for preparation for the bar examination; educational conferences in the field of healthcare |
| Goods and Services | Online searchable databases featuring pharmaceutical technical information in the field of pharmaceutical manufacturing for professionals in the pharmaceutical industry |
| Goods and Services | Application software used for accessing or retrieving state, federal, and international laws, regulations, information, and data in the fields law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services for use on mobile devices; downloadable computer software used for accessing or retrieving state, federal, and international laws, regulations, information, and data in the fields law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services; downloadable computer software for tax preparation; downloadable electronic filing software programs for insurance agent licensing, for preparation of and filing of multi-jurisdictional documents, for electronic ordering of documents, for report generation, and for filing federal and state income tax returns, as well as sales-tax, use-tax, and other tax-form, legal-form, and financial-form filing computer programs; downloadable electronic publications, namely, books, journals, periodicals, and magazines in the fields law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services; computer application software for mobile devices, namely, software for displaying electronic publications; computer software for processing mortgage, loan, deposit account, and retirement account applications; computer software that allows user to generate forms relating to loans, saving accounts, checking accounts, health savings accounts, certificates of deposit, and retirement accounts |
| Goods and Services | Electronic transmission of documents and forms to parties in the real estate field for use in real estate sales transactions by means of a global computer information network; electronic transmission of documents between attorneys and courts via computer; providing access to computer databases for corporate filing information and corporate records management; Providing on-line chat rooms, message boards, and questions and answer forums for transmission of messages among computer users concerning banking, loans and deposit transactions, retirement plans and accounts, and data privacy and operational requirements for financial service providers, e-mail notification and forwarding services; communication by computer terminals, namely, electronic transmission of data, messages, and documents via computer terminals |
| Goods and Services | Pamphlets, newsletters, magazines, journals, loose-leaf publication papers, soft-cover and hard-cover books, topical reports, printed guides, manuals, and bulletins, all in the fields of law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services |
| Goods and Services | Providing a website for finance and insurance professionals featuring information and on-line searchable electronic databases in the fields of tax payment processing services, finance, insurance, and insurance case management; Providing an online computer database designed to enable users to research, retrieve, and locate documents with reference to filings to a securities and exchange commission in the fields of tax payment processing, finance, insurance, and insurance case management; Calculating and providing personalized financial information via a controlled access subscriber service for professional financial providers rendered via a global computer network; Providing an online computer research database for insurance and financial professionals featuring information about insurance agencies; providing information via a global computer network in the field of finance, namely, providing mortgage lenders with the on-line means of retrieving current compliance information about licensing requirements, escrow payment responsibilities, recording requirements, assignments, fees, foreclosures, security agreements, disclosure requirements, record requirements, record retention and avoidance of predatory lending practices; providing an on-line computer website that facilitates refund anticipation loans for auto dealer customers; electronic loan preparation services; Financial management and financial consulting services, namely, compliance in the financial services industries; Compliance consulting services concerning financial requirements for the financial services industries; Providing a database for monitoring and generating reports on financial information for the financial services industries; Providing a web site that assists financial professionals in the management of retirement accounts; Providing a secured access database through which documents and images can be viewed, copied, and printed for purposes of conducting financial transactions; providing an online computer database in the field of financial management; providing an interactive website featuring information in the field of mortgage processing; Financial information provided by electronic means; Financial information processing; Financial research and information services; Providing financial information; Financial risk management |
| Goods and Services | Internal and external business auditing; consults in the field of commercial risk management; Business information services in the field of business contracts, business finances, business governance and corporate filings, business taxes, accounting and auditing, business knowledge management and business management of human resources, internal and external auditing, and commercial risk management; Electronic tax filing services; Computer services, namely, providing a database featuring information in the field of tax assessments, tax preparation, tax legislation, tax forms, and tax planning for use in research; providing a website featuring information in the fields of tax consultation, accounting, human resources, business consultation, corporate-management assistance services, and business-case management; Providing a web site featuring information in the field of human resources; Providing a web site featuring information in the fields of tax consultation, accounting, business consultation, corporate management assistance services, and business case management; Business risk assessment services; Business risk management; Providing a database featuring tax information |
| Goods and Services | Public document filing services; Preparing and filing incorporation papers; Providing an online computer database for insurance professionals featuring state and federal regulatory compliance requirements information about requirements and regulations regarding insurance agency licenses; Providing on-line information and news in the field of law; Providing an interactive website in the field of law; Providing a website featuring information in the fields of law and legal case management; Legal research, namely, trademark law research and trademark searching, watch, clearance, and maintenance, services, provided via a global computer network on a web-based internet trademark research system; Legal services in the nature of providing searches of the Uniform Commercial Code; Computerized general research services for others in trademark legal research; Information services in the field of regulatory compliance in the insurance, banking, environmental, health and medical fields; filing public documents for others in the nature of tax liens, fixture liens, vehicle title liens, judgment liens, court and bankruptcy documents, UCC filings and mortgage recordings; Providing information in the field of regulatory compliance; Legal research; providing databases featuring legal information for legal research; providing a database featuring information in the field of international, federal and state tax laws; providing information for use by health care facility pharmacies in meeting regulatory standards for the storage and inspection of medications and management reporting for same |
| Goods and Services | Medical and health information services; Providing a website for medical and health professionals featuring information in the fields of health, nursing and medicine; online searchable databases featuring pharmaceutical information relating to diagnostic prophylactic and therapeutic properties for professionals in the pharmaceutical industry; providing an on-line computer database featuring pharmaceutical drug information relating to diagnostic, prophylactic and therapeutic properties; online searchable databases featuring medical and health publications |
| Goods and Services | Application service provider (ASP) featuring software for use in tax compliance, tax preparation and tax management; providing search engines for obtaining data from databases containing professional publications, journals, laws, regulations, policies, forms, checklists, case studies, and legal analysis on global computer networks; Providing non-downloadable software designed to enable users to file documents with reference to filings to a securities and exchange commission; Providing temporary use of non-downloadable dynamic linking software online that enables users to link bibliographical database search citations to full text publications in real time via web-based meta data querying; computer information services, namely, providing an interactive website featuring technology that allows users to access computerized bibliographic databases in on-line electronically readable formats; application service provider (ASP) featuring software for managing lien-related documentation and information; searching and retrieving information in the nature of public documents from web sites and other resources available on computer networks for information in the nature of public documents, tax liens, fixture liens, vehicle title liens, judgment liens, court and bankruptcy documents, UCC filings, mortgage recordings, for others; providing temporary use of an on-line non-downloadable software for monitoring and managing corporate governance, risk data and regulatory compliance; application service provider (ASP) featuring software for loan origination, processing, underwriting, and management; application service provider (ASP) services for mortgage professionals featuring computer software that allows users to capture, upload, review, manage, and share documents, data and information; providing use of non-downloadable software for use in database management in the field of mortgage underwriting; providing a secured-access website that gives mortgage professionals the ability to upload, view, copy, print, download, share and manage access to documents and information; providing an online computer website that allows users to store, search, share and manage mortgage documents and records; non-downloadable financial software that analyzes legal expenditures; application services provider featuring software for providing an on-line database in the field of financial transaction processing to upload transactional data, provide statistical analysis, an produce reports; application service provider (ASP) featuring software for use in securities law research; Computer services, namely, cloud hosting provider services; Design, development and implementation of software; providing temporary use of on-line non-downloadable software for tax calculating, preparing and filing |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, June 19, 2014 |
| Primary Code | 038 |
| First Use Anywhere Date | Monday, March 21, 2005 |
| First Use In Commerce Date | Monday, March 21, 2005 |
| International Class | 040 - Treatment of materials. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, January 28, 2015 |
| Primary Code | 040 |
| First Use Anywhere Date | Monday, March 21, 2005 |
| First Use In Commerce Date | Monday, March 21, 2005 |
| 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 | Thursday, June 19, 2014 |
| Primary Code | 009 |
| First Use Anywhere Date | Friday, November 1, 2002 |
| First Use In Commerce Date | Friday, November 1, 2002 |
| 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 | 6 - Active |
| Class Status Date | Thursday, June 19, 2014 |
| Primary Code | 016 |
| First Use Anywhere Date | Saturday, February 28, 1970 |
| First Use In Commerce Date | Saturday, February 28, 1970 |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, June 19, 2014 |
| Primary Code | 035 |
| First Use Anywhere Date | Friday, September 1, 2006 |
| First Use In Commerce Date | Friday, September 1, 2006 |
| 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 | Thursday, June 19, 2014 |
| Primary Code | 036 |
| First Use Anywhere Date | Monday, March 21, 2005 |
| First Use In Commerce Date | Monday, March 21, 2005 |
| 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 | Thursday, June 19, 2014 |
| Primary Code | 041 |
| First Use Anywhere Date | Monday, March 21, 2005 |
| First Use In Commerce Date | Monday, March 21, 2005 |
| 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 | Thursday, June 19, 2014 |
| Primary Code | 042 |
| First Use Anywhere Date | Monday, March 21, 2005 |
| First Use In Commerce Date | Monday, March 21, 2005 |
| 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 | 6 - Active |
| Class Status Date | Thursday, June 19, 2014 |
| Primary Code | 044 |
| First Use Anywhere Date | Monday, March 21, 2005 |
| First Use In Commerce Date | Monday, March 21, 2005 |
| 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 | Thursday, June 19, 2014 |
| Primary Code | 045 |
| First Use Anywhere Date | Monday, March 21, 2005 |
| First Use In Commerce Date | Monday, March 21, 2005 |
| Party Name | Wolters Kluwer N.V. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | ALPHEN AAN DEN RIJN NL-2408ZE NL |
| Party Name | Wolters Kluwer N.V. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | Alphen aan den Rijn NL-2408ZE NL |
| Party Name | Wolters Kluwer N.V. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | Alphen aan den Rijn NL-2408ZE NL |
| Event Date | Event Description |
| Thursday, September 25, 2014 | NON-FINAL ACTION WRITTEN |
| Thursday, September 25, 2014 | NON-FINAL ACTION E-MAILED |
| Thursday, September 25, 2014 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Friday, February 20, 2015 | EXAMINERS AMENDMENT -WRITTEN |
| Thursday, June 12, 2014 | NEW APPLICATION ENTERED |
| Thursday, June 19, 2014 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, September 18, 2014 | ASSIGNED TO EXAMINER |
| Monday, January 26, 2015 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Monday, January 26, 2015 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, January 28, 2015 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, February 20, 2015 | EXAMINERS AMENDMENT E-MAILED |
| Friday, February 20, 2015 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Friday, February 20, 2015 | EXAMINER'S AMENDMENT ENTERED |
| Friday, February 20, 2015 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, March 10, 2015 | ASSIGNED TO LIE |
| Tuesday, April 14, 2015 | PUBLISHED FOR OPPOSITION |
| Tuesday, April 14, 2015 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, June 30, 2015 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, June 30, 2020 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Thursday, June 24, 2021 | TEAS SECTION 8 & 15 RECEIVED |
| Tuesday, March 10, 2015 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, March 25, 2015 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Thursday, August 26, 2021 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Thursday, August 26, 2021 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Thursday, August 26, 2021 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, August 26, 2021 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Thursday, August 26, 2021 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Thursday, August 26, 2021 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Thursday, August 10, 2023 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Thursday, August 10, 2023 | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Sunday, June 30, 2024 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |
| Thursday, August 10, 2023 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Thursday, August 10, 2023 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED |