| Serial Number | 79243379 |
| Word Mark | WORKS WITH LEGRAND |
| Filing Date | Friday, July 27, 2018 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, June 18, 2019 |
| Registration Number | 5778162 |
| Registration Date | Tuesday, June 18, 2019 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, April 2, 2019 |
| Description of Mark | The mark consists of the design of a switch that is represented by an oblong shape and a circle, the wording "WORKS WITH" being next to the upper portion of the switch, a square design to the right of the bottom portion of the switch, and the wording "LEGRAND" to the right of the square design. |
| Goods and Services | Computers, telecommunication terminals in connection with the presentation and/or management of connected solutions in the field of electrical equipment and home automation, namely, computer terminals, telephone terminals; portable devices for wireless reception and/or transmission of data for the presentation and/or management of connected solutions in the field of electrical equipment, namely, PC tablets, computers, phones; software for presentation of data and management of connected solutions in the nature of automated devices for industrial, commercial, residential and green buildings, infrastructures and data centers, power grids and processes; software for presenting data and managing connected solutions in the nature of automated devices used to improve energy efficiency in industrial, commercial, residential and green buildings, infrastructure and data centers, power grids and processes; software for presenting data and managing connected solutions in the nature of automated devices used in the field of security, access control and video surveillance for industrial, commercial, residential and green buildings, infrastructures and data centers, power grids and processes; software for presenting data and managing connected solutions in the nature of home automation systems used for assistance with autonomy; software for the communication of data for presenting and/or managing connected solutions between application programs, consumer devices and industrial devices, namely, software for transmission of information to automated control systems; software platform for reception and/or wireless transmission of data for management of connected internet of things (IoT) enabled devices; software platform (API) to facilitate third-party connections to an interoperability program for connected solutions; platform integration software development kits (SDK) |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes, namely, providing an incentive and customer loyalty program that features the collection of data for enabling customers to familiarize and select the connected solution(s) addressing their concerns; business information and business efficiency advice in the field of IT interoperability for connected solution |
| Goods and Services | Cloud computing service providing on-line non-downloadable software for connecting, operating and managing networked devices on the Internet of things; cloud computing service featuring on-line non-downloadable software for presentation of data and management of connected home automation devices; software as a service featuring software for the development of software development kits and/or software for the development, use and interoperability of program interfaces dedicated to connected solutions; providing application services for software platform (Saas) as a service providing software for connection, operation and management of networked devices on the Internet of things; platform delivery service (PaaS) providing software for collecting, tracking and exchanging data related to connected devices |
| 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 | Monday, October 22, 2018 |
| Primary Code | 009 |
| 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 | 6 - Active |
| Class Status Date | Monday, October 22, 2018 |
| Primary Code | 035 |
| 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 | Monday, October 22, 2018 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | LEGRAND FRANCE (Société Anonyme) |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 33 - NOT AVAILABLE |
| Address | Limoges F-87000 FR |
| Party Name | LEGRAND SNC (Société en nom Collectif) |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 91 - NOT AVAILABLE |
| Address | Limoges F-87000 FR |
| Party Name | LEGRAND FRANCE (Société Anonyme) |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 33 - NOT AVAILABLE |
| Address | Limoges F-87000 FR |
| Party Name | LEGRAND SNC (Société en nom Collectif) |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 91 - NOT AVAILABLE |
| Address | Limoges F-87000 FR |
| Party Name | LEGRAND FRANCE (Société Anonyme) |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 33 - NOT AVAILABLE |
| Address | Limoges F-87000 FR |
| Party Name | LEGRAND SNC (Société en nom Collectif) |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 91 - NOT AVAILABLE |
| Address | Limoges F-87000 FR |
| Event Date | Event Description |
| Wednesday, November 14, 2018 | ASSIGNED TO EXAMINER |
| Thursday, October 18, 2018 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Monday, October 22, 2018 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, October 26, 2018 | APPLICATION FILING RECEIPT MAILED |
| Friday, December 7, 2018 | NON-FINAL ACTION WRITTEN |
| Sunday, December 9, 2018 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Friday, December 21, 2018 | REFUSAL PROCESSED BY MPU |
| Saturday, December 22, 2018 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Friday, January 11, 2019 | REFUSAL PROCESSED BY IB |
| Tuesday, January 22, 2019 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, January 22, 2019 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, January 22, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, January 22, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, February 7, 2019 | EXAMINERS AMENDMENT -WRITTEN |
| Thursday, February 7, 2019 | EXAMINERS AMENDMENT E-MAILED |
| Thursday, February 7, 2019 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Thursday, February 7, 2019 | EXAMINER'S AMENDMENT ENTERED |
| Thursday, February 7, 2019 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, February 22, 2019 | ASSIGNED TO LIE |
| Wednesday, March 13, 2019 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, April 2, 2019 | PUBLISHED FOR OPPOSITION |
| Tuesday, April 2, 2019 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, June 18, 2019 | REGISTERED-PRINCIPAL REGISTER |
| Monday, June 17, 2019 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Wednesday, September 18, 2019 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Thursday, October 3, 2019 | GENERIC MADRID TRANSACTION SENT TO IB |
| Thursday, October 3, 2019 | GENERIC MADRID TRANSACTION CREATED |
| Saturday, October 28, 2023 | NEW REPRESENTATIVE AT IB RECEIVED |
| Tuesday, June 18, 2024 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Friday, December 6, 2019 | FINAL DECISION TRANSACTION PROCESSED BY IB |