| Serial Number | 79156961 |
| Word Mark | WORLDPAY |
| Filing Date | Thursday, March 27, 2014 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, December 16, 2022 |
| Registration Number | 4966764 |
| Registration Date | Tuesday, May 31, 2016 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, March 15, 2016 |
| Description of Mark | The mark consists of an abstract design of a globe in red to the left of the wording "WORLDPAY", where "world" appears in gray and "pay" appears in red. |
| Goods and Services | Computer programs for processing of financial payments involving enabling card verification and authorisation, fraud checking, and secure transfer of money for merchant accounts; electronic payment terminals, namely, apparatus for payment with magnetically encoded cards, apparatus for payment with magnetic memory cards, apparatus for receiving cash payments being credit cards, debit cards, store cards, bank cards, charge cards, gift voucher cards or other payment cards and microchips containing account details; electronic display interfaces, namely, read-out apparatus for use in the authentication of cashless payment means and read-out apparatus for use in the identification of cashless payment means; electronic terminals for electronically processing credit card payments; pin code entry devices; terminals for the electronic payment of charges with credit cards; electronic apparatus for use in processing financial transactions; computer software for handling of financial transactions such as payments by charge cards, bank cards, credit cards, debit cards, stored value cards and payment cards; computer software applications for handling of financial payments via mobile phones; electronic verification apparatus for verifying authenticity of bank cards, credit cards, debit cards, charge cards, stored value and/or payment cards; parts therefor for the aforesaid goods; electronic publications, namely, magazines, journals, newsletters, articles, manuals, reports, and white papers featuring information related to electronic payment processing services, fraud and identity theft prevention in relation to electronic payment processing services, risk assessment in relation to electronic payment processing services, analysis of payment transaction data for businesses recorded on computer media; downloadable data namely, publications in the nature of magazines, newsletters, articles, manuals, and white papers and software for use in payment processing services, fraud and identity theft prevention in relation to electronic payment processing services, risk assessment in relation to electronic payment processing services, analysis of payment transaction data for businesses; electronic publications in the nature of newsletters, magazines, journals, manuals, infographics, reports, and white papers relating to research on financial issues and research into payment transaction data and transactions trends |
| Goods and Services | Paper advertising materials in the nature of signs, banners, leaflets, brochures being goods in trade and boards; cheque books; printed publications, namely, newsletters, magazines, pamphlets, leaflets, newspapers and periodicals, all relating to the provision of financial services; printed invitations; printed service guides and services brochures for financial services; printed forms and statements for financial services; catalogues in the field of provision of financial services |
| Goods and Services | Advisory and consultancy services in the field of transmission of messages, documents and other data by electronic means and via the Internet; provision of electronic communication links; transmission by email of vouchers, voucher codes, gift codes, claim codes, discount offers, promotional offers, coupons and printable vouchers enabling customers to conveniently view and redeem tokens of value by means of the Internet; providing telecommunications access to computer servers, databases and networks; providing access to the Internet; provision of telecommunications connections and access to the Internet; providing access to telecommunication portal services, namely, providing access to telecommunications gateways and web pages via the Internet and mobile phones; location-based and personal transmission of information via digital and electronic communications networks; providing and supplying location-specific data via the Internet, namely, services of geo-location and tracking of financial transactions and transmitting transaction specific location data over the Internet; leasing of access time to global computer networks; information, advisory and consultancy services related to all the aforesaid services |
| Goods and Services | Installation, maintenance, repair, updating of card readers and electronic devices all for handling financial and associated transactions including such services for devices used for authorisation and processing of payments made with credit cards debit cards, store cards, bank cards, charge cards, gift voucher cards, other payment cards and microchips containing account details; installation, maintenance, repair and updating of electronic devices for retrieving information stored on credit cards, debit cards, store cards, bank cards, charge cards, gift voucher cards, other payment cards and microchips containing account details; installation, maintenance, repair and updating of electronic verification devices for verifying authenticity of credit cards, debit cards, store cards, bank cards, charge cards, gift voucher cards, other payment cards and microchips containing account details; information, advisory and consultancy services related to all the aforesaid services |
| Pseudo Mark | WORLD PAY |
| Goods and Services | Banking services; online banking services; credit card, debit card, store card, bank card, charge card, gift voucher card, and other payment card authorisation services; electronic funds transfer and payment services; processing of transactions made by credit cards, debit cards, store cards, bank cards, charge cards, gift voucher cards, other payment cards and microchips containing account details; card to card transfer and mobile banking and payments; processing of credit and debit transactions by telecommunication link; electronic wallet services payment services, namely, electronic debit transactions, peer-to-peer electronic cash, credit card, and debit transactions, electronic cash transactions, electronic banking via a global computer network, electronic funds transfer; electronic point of sale payment transaction processing services; mail payment transaction processing services; telephone payment transaction processing services; recurring payment transaction processing services; merchant account services, namely, payment transaction processing; financial risk management; identity theft and fraud prevention services relating to processing of financial payments made by bank cards, credit cards, debit cards, charge cards, gift voucher cards, store cards, stored value payment cards and other cards containing microchips with bank account details in multiple currencies for merchant accounts in the nature of payment and funds verification services and credit card authorization services; financial services in relation to secure handling of online financial transaction data and services for secure transfer of money between banks, their customers and merchant accounts, namely, providing secure commercial transactions and payment options; financial services being financial analysis and consultation, financial exchange of data between financial institutions and their customers, financial services relating to analysis of payment transaction data; information, advisory and consultancy services related to all the aforesaid services |
| Indication of Colors claimed | The color(s) red and gray is/are claimed as a feature of the mark. |
| Goods and Services | Advertising and promotional services; compilation of data relating to goods for purchase; information, advisory and consultancy services relating to data processing; conducting user incentive programs relating to use of credit cards, store cards, charge cards, cash cards, debit cards, payment cards and loyalty, incentive and bonus program services to promote the sale of products and services of others; information, advisory and consultancy services related to all the aforesaid services |
| Goods and Services | Fraud and identity theft protection services; information, advisory and consultancy services related to all the aforesaid services |
| Goods and Services | Monitoring for proper functioning and performance of card readers and electronic apparatus all for handling financial and associated transactions including authorisation and processing of payments made with credit cards, debit cards, store cards, bank cards, charge cards, gift voucher cards, other payment cards and microchips containing account details; monitoring for proper functioning and performance of electronic apparatus for retrieving information stored on credit cards, debit cards, store cards, bank cards, charge cards, gift voucher cards, other payment cards and microchips containing account details; monitoring for proper functioning and performance of electronic verification apparatus for verifying authenticity of credit cards, debit cards, store cards, bank cards, charge cards, gift voucher cards, other payment cards and microchips containing account details; application service provider (ASP) services featuring mobile phone and wireless handheld computer applications software for use in enabling users to make electronic payments and to receive, redeem, and manage electronic receipts and electronic coupons; lease, hire and rental of computer equipment, hardware, software and programs; data encryption services; lease, hire and rental of computer equipment, hardware, software and programs; data encryption services; information, advisory and consultancy services related to all the aforesaid services |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, December 16, 2022 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, December 16, 2022 |
| Primary Code | 016 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, December 16, 2022 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, December 16, 2022 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, December 16, 2022 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, December 16, 2022 |
| Primary Code | 038 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, December 16, 2022 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, December 16, 2022 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Worldpay, LLC |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | US |
| Party Name | Worldplay Limited |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Party Name | Worldpay Limited |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Party Name | Worldpay Limited |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | GB |
| Event Date | Event Description |
| Saturday, March 23, 2024 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Monday, October 2, 2023 | TOTAL INVALIDATION PROCESSED BY THE IB |
| Friday, September 8, 2023 | TOTAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Friday, September 8, 2023 | INVALIDATION PROCESSED |
| Wednesday, August 16, 2023 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Sunday, May 7, 2023 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Friday, December 16, 2022 | CANCELLED SECTION 71 |
| Friday, April 22, 2022 | NEW REPRESENTATIVE AT IB RECEIVED |
| Monday, May 31, 2021 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Thursday, April 25, 2019 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Monday, March 4, 2019 | CHANGE OF OWNER RECEIVED FROM IB |
| Wednesday, September 19, 2018 | CORRECTION FROM THE IB EXAMINED, NO ACTION IS NEEDED |
| Friday, August 3, 2018 | CORRECTION TRANSACTION RECEIVED FROM IB |
| Thursday, August 17, 2017 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Friday, September 23, 2016 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Thursday, September 1, 2016 | FINAL DISPOSITION NOTICE SENT TO IB |
| Thursday, September 1, 2016 | FINAL DISPOSITION PROCESSED |
| Wednesday, August 31, 2016 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Friday, July 1, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, May 31, 2016 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, May 18, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, May 18, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Tuesday, March 15, 2016 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, March 15, 2016 | PUBLISHED FOR OPPOSITION |
| Friday, March 11, 2016 | NOTIFICATION PROCESSED BY IB |
| Wednesday, February 24, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, February 24, 2016 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, February 24, 2016 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, February 10, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, February 3, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Monday, February 1, 2016 | EXAMINER'S AMENDMENT ENTERED |
| Friday, January 29, 2016 | ASSIGNED TO LIE |
| Friday, January 29, 2016 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Friday, January 29, 2016 | EXAMINERS AMENDMENT E-MAILED |
| Friday, January 29, 2016 | EXAMINERS AMENDMENT -WRITTEN |
| Friday, October 9, 2015 | REFUSAL PROCESSED BY IB |
| Monday, August 17, 2015 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Monday, August 17, 2015 | NON-FINAL ACTION E-MAILED |
| Monday, August 17, 2015 | NON-FINAL ACTION WRITTEN |
| Tuesday, June 23, 2015 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, June 23, 2015 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, June 23, 2015 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, January 8, 2015 | REFUSAL PROCESSED BY IB |
| Friday, December 26, 2014 | APPLICATION FILING RECEIPT MAILED |
| Tuesday, December 23, 2014 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Tuesday, December 23, 2014 | REFUSAL PROCESSED BY MPU |
| Tuesday, December 23, 2014 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Monday, December 22, 2014 | NON-FINAL ACTION WRITTEN |
| Monday, December 22, 2014 | ASSIGNED TO EXAMINER |
| Monday, December 22, 2014 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, December 18, 2014 | SN ASSIGNED FOR SECT 66A APPL FROM IB |