| Serial Number | 88314723 |
| Word Mark | YUBIQUITOUS |
| Filing Date | Monday, February 25, 2019 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, November 16, 2021 |
| Registration Number | 6557687 |
| Registration Date | Tuesday, November 16, 2021 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, August 31, 2021 |
| Goods and Services | Apparatus and instruments for scientific purposes in the nature of computer hardware for identity and access management, authentication, sign-on control, and intrusion prevention; Apparatus for recording, transmission or reproducing sound and images; Blank magnetic data carriers; Blank digital storage media; Data processing equipment, namely, computers; Downloadable computer software for identity and access management, authentication, sign-on control, and intrusion prevention; Coded electronic chip cards containing programming used to generate the user's unique identity and a single or static passcode; Coded integrated circuit boards containing programming used to generate the user's unique identity and a single or static passcode; Encoded smart cards containing programming used to generate the user's unique identity and a single or static passcode; Coded smart cards that contain programming used to generate the user's unique identity and a single or static passcode; Downloadable communication software for identity and access management, authentication, sign-on control, and intrusion prevention; Downloadable payment software for identity and access management, authentication, sign-on control, and intrusion prevention; Apparatus for electronic payment processing; Downloadable software for processing electronic payments to and from others; Computer hardware for processing electronic payments to and from others; Downloadable software for processing, transmission, sending, collecting, forwarding and receiving data, information, video, messages, text, calls, audio, graphics and images; Downloadable computer software for identity and access management, authentication, sign-on control, and intrusion prevention for use in the fields of financial services, services related to monetary affairs, money transfer services, electronic payment and fund transfer services, payment services, mobile payment services, electronic wallet services and for the issuance of tokens of value; Downloadable computer software for use in identity management, identification, login and digital signing; Downloadable computer software for encrypting, decrypting and authenticating data, information and messages; Downloadable computer software to verify data integrity; USB hardware; Computer hardware; Downloadable security software for identity and access management, authentication, sign-on control, and intrusion prevention; Downloadable authentication software for identity and access management, sign-on control, and intrusion prevention; Downloadable interactive software for identity and access management, authentication, sign-on control, and intrusion prevention; Downloadable smartphone software for identity and access management, authentication, sign-on control, and intrusion prevention; Downloadable cryptography software for identity and access management, authentication, sign-on control, and intrusion prevention; Downloadable application software for identity and access management, authentication, sign-on control, and intrusion prevention; Downloadable computer software platforms for identity and access management, authentication, sign-on control, and intrusion prevention; Downloadable computer software development tools; Downloadable computer software, namely, threat detection software; Downloadable computer software, namely, risk detection software; Downloadable computer software, namely, voice recognition software; Downloadable computer software, namely, facial recognition software; Downloadable computer software, namely, image recognition software; Downloadable computer software, namely, machine learning software; Downloadable computer software, namely, privacy protection software for encrypting personal data; Downloadable computer software, namely, file synchronization software; Downloadable computer software, namely, character recognition software; Downloadable computer software, namely, business application software allowing users to perform electronic business transactions via a global computer network; Downloadable computer software, namely, information retrieval software; Downloadable computer software for use in measuring or assessing the reliability of computer hardware; Downloadable computer software for use in the encryption of electronic files; Downloadable computer firmware for identity and access management, authentication, sign-on control, and intrusion prevention devices; Firmware memory devices, namely, blank flash memory cards; firmware for computer peripherals, namely, downloadable firmware software for authenticating users recorded on pre-recorded flash memory cards; Downloadable computer firmware and device drivers for identity and access management, authentication, sign-on control, and intrusion prevention devices; Downloadable computer software to maintain, support, and operate computer systems and firmware; Data encryption apparatus; Downloadable computer software for use in data encryption; Electronic data encryption apparatus; Electronic encryption units; Encoded identity cards; Access control devices, namely, electronic controllers for identity and access management, authentication, sign-on control, and intrusion prevention; Electronic readers and controllers for controlling access to premises; Safety, security, protection and signaling devices, namely, security alarms and luminous safety beacons; Electric access security apparatus, namely, electronic key cards and fobs for controlling access to premises; Electronic security token in the nature of a fob-like device used by an authorized user of a computer system to facilitate authentication; Downloadable computer software for managing network and device security; Cards encoded with security features for identification purposes; Downloadable computer software for use in supply chain management allowing users to perform business transactions via a global computer network; Downloadable computer software for managing computer hardware utility, security and cryptography; Internet of Things (IoT) management platform in the nature of a router with embedded network configuration software for use on Internet-enabled devices and for use in managing and monitoring collections of Internet-enabled devices; Computer hardware modules for use in electronic devices using the Internet of Things; Downloadable computer application software allowing users to implement and install microcontrollers for Internet of Things (IoT) enabled devices; Encoded electronic chip cards, namely, smart cards, containing programming used to provide identity and access management, authentication, and sign-on control; blank smart cards; Encoded integrated circuit cards containing programming used to provide identity and access management, authentication, and sign-on control; Electronic chips for the manufacture of integrated circuits; computer Chips; Encoded electronic chip cards for identifying particular users of computers and mobile telephones |
| Pseudo Mark | UBIQUITOUS |
| Goods and Services | Scientific and technological services, namely, research, design, analysis, and testing in the fields of cryptography, security, and authentication; Industrial analysis and research services in the fields of cryptography, security, and authentication; Design and development of computer hardware and software; Development of software for communication systems; Instant messaging software design and development; Computer hardware development; Testing of computer hardware; Design services related to hardware and computer programs; Rental of computer hardware and computer software; Research in the field of computer hardware; Consultancy in the design and development of computer hardware; Software development; Software design; Installation of computer software; Software customization services; consulting services in the field of computer software; Software engineering services; Maintenance of computer software; Updating of computer software; installation of firmware; Configuration of computer firmware; Design and development of computer firmware; Design and development of firmware systems; Consultancy and advice in the development and design of computer software and hardware; Scientific research consulting in the fields of cryptography, security, and authentication; Technological consultancy in the fields of cryptography, security, and authentication; Providing information, consultancy, and advisory services in the field of information technology; Consultancy in the field of computer security; Cloud computing services, namely, providing cloud hosting services and cloud application systems services; Rental of computer software; Technical support services for computer software and applications; Installation and customization of computer programs; Data encryption services; Data encryption and decoding services; Encryption, decryption and authentication of digital certificates; product testing, authentication in the field of technology products, and quality control for others; Authentication services for computer security in the nature of providing user authentication services using single sign-on technology for online software applications; IT restoration services being the repair of computer software and hardware; Data security services; Computer programming services for electronic data security; Computer security threat analysis for protecting data; Monitoring of computer systems for security purposes in the nature of computer security services for protecting data and information from unauthorized access; Design and development of electronic data security systems; Maintenance of computer software relating to computer security and prevention of computer risks; Updating of computer software relating to computer security and prevention of computer risks; Design and development of computer software for supply chain management; Design and development of computer software for logistics, supply chain management and e-business portals; IT services, namely, information technology (IT) integration of computer systems and networks, and information technology (IT) consulting services; Design of software for embedded devices; Updating of software for embedded devices; Internet of Things (IoT) management non-downloadable software platform for use on Internet-enabled devices allowing users to collect and save data for managing and monitor collections of Internet-enabled 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 | Friday, March 15, 2019 |
| Primary Code | 009 |
| 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 | Friday, March 15, 2019 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | YUBICO AB |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 84 - NOT AVAILABLE |
| Address | Stockholm 11135 SE |
| Party Name | Yubico AB |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Stockholm 11137 SE |
| Party Name | Yubico AB |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | Stockholm 11137 SE |
| Party Name | Yubico AB |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | Stockholm 11137 SE |
| Event Date | Event Description |
| Thursday, February 28, 2019 | NEW APPLICATION ENTERED |
| Friday, March 15, 2019 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, May 6, 2019 | ASSIGNED TO EXAMINER |
| Tuesday, May 14, 2019 | NON-FINAL ACTION WRITTEN |
| Tuesday, May 14, 2019 | NON-FINAL ACTION E-MAILED |
| Tuesday, May 14, 2019 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, November 13, 2019 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, November 13, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, November 13, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, April 7, 2020 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Friday, August 7, 2020 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Friday, August 7, 2020 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Monday, January 6, 2020 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, January 22, 2020 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, February 11, 2020 | PUBLISHED FOR OPPOSITION |
| Tuesday, February 11, 2020 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Friday, August 7, 2020 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Wednesday, October 7, 2020 | NOTICE OF ALLOWANCE CANCELLED |
| Monday, November 9, 2020 | ABANDONMENT - NO USE STATEMENT FILED |
| Monday, November 9, 2020 | ABANDONMENT NOTICE E-MAILED - NO USE STATEMENT FILED |
| Tuesday, November 17, 2020 | ASSIGNED TO PETITION STAFF |
| Monday, September 21, 2020 | TEAS PETITION TO AMEND BASIS RECEIVED |
| Tuesday, November 17, 2020 | REINSTATEMENT GRANTED - INADVERTENTLY ABANDONED |
| Tuesday, November 17, 2020 | PETITION TO DIRECTOR - CHANGE BASIS - GRANTED |
| Tuesday, December 15, 2020 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Wednesday, May 5, 2021 | ASSIGNED TO EXAMINER |
| Wednesday, May 5, 2021 | NON-FINAL ACTION WRITTEN |
| Wednesday, May 5, 2021 | NON-FINAL ACTION E-MAILED |
| Wednesday, May 5, 2021 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, May 11, 2021 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, November 17, 2020 | CASE RETURNED TO EXAMINATION |
| Friday, November 20, 2020 | NOTICE OF REINSTATEMENT E-MAILED |
| Thursday, December 17, 2020 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Wednesday, May 5, 2021 | ASSIGNED TO EXAMINER |
| Monday, May 24, 2021 | NON-FINAL ACTION E-MAILED |
| Tuesday, May 11, 2021 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, May 11, 2021 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, May 24, 2021 | NON-FINAL ACTION WRITTEN |
| Monday, May 24, 2021 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, June 30, 2021 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, June 30, 2021 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, July 1, 2021 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, July 23, 2021 | EXAMINERS AMENDMENT E-MAILED |
| Friday, July 23, 2021 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Friday, July 23, 2021 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, August 31, 2021 | PUBLISHED FOR OPPOSITION |
| Tuesday, December 19, 2023 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Friday, July 23, 2021 | EXAMINERS AMENDMENT -WRITTEN |
| Tuesday, July 27, 2021 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, August 11, 2021 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, August 31, 2021 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, November 16, 2021 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, December 13, 2023 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Tuesday, December 19, 2023 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, December 19, 2023 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Thursday, August 7, 2025 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Thursday, August 7, 2025 | TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS |
| Thursday, August 7, 2025 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Thursday, August 7, 2025 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, August 7, 2025 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Tuesday, December 19, 2023 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Tuesday, December 19, 2023 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Tuesday, December 19, 2023 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |