Word

Status

Dead

Status Code

709

Status Date

Friday, August 4, 2023

Serial Number

79171168

Registration Number

5126166

Registration Date

Tuesday, January 24, 2017

Mark Type

3

Filing Date

Thursday, January 29, 2015

Published for Opposition

Tuesday, November 8, 2016

Cancellation Date

Friday, August 4, 2023

Trademark Owner History

NEOPOST SA - Original Registrant

Classifications

9 Postal scales, namely, weighing apparatus to check mail franking; bar code readers; recorded software for managing mail dispatch in the nature of letters, messages, parcels, newspapers, and franking and the processing of all related documents; apparatus, instruments, organs and devices, namely, computers, downloadable software, electronic calculators, computer servers, communication servers, computer database, computer application software for the generation, calculation, control, inputting, storage, conversion, processing, collection, transmission, switching and receipt of data, information, signals or messages; computers and computer peripheral devices; printers; counter equipment for franking applications, namely, computerized mail franking apparatus to check franking specifically designed to be placed on counters, namely, a mail weighing machine with data processing software for calculating the cost to ship mail and parcels for commercial use; electronic apparatus, namely, computers, downloadable software, printers, and computerized weighing scales for the franking, namely, payment and recording, of mail and transport costs, namely, private dispatch service costs, for letters and parcels, including through the use of a remote control and by downloading, via the Internet and intranet networks; electronic coin-operated booths for franking letters and parcels sent by private mail services or transporters; downloadable software in the nature of recorded programs, namely, to calculate the cost to ship mail and parcels; electric apparatus for parcels and mail, namely, public addressing machines and instruments and encoding apparatus, weighing apparatus to check mail franking, bar code readers, printers; software for database management; computer software for synchronizing data between hand-held or portable computers and host computers; computer operating system software; telecommunication software for electronic transmission of documents and facsimile transmission; software and telecommunication apparatus, namely, modems to enable connection to databases, computer networks, global computer networks as well as the Internet; software for use in automating and managing business processes; computer software for facsimile, e-mail, voice mail and Internet messaging; software for commercial use, namely, for tracking, monitoring and locating packages, parcels, mail and pallets during their processing, transport and delivery; computer hardware, namely, computers, disk changers, computer peripheral devices, computer keyboards, interfaces, namely, network interface cards, internal and external computer buses, monitors, printers, USB keys, digital book readers, computer mice; software, namely, for tracking, monitoring and locating packages, parcels, mail and pallets during their processing, transport and delivery; hand-held computers; portable computers; downloadable computer programs namely, for tracking, monitoring and locating packages, parcels, mail and pallets during their processing, transport and delivery; recorded computer programs, namely, for tracking, monitoring and locating packages, parcels, mail and pallets during their processing, transport and delivery; computer programs and software for image processing used for mobile telephones; downloadable electronic publications provided on-line from databases or the Internet, namely, books, newsletters, magazines, pamphlets, workbooks, journals, and hand-outs in the field of addressing, sealing, franking, dispatching, transporting, delivering, distributing, sorting, carriage and storage of goods, mail and parcels; computer peripherals; pre-recorded computer data media, namely, pre-recorded DVDs in the field of addressing, sealing, franking, dispatching, transporting, delivering, distributing, sorting, carriage and storage of goods, mail and parcels; magnetic and optical data media, namely, CDs and DVDs sold blank; magnetic and optical data media, namely, pre-recorded CDs and DVDs in the field of commercial mailing practices; software platforms, namely, software platforms for retail or wholesale of mail processing machines and apparatus and of consumables for these machines and apparatus, for computer-assisted mail franking, for selecting and processing of private and company addresses, for optimizing parcel and mail dispatch rates and managing their spending, for tracking parcel and mail during transport and dispatch, for managing electronic transmission of facsimile, e-mail, voice mail and Internet messages; downloadable software for the supply and monitoring of information relating to the distribution and delivery of coin-operated apparatus

7 Machines for processing mail, in particular folding machines, namely, inserters, parts and spare parts of such machines for industrial and commercial use; letter sorting machines for industrial and commercial use; splitters, namely, paper processing machines for automatically separating computer-produced documents in a continuous strip, namely, paper cutting devices and collating machines for commercial and industrial use; extractors, namely, machines used for opening letters and automatically extracting the contents for commercial and industrial use; automatic distribution machines for loading, unloading, and conveying mail and parcels for commercial and industrial use; addressing and bar code equipment for mail applications, namely, addressing and encoding machines

39 Transport, delivery, distribution and carriage of goods, mail and parcels; packaging and storage of goods, mail and parcels; consulting and organization services in the field of mail and parcel transport; freighting; rental of transport vehicles; sorting and storage of goods, mail and parcels; Non-electronic deliveries of goods, mail and parcels via transportation to the recipient or a point-of-sale or intermediary depot, as a result of orders, the orders received particularly through the Internet, computerized or not, including on behalf of goods suppliers, through the Internet or via any other computer, communication or other means, and their clients, individuals or institutions; transport information; physical storage of electronically-stored data or documents; freight brokerage; transport brokerage; corporate assistance for managing the dispatch of letters or parcels; rental without commitment to sell of all equipment, machines, apparatus and devices in connection with the processing, transport and delivery of mail, namely, rental land, water, and air vehicles for transporting mail, pallet lifts, packaging equipment, warehouses; tracking during transport by the electronic location of the destination of products and goods, particularly documents, packages, parcels; rental of storage containers; computer-assisted mail franking, mail franking via the Internet

38 Telecommunication services, namely, telecommunication services via computer networks for providing access to computer telecommunication networks, communication services via computers grouped on a global communication network and to a private or restricted access network; telecommunication services, namely, providing access to an Internet server for services in the fields of processing, logistics and transport of merchandise, parcels and mail; communications by computer terminals; electronic mail, electronic messaging and transmission of information by electronic means, by global telecommunication networks, or private or restricted access networks; communication between computer terminals; Computer transmission of information accessible by access code to computer or data communication databases and database servers; Communications and broadcasting services for transmitting and broadcasting data, sounds, images and signals via telephone, facsimile, radio, television, a global computer network, and wireless communication networks; telecommunication transmission of information on the transport of letters and parcels via computer networks

16 Equipment, apparatus and devices for processing mail, namely, franking machines, franking bases and heads, parts and spare parts of machines for franking, letter openers, postal machines for internal business post offices, namely, distribution machines for postal applications in the nature of letter collating and sorting machines for internal office use, counter equipment for franking applications, namely, machines for franking specifically designed to be placed on counters for office use; printed matter, namely, newspapers, photographs, magazines, books, printed periodicals, newsletters, and brochures all in the fields of addressing, sealing, franking, dispatching, transporting, delivering, distributing, sorting, carriage and storage of goods, mail and parcels; envelopes; labels, not of textile, namely, paper address labels, paper adhesive labels, mailing labels, paper labels; wrapping paper; address stamps; manuals and handbooks in the field of addressing, sealing, franking, dispatching, transporting, delivering, distributing, sorting, carriage and storage of goods, mail and parcels; booklets in the field of addressing, sealing, franking, dispatching, transporting, delivering, distributing, sorting, carriage and storage of goods, mail and parcels; paper bags, namely, envelopes and pouches for packaging; plastic bags, namely, envelopes and pouches for packaging; sealing machines as office requisites

37 Installation, maintenance and repair of all machines, all devices, apparatus and equipment in connection with mail processing

36 Financial services, namely, financial account management services for electronic remote franking of letters and parcels in the nature of electronic payment services involving electronic processing and subsequent transmission of bill payment data; postal credit recharging services in the nature of establishing funded accounts used to purchase postage; services for processing electronic transfers of funds and cost deductions of franking letters and parcels; leasing, namely, rental with or without promise of sale of all plants, all workshops, offices and premises, namely, rental of real estate; portfolio management of shares and securities and operations relating thereto; management of all buildings [ ; providing personnel for others for performing mail processing operations; ] customs brokerage

35 Business services, namely, computerized data base management which permits the selection and processing of private and company addresses by means of computer networks; Assistance and consulting services in the field of mail management in the nature of providing specialized mail management services and consulting to businesses; Assistance and consulting services for business management in the field of logistics, transport, and transport of merchandise, parcels and mail; document reproduction services; compiling and analyzing statistics; assistance to companies in optimizing parcel and mail dispatch rates and in the management of their spending; computerized file management; compilation of information into computer databases; Business services, namely, providing business assistance to companies in managing their dispatch services for letters or parcels; administrative organization of the transport, delivery, distribution, sorting, carriage and storage of goods and parcels in the nature of transportation logistics services; retail and wholesale store services featuring postal scales, apparatus to check franking, bar code readers, software, machines for processing mail in the nature of folding and inserting machines, machines for sorting letters, envelopes, wrapping paper, bags in the nature of pouches of paper or plastic for packaging * ; providing personnel for others for performing mail processing operations *

42 Design and development of computer software; computer software maintenance; computer software research and expertise services in the field of mail and parcel processing techniques; consulting and assistance services for the installation, maintenance and updating of systems software for the electronic processing of data for tracking, monitoring and locating parcels, mail and pallets during their processing, transport and delivery; consulting services for the installation of systems software for the electronic processing of data for tracking and locating packages, mail and pallets during their transport and delivery; services for the conversion of computer programs and data; services for the conversion of data and documents from physical to electronic media

20 Office furniture especially designed for mail processing equipment, apparatus and devices

The mark consists of an "N" in light green appearing as the outline of an envelope above the black wording "SEND.RECEIVE.CONNECT".
In the Statement, Page 3, line 3, after PACKAGING, "; providing personnel for others for performing mail processing operations" should be inserted, and, In the Statement, Page 3, lines 11 and 12, "providing personnel for others for performing mail processing operations;" should be deleted.
The color(s) light green and black is/are claimed as a feature of the mark.

Trademark Events

Aug 21, 2015

New Application Office Supplied Data Entered

Aug 20, 2015

Sn Assigned For Sect 66a Appl From Ib

Aug 21, 2015

Assigned To Examiner

Aug 25, 2015

Application Filing Receipt Mailed

Aug 28, 2015

Non-Final Action Written

Aug 29, 2015

Non-Final Action (Ib Refusal) Prepared For Review

Sep 1, 2015

Refusal Processed By Mpu

Sep 1, 2015

Non-Final Action Mailed - Refusal Sent To Ib

Sep 19, 2015

Refusal Processed By Ib

Feb 25, 2016

Teas Response To Office Action Received

Feb 25, 2016

Correspondence Received In Law Office

Feb 26, 2016

Teas/Email Correspondence Entered

Mar 21, 2016

Final Refusal Written

Mar 21, 2016

Notification Of Final Refusal Emailed

Mar 21, 2016

Final Refusal E-Mailed

Aug 18, 2016

Examiners Amendment -Written

Aug 1, 2016

Teas Request For Reconsideration Received

Aug 1, 2016

Teas/Email Correspondence Entered

Aug 1, 2016

Correspondence Received In Law Office

Aug 18, 2016

Examiner's Amendment Entered

Aug 18, 2016

Notification Of Examiners Amendment E-Mailed

Aug 18, 2016

Examiners Amendment E-Mailed

Aug 18, 2016

Approved For Pub - Principal Register

Sep 6, 2016

Withdrawn From Pub - Og Review Query

Oct 4, 2016

Law Office Publication Review Completed

Sep 13, 2016

Previous Allowance Count Withdrawn

Sep 19, 2016

Examiners Amendment -Written

Sep 19, 2016

Examiners Amendment E-Mailed

Sep 19, 2016

Notification Of Examiners Amendment E-Mailed

Sep 19, 2016

Examiner's Amendment Entered

Sep 19, 2016

Approved For Pub - Principal Register

Oct 4, 2016

Assigned To Lie

Oct 19, 2016

Notification Of Notice Of Publication E-Mailed

Oct 19, 2016

Notice Of Start Of Opposition Period Created, To Be Sent To Ib

Nov 8, 2016

Published For Opposition

Nov 8, 2016

Official Gazette Publication Confirmation E-Mailed

Jan 24, 2017

Registered-Principal Register

Jan 27, 2017

Correction From Ib Entered - No Review Required

Oct 19, 2016

Notification Of Possible Opposition Sent To Ib

Nov 25, 2016

Correction Transaction Received From Ib

Nov 25, 2016

Notification Of Possible Opposition - Processed By Ib

Jan 27, 2017

Correction Under Section 7 - Processed

Apr 24, 2017

Final Disposition Notice Created, To Be Sent To Ib

Apr 25, 2017

Final Disposition Processed

Jan 24, 2022

Courtesy Reminder - Sec. 71 (6-Yr) E-Mailed

Apr 25, 2017

Final Disposition Notice Sent To Ib

May 13, 2017

Final Decision Transaction Processed By Ib

Sep 27, 2017

Partial Invalidation Of Reg Ext Protection Created

Sep 28, 2017

Invalidation Reviewed - No Action Required By Office

Dec 28, 2017

Change Of Name/Address Rec'd From Ib

Feb 9, 2018

Correction Transaction Received From Ib

Mar 14, 2018

Correction From The Ib Examined, No Action Is Needed

Aug 4, 2023

Cancelled Section 71

Apr 4, 2024

Total Invalidation Of Reg Ext Protection Created

Apr 13, 2024

Invalidation Processed

Apr 13, 2024

Total Invalidation Of Reg Ext Protection Sent To Ib