Word

SEDLEX

Status

Registered

Status Code

700

Status Date

Tuesday, November 10, 2020

Serial Number

79271792

Registration Number

6192001

Registration Date

Tuesday, November 10, 2020

Mark Type

4000

Filing Date

Friday, June 21, 2019

Published for Opposition

Tuesday, August 25, 2020

Trademark Owner History

CANTON-Consulting - Original Registrant

Classifications

41 Training, namely, training in the finance and payment services fields; Training in the field of regulatory compliance for money laundering prevention and terrorism financing prevention; Training in the legal field; Publication of magazines; Publication of magazines in the field of money laundering prevention and terrorism financing prevention and related regulatory compliance; Copy editing of magazines in the legal field; Publishing of electronic publications * in the legal field; * Publishing of electronic publications, *, namely, books and magazines, * in the finance and banking fields; Publishing of electronic publications, namely, books and periodicals in the field of money laundering prevention and terrorism financing prevention and related regulatory compliance; Publishing of electronic publications in the nature of information bulletins being newsletter in the fields of finance and banking; Publishing of electronic publications in the nature of information bulletins being newsletters in the fields of money laundering prevention, terrorism financing prevention, and related regulatory compliance; Publication of newspapers, periodicals, catalogs, and brochures in the fields of finance and banking; Publication of newspapers, periodicals, catalogs, and brochures in the fields of money laundering prevention, terrorism financing prevention, and related regulatory compliance; [ Publication of books; ] Online electronic publishing of books and periodicals in the fields of finance and banking; Online electronic publishing of books and periodicals in the fields of money laundering prevention, terrorism financing prevention, and related regulatory compliance; Publication and editing of printed matter; Publication and editing printed matter, namely, books; Newspaper publication* in the legal field; * Organization of educational conferences in the field of business; Organization of educational conferences; Organization of educational conferences in the finance and banking fields; Organization of training seminars in the fields of finance, banking, law, legal data, money laundering prevention, terrorism financing prevention, and related regulatory compliance; Organization of seminars in the fields of finance, banking, law, legal data, money laundering prevention, terrorism financing prevention, and related regulatory compliance; Organization and conducting of educational symposiums in the fields of finance, banking, law, legal data, money laundering prevention, terrorism financing prevention, and related regulatory compliance; Organization and conducting of educational conferences; Organization and conducting of educational colloquiums, conferences, and congresses; Providing advice on training in the field of finance, banking, law, legal data, money laundering prevention, terrorism financing prevention, and related regulatory compliance

9 Digital media, namely, compact discs, DVDs, and downloadable audio files featuring legal data * in the form of databases; * Cash registers * for processing electronic payments, * [ calculating machines, data processing equipment and computers; ] Recorded software designed to extract, transform, and store legal data; Downloadable software designed to extract, transform, and store legal data; Apparatus for processing electronic payments, namely, electronic payment terminal; Downloadable and recorded electronic databases in the field of legal data; Electronic databases in the field of money laundering prevention, terrorism financing prevention, and related regulatory compliance, recorded in computer media; Downloadable computer application software for mobile phones, portable media players, handheld computers, namely, software for extracting, transforming, and loading legal data; Downloadable computer application software for mobile phones, portable media players, handheld computers, namely, software for use in database management in the field of money laundering prevention, terrorism financing prevention, and related regulatory compliance; [ Downloadable and recorded computer software for database management; ] Downloadable and recorded computer software for database management in the field of money laundering prevention, terrorism financing prevention, and related regulatory compliance; Downloadable and recorded software for searching data in the field of money laundering prevention, terrorism financing prevention, and related regulatory compliance; Recorded computer software for use in database management, in the field of legal data; Recorded computer software for use in database management, in the field of money laundering prevention, terrorism financing prevention, and related regulatory compliance; Downloadable and recorded data processing computer programs for use in database management for extracting, transforming, and loading data and metadata in the field of legal data, money laundering prevention, terrorism financing prevention, and related regulatory compliance; Downloadable computer software for reviewing and analyzing payment data to prevent money laundering; Downloadable and recorded computer software for processing electronic payments to and from third parties; Electronic databases in the field of legal data recorded on computer media; Downloadable computer search engine software for legal databases

16 Printed matter, namely, [ paper signs, ] books,[ manuals, curricula, newsletter, informational cards, and brochures in the ] field of legal data; [ Printed publications, namely, brochures in the field of legal data; News bulletins; Printed informational sheets in the field of law; Newspapers; Newsletters in the field of law; ] Specialized journals in the field of law; Specialized journals in the fields of money laundering prevention, terrorism financing prevention, and related regulatory compliance

36 Financial affairs, namely, financial information, management and analysis services; Payment processing services, namely, money transfer and debit card transaction processing services; Automated payment processing services, namely, money transfer and debit card transaction processing services; Electronic payment processing services, namely, money transfer and debit card transaction processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, electronic check and electronic payment; Analysis of financial data; Financial analyses; Computerized financial analysis; Financial advice services in the field of cashless payment transactions; Financial information processing; Financial information provided via a computer database; Provision of financial information via computer networks and satellite transmissions; Banking; Banking services; Providing advice and consultancy services related to banking services; Providing a website featuring information in the field of banking

35 Business consultancy in the fields of regulatory compliance for money laundering prevention and terrorism financing prevention; [ Business management consultancy; Business management advisory services; ] Compilation of statistics for business purposes, * especially with respect to legal compliance; * Database management *, namely, management of databases with information in the legal field; * Collection and analysis of quality metric data for legal practitioners for business purposes; Compilation of * legal data * information into computer databases; Systemization of * legal * information into computer databases; Computer data entry services, *, namely, input of legal information to computer databases; management of legal databases, namely, * updating and maintenance of data in computer databases [ ; Updating of data in computer databases in the field of software ]

45 Legal services; Legal information services; Legal information services in the finance and banking fields; Legal information services in the fields of money laundering prevention, terrorism financing prevention, and related regulatory compliance; Legal advice; Legal advice in the finance and banking fields; Legal advice in the fields of money laundering prevention, terrorism financing prevention, and related regulatory compliance; Reviewing standards and practices to assure compliance with financial and banking laws and regulations; Legal research; Providing legal research in the fields of finance and banking; Providing legal research in the fields of money laundering prevention, terrorism financing prevention, and related legal compliance; Legal intelligence services being legal research; Monitoring regulatory requirements in the fields of finance and banking for regulatory compliance purpose

42 Design and development of computers and software for legal document research; Development of legal databases; Rental of computer legal database software; Development of computer software * in the legal field * and legal database systems; Design of computer software and database systems in the legal field; Design and development of computer software and database systems in the field of legal data; Installation, maintenance and updating of computer software in the field of legal data; Design and development of software for legal database management; Design and development of computer software for legal data extraction systems; Design, maintenance, development and updating of computer software * in the legal field; * Consultancy related to the design and development of computer programs * in the legal field * and legal database systems; Development, updating and maintenance of software and database systems in the legal field; Computer programming * in the legal field; * Consultancy services in the fields of development, updating and maintenance of computer programs and legal database systems * in the legal field; * Hosting of databases in the nature of web site hosting services * in the legal field; * Cloud computing featuring software for use in legal database management; Computer software rental, *, namely, rental of computer database software in the legal field; * [ Software as a service (SaaS) services featuring software for use in database management; ] Provision of search engines for the Internet in the field of legal data; [ Platform as a service (PaaS) featuring computer software platforms for use in legal database management; ] Online data storage, namely, electronic legal data storage

In the statement, " International Classes 9,16,35,41 and 42 " are corrected per the restriction dated April 15, 2021

Trademark Events

May 22, 2023

Invalidation Reviewed - No Action Required By Office

Apr 9, 2023

Partial Invalidation Of Reg Ext Protection Created

Aug 10, 2022

Limitation From The Ib Examined And Entered

Aug 9, 2022

Case Assigned To Post Registration Paralegal

Aug 9, 2022

Correction Under Section 7 ¿ Processed

Aug 9, 2022

Case Assigned To Post Registration Paralegal

Apr 17, 2021

Limitation Of Goods Received From Ib

Mar 14, 2021

Final Decision Transaction Processed By Ib

Feb 20, 2021

Final Disposition Notice Sent To Ib

Feb 20, 2021

Final Disposition Processed

Feb 10, 2021

Final Disposition Notice Created, To Be Sent To Ib

Nov 10, 2020

Registered-Principal Register

Aug 25, 2020

Official Gazette Publication Confirmation E-Mailed

Aug 25, 2020

Published For Opposition

Aug 5, 2020

Notification Of Notice Of Publication E-Mailed

Jul 20, 2020

Assigned To Lie

Jul 17, 2020

Approved For Pub - Principal Register

Jul 17, 2020

Examiner's Amendment Entered

Jul 17, 2020

Notification Of Examiners Amendment E-Mailed

Jul 17, 2020

Examiners Amendment E-Mailed

Jul 17, 2020

Examiners Amendment -Written

Jul 8, 2020

Assigned To Examiner

Jul 6, 2020

Teas/Email Correspondence Entered

Jul 4, 2020

Correspondence Received In Law Office

Jul 4, 2020

Teas Response To Office Action Received

Jan 31, 2020

Assigned To Examiner

Jan 24, 2020

Refusal Processed By Ib

Jan 4, 2020

Non-Final Action Mailed - Refusal Sent To Ib

Jan 4, 2020

Refusal Processed By Mpu

Nov 30, 2019

Non-Final Action (Ib Refusal) Prepared For Review

Nov 29, 2019

Non-Final Action Written

Nov 19, 2019

Application Filing Receipt Mailed

Nov 15, 2019

Assigned To Examiner

Nov 15, 2019

New Application Office Supplied Data Entered

Nov 14, 2019

Sn Assigned For Sect 66a Appl From Ib