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WHEN YOU HAVE TO BE RIGHT

Status

Registered

Status Code

702

Status Date

Tuesday, February 21, 2023

Serial Number

86478681

Registration Number

5055264

Registration Date

Tuesday, October 4, 2016

Mark Type

4000

Filing Date

Friday, December 12, 2014

Published for Opposition

Tuesday, May 19, 2015

Trademark Owner History

Wolters Kluwer N.V. - Original Registrant

Classifications

41 Publishing services, namely, publishing of books and handbook in the field of statutes, case law and regulations for government entities; Publishing of books, treatises, and articles, for academics, accountants, lawyers, business professionals, tax professionals, medical and health professionals, and human resources professionals; Online publication of bulletins, books, magazines, journals, brochures, manuals, newsletters, guides and reports in the fields of law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services; Providing a website featuring non-downloadable publications, videos, webcasts, and course materials, namely, tests, via websites all in the fields of law and business; Providing training and webinars on the use of software and databases; Providing training and education classes and webcasts in the fields of legal and business research; educational services, namely, providing medical and patient educational seminars, courses, classes, intellectual exchanges, and presentations to physicians and consumers by means of an integrated on-line network via the internet; education seminars on the topic of business management; educational services, namely, providing live and video, audio, on-line workshops and courses for preparation for the bar examination; educational conferences in the field of healthcare

9 Application software used for accessing or retrieving state, federal, and international laws, regulations, information, and data in the fields law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services;for use on mobile devices; downloadable computer software used for accessing or retrieving state, federal, and international laws, regulations, information, and data in the fields law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services; downloadable computer software for tax preparation; downloadable electronic filing software programs for insurance agent licensing, for preparation of and filing of multi-jurisdictional documents, for electronic ordering of documents, for report generation, and for filing federal and state income tax returns, as well as sales-tax, use-tax, and other tax-form, legal-form, and financial-form filing computer programs; downloadable electronic publications, namely, books, journals, periodicals, and magazines in the fields law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services; computer application software for mobile devices, namely, software for displaying electronic publications; computer software for processing mortgage, loan, deposit account, and retirement account applications; computer software that allows user to generate forms relating to loans, saving accounts, checking accounts, health savings accounts, certificates of deposit, and retirement accounts

16 Pamphlets, newsletters, magazines, journals, loose-leaf publication papers, soft-cover and hard-cover books, topical reports, printed guides, manuals, and bulletins, all in the fields of law, tax, accounting, human resources, health, medicine, business, finance, insurance, banking, risk management and corporate audit services

38 Electronic transmission of documents and forms to parties in the real estate field for use in real estate sales transactions by means of a global computer information network; electronic transmission of documents between attorneys and courts via computer; providing access to computer databases for corporate filing information and corporate records management; Providing on-line chat rooms, message boards, and questions and answer forums for transmission of messages among computer users concerning banking, loans and deposit transactions, retirement plans and accounts, and data privacy and operational requirements for financial service providers, e-mail notification and forwarding services; communication by computer terminals, namely, electronic transmission of data, messages, and documents via computer terminals

36 Providing a website for finance and insurance professionals featuring information and on-line searchable electronic databases in the fields of tax payment processing services, finance, insurance, and insurance case management; Providing an online computer database designed to enable users to research, retrieve, and locate documents with reference to filings to a securities and exchange commission in the fields of tax payment processing, finance, insurance, and insurance case management; Calculating and providing personalized financial information via a controlled access subscriber service for professional financial providers rendered via a global computer network; Providing an online computer research database for insurance and financial professionals featuring information about insurance agencies; providing information via a global computer network in the field of finance, namely, providing mortgage lenders with the on-line means of retrieving current compliance information about licensing requirements, escrow payment responsibilities, recording requirements, assignments, fees, foreclosures, security agreements, disclosure requirements, record requirements, record retention and avoidance of predatory lending practices; providing an on-line computer website that facilitates refund anticipation loans for auto dealer customers; electronic loan preparation services; Financial management and financial consulting services, namely, compliance in the financial services industries; Compliance consulting services concerning financial requirements for the financial services industries; Providing a database for monitoring and generating reports on financial information for the financial services industries; Providing a web site that assists financial professionals in the management of retirement accounts; Providing a secured access database through which documents and images can be viewed, copied, and printed for purposes of conducting financial transactions; providing an online computer database in the field of financial management; providing an interactive website featuring information in the field of mortgage processing; Financial information provided by electronic means; Financial information processing; Financial research and information services; Providing financial information; Financial risk management

35 Internal and external business auditing; consults in the field of commercial risk management; business information services in the field of business contracts, business finances, business governance and corporate filings, business taxes, accounting and auditing, business knowledge management and business management of human resources, internal and external auditing, and commercial risk management; Electronic tax filing services; Computer services, namely, providing a database featuring information in the field of tax assessments, tax preparation, tax legislation, tax forms, and tax planning for use in research; providing a website featuring information in the fields of tax consultation, accounting, human resources, business consultation, corporate-management assistance services, and businesscase management; Providing a web site featuring information in the field of human resources; Providing a web site featuring information in the fields of tax consultation, accounting, business consultation, corporate management assistance services, and business case management; Business risk assessment services; Business risk management; Providing a database featuring tax information

45 Public document filing services; Preparing and filing incorporation papers; Providing an online computer database for insurance professionals featuring state and federal regulatory compliance requirements information about requirements and regulations regarding insurance agency licenses; Providing on-line information and news in the field of law; Providing an interactive website in the field of law; Providing a website featuring information in the fields of law and legal case management; Legal research, namely, trademark law research and trademark searching, watch, clearance, and maintenance, services, provided via a global computer network on a web-based Internet trademark research system; Legal services in the nature of providing searches of the Uniform Commercial Code; Computerized general research services for others in trademark legal research; Information services in the field of regulatory compliance in the insurance, banking, environmental, health and medical fields; filing public documents for others in the nature of tax liens, fixture liens, vehicle title liens, judgment liens, court and bankruptcy documents, UCC filings and mortgage recordings; Providing information in the field of regulatory compliance; Legal research; providing databases featuring legal information for legal research; providing a database featuring information in the field of international, federal and state tax laws; providing information for use by health care facility pharmacies in meeting regulatory standards for the storage and inspection of medications and management reporting for same

44 Medical and health information services; Providing a website for medical and health professionals featuring information in the fields of health, nursing and medicine; online searchable databases featuring pharmaceutical information relating to diagnostic, prophylactic and therapeutic properties for professionals in the pharmaceutical industry; providing an on-line computer database featuring pharmaceutical drug information relating to diagnostic, prophylactic and therapeutic properties; online searchable databases featuring medical and health publications

42 Application service provider (ASP) featuring software for use in tax compliance, tax preparation and tax management; providing search engines for obtaining data from databases containing professional publications, journals, laws, regulations, policies, forms, checklists, case studies, and legal analysis on global computer networks; Providing and non-downloadable software designed to enable users to file documents with reference to filings to a securities and exchange commission; Providing temporary use of non-downloadable dynamic linking software online that enables users to link bibliographical database search citations to full text publications in real time via web-based meta data querying; computer information services, namely, providing an interactive website featuring technology that allows users to access computerized bibliographic databases in on-line electronically readable formats; application service provider (ASP) featuring software for managing lien-related documentation and information; searching and retrieving information in the nature of public documents from web sites and other resources available on computer networks for information in the nature of public documents, tax liens, fixture liens, vehicle title liens, judgment liens, court and bankruptcy documents, UCC filings, mortgage recordings, for others; providing temporary use of an on-line non-downloadable software for monitoring and managing corporate governance, risk data and regulatory compliance; application service provider (ASP) featuring software for loan origination, processing, underwriting, and management; application service provider (ASP) services for mortgage professionals featuring computer software that allows users to capture, upload, review, manage, and share documents, data and information; providing use of non-downloadable software for use in database management in the field of mortgage underwriting; providing a secured-access website that gives mortgage professionals the ability to upload, view, copy, print, download, share and manage access to documents and information; providing an online computer website that allows users to store, search, share and manage mortgage documents and records; non-downloadable financial software that analyzes legal expenditures; application services provider featuring software for providing an on-line database in the field of financial transaction processing to upload transactional data, provide statistical analysis, an produce reports; application service provider (ASP) featuring software for use in securities law research; Computer services, namely, cloud hosting provider services; Design, development and implementation of software; providing temporary use of on-line non-downloadable software for tax calculating, preparing and filing

Trademark Events

Feb 21, 2023

Notice Of Acceptance Of Sec. 8 & 15 - E-Mailed

Feb 21, 2023

Registered - Sec. 8 (6-Yr) Accepted & Sec. 15 Ack.

Dec 3, 2022

Case Assigned To Post Registration Paralegal

May 24, 2022

Teas Section 8 & 15 Received

Oct 4, 2021

Courtesy Reminder - Sec. 8 (6-Yr) E-Mailed

Aug 26, 2021

Applicant/Correspondence Changes (Non-Responsive) Entered

Aug 26, 2021

Teas Change Of Correspondence Received

Aug 26, 2021

Teas Change Of Domestic Representatives Address

Aug 26, 2021

Attorney/Dom.Rep.Revoked And/Or Appointed

Aug 26, 2021

Teas Revoke/App/Change Addr Of Atty/Dom Rep Received

Aug 26, 2021

Teas Change Of Owner Address Received

Jan 8, 2018

Review Of Correspondence Complete - Information Made Of Record

Dec 29, 2017

Teas Withdrawal Of Attorney Received-Firm Retains

Oct 4, 2016

Registered-Principal Register

Aug 30, 2016

Notice Of Acceptance Of Statement Of Use E-Mailed

Aug 29, 2016

Allowed Principal Register - Sou Accepted

Aug 8, 2016

Statement Of Use Processing Complete

Jul 14, 2016

Use Amendment Filed

Aug 8, 2016

Case Assigned To Intent To Use Paralegal

Jul 14, 2016

Teas Statement Of Use Received

Jan 16, 2016

Notice Of Approval Of Extension Request E-Mailed

Jan 14, 2016

Sou Extension 1 Granted

Jan 14, 2016

Sou Extension 1 Filed

Jan 14, 2016

Teas Extension Received

Jul 14, 2015

Noa E-Mailed - Sou Required From Applicant

May 19, 2015

Official Gazette Publication Confirmation E-Mailed

May 19, 2015

Published For Opposition

Apr 29, 2015

Notification Of Notice Of Publication E-Mailed

Mar 31, 2015

Approved For Pub - Principal Register

Mar 25, 2015

Assigned To Examiner

Dec 17, 2014

New Application Office Supplied Data Entered

Dec 16, 2014

New Application Entered