USPTO serial 75828914
ELEMENT 5
Reviewed by CopyMark Law Group
- Filing date
- Status date
- Registration date
- Nov 5, 2002
- Examiner
- BROWN, BARBARA TROFFKIN
- Law office
- GENERIC WEB UPDATE
What this means
Status 710 means the registration was cancelled because a required Section 8 declaration of continued use was not filed within the deadline (including any grace period). The federal registration is no longer active. Evaluate filing a new application if you still use the mark, or petition if cancellation was erroneous. Consult counsel on remaining common-law rights.
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Owner
Element 5 Informationstechnologie und -dienstleistungen AG
50677 Koln, DE
Other trademarks owned by Element 5 Informationstechnologie und -dienstleistungen AG
COLOGNE, DE
Element 5 Informationstechnologie und -dienstleistungen AG
50677 Koln, DE
Other trademarks owned by Element 5 Informationstechnologie und -dienstleistungen AG
Element 5 Informationstechnologie und -dienstleistungen AG
50677 Koln, DE
Other trademarks owned by Element 5 Informationstechnologie und -dienstleistungen AG
Attorney of record
The USPTO lists this attorney as the applicant's representative for correspondence on this application.
Kevin L. Crudden
Kevin W. Cyr Billion & Armitage7401 Metro Blvd.Suite 425Minneapolis, MN 55439Goods and services
| Class | Description | Status | First use |
|---|---|---|---|
| 009 | Apparatus, namely, servers for the reproduction and transmission of data over the Internet; software, namely, security, encryption and data protection software; software for generating sales statistics and data case management in the field of direct software sales; magnetic data carriers, namely, recordings disks, compact disks; CD-ROMs, all which features software for security, encryption and data protection, for generating sales statistics, and for data case management in the field of direct software sales; sales process automation software, namely, software to integrate and manage software distribution processes, track problems and generate production reports, computer software for tracking distribution of goods and for providing information about the production and distribution of goods and technical manuals sold as a unit that may be downloaded from the Internet, and computers | SECTION 8 - CANCELLED | Jun 19, 2001 |
| 035 | Business management; business management and office functions, namely, customer data processing, generating sales statistics for others, providing online sales statistics, tracking sales of products and services for others, invoicing services for others; management and consultation services, namely providing technical assistance to business with online electronic communication networks; online retail services featuring a full line of computer software and accompanying manuals, books, computer hardware, computer peripherals, printers, central processing units, and audio and video products, cassettes, CD-ROMs, and DVDs; online ordering services featuring a full line of computer software and accompanying manuals, books computer hardware, computer peripherals, printers, central processing units, and audio and video products, cassettes, CD-ROMs and compact disks; and providing online order forms | SECTION 8 - CANCELLED | Jun 19, 2001 |
| 036 | Payment processing services, and providing secured credit-card payment processing via the Internet | SECTION 8 - CANCELLED | Jun 19, 2001 |
| 038 | Telecommunication services, namely, telephone communication services for connecting clients of software-producers with a call-center and/or providing e-mail service worldwide; electronic transmission of software; and providing call center services | SECTION 8 - CANCELLED | Jun 19, 2001 |
| 042 | Providing technical support services in the nature of troubleshooting of computer hardware and software problems related to automatic billing and e-mail operations; translation services, namely, providing multi-lingual support by e-mail and through call-centers; computer services, namely downloading, upgrading, configuring and diagnosing software; installation of computer software via the Internet; maintenance of computer software in connection with the Internet | SECTION 8 - CANCELLED | Jun 19, 2001 |
Related trademarks
CopyMark links this record to cited §2(d) serials, the owner's other marks, Nice classes, similar mark names, and recently changed USPTO applications.
- Other trademarks owned by Element 5 Informationstechnologie und -dienstleistungen AG
- Other trademarks owned by DIGITAL RIVER GMBH
- Other trademarks owned by Element 5 Informationstechnologie und -dienstleistungen AG
- Other trademarks owned by Element 5 Informationstechnologie und -dienstleistungen AG
- Other trademarks in Class 009
- Other trademarks in Class 035
- Other trademarks in Class 036
- Other trademarks in Class 038
- Other trademarks in Class 042
- Similar marks named ELEMENT 5
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Prosecution history
| Date | Code | Event | What it means |
|---|---|---|---|
| May 19, 2023 | CAEX | CANCELLED SEC. 8 (10-YR)/EXPIRED SECTION 9 | — |
| Nov 5, 2021 | REM2 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED | — |
| Jun 9, 2021 | ASCK | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY | — |
| Sep 8, 2013 | TCCA | TEAS CHANGE OF CORRESPONDENCE RECEIVED | — |
| Feb 27, 2012 | NA89 | NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED | — |
| Feb 27, 2012 | RNL1 | REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) | The trademark registration was renewed for another 10-year term after acceptable maintenance filings. RNL1, RNL2, and RNL3 indicate which renewal cycle (first, second, or third 10-year term) was recorded. The registration remains active. |
| Feb 27, 2012 | 89AG | REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED | The USPTO accepted your combined Section 8 declaration and Section 9 renewal application. The registration is renewed for another 10-year term. The next combined maintenance filing will be due at the following 10-year anniversary. |
| Feb 27, 2012 | APRE | CASE ASSIGNED TO POST REGISTRATION PARALEGAL | — |
| Jan 19, 2012 | E89R | TEAS SECTION 8 & 9 RECEIVED | — |
| Mar 29, 2008 | C15A | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. | — |
| Mar 21, 2008 | PLGL | ASSIGNED TO PARALEGAL | — |
| Mar 17, 2008 | E815 | TEAS SECTION 8 & 15 RECEIVED | — |
| Mar 5, 2008 | ARAA | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED | This event means the applicant filed a response to a USPTO Office Action — typically arguments, amendments, or evidence addressing the examiner's objections. The USPTO will review the response and either allow the mark to proceed or issue another action. |
| Mar 5, 2008 | REAP | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED | — |
| Mar 5, 2008 | ASGN | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP | — |
| Oct 5, 2007 | CFIT | CASE FILE IN TICRS | — |
| Jan 9, 2006 | TCCA | TEAS CHANGE OF CORRESPONDENCE RECEIVED | — |
| Oct 17, 2005 | PAPER RECEIVED | — | |
| Nov 5, 2002 | R.PR | REGISTERED-PRINCIPAL REGISTER | Your trademark is registered on the Principal Register — the strongest form of federal trademark protection. You may use the ® symbol for the covered goods and services. Maintenance filings (Section 8 and renewals) are required to keep the registration alive. |
| Aug 15, 2002 | CNPR | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED | — |
| Aug 13, 2002 | DOCK | ASSIGNED TO EXAMINER | — |
| Aug 7, 2002 | SUPC | STATEMENT OF USE PROCESSING COMPLETE | — |
| Jul 25, 2002 | ZZZX | PREVIOUS ALLOWANCE COUNT WITHDRAWN | — |
| Jul 16, 2002 | TCCA | TEAS CHANGE OF CORRESPONDENCE RECEIVED | — |
| Jul 2, 2002 | CNPR | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED | — |
| May 17, 2002 | EX1G | SOU EXTENSION 1 GRANTED | — |
| May 15, 2002 | IUAF | USE AMENDMENT FILED | — |
| May 15, 2002 | EXT1 | SOU EXTENSION 1 FILED | — |
| May 15, 2002 | PAPER RECEIVED | — | |
| Jan 8, 2002 | NOAM | NOA MAILED - SOU REQUIRED FROM APPLICANT | A Notice of Allowance means your intent-to-use application cleared examination and opposition but is not registered yet. You must file a Statement of Use showing the mark in commerce, or request an extension, before the deadline — usually six months from the notice date. |
| Oct 16, 2001 | PUBO | PUBLISHED FOR OPPOSITION | Your mark was published in the USPTO Official Gazette for a 30-day opposition window. During that period, third parties who believe they would be harmed can file an opposition. If no opposition is filed, prosecution usually continues toward registration or a Notice of Allowance. |
| Sep 26, 2001 | NPUB | NOTICE OF PUBLICATION | — |
| Aug 13, 2001 | CNSA | APPROVED FOR PUB - PRINCIPAL REGISTER | — |
| Aug 10, 2001 | CNEA | EXAMINERS AMENDMENT MAILED | — |
| Feb 14, 2001 | CNRT | NON-FINAL ACTION MAILED | A non-final Office Action means the USPTO examining attorney has raised at least one issue with your trademark application but has not made a final decision. You usually have three months to respond with arguments, amendments, or evidence. Missing the deadline can abandon the application. |
| Sep 21, 2000 | CRFA | CORRESPONDENCE RECEIVED IN LAW OFFICE | — |
| Mar 23, 2000 | CNRT | NON-FINAL ACTION MAILED | A non-final Office Action means the USPTO examining attorney has raised at least one issue with your trademark application but has not made a final decision. You usually have three months to respond with arguments, amendments, or evidence. Missing the deadline can abandon the application. |
| Mar 11, 2000 | DOCK | ASSIGNED TO EXAMINER | — |
| Mar 8, 2000 | DOCK | ASSIGNED TO EXAMINER | — |
| Mar 8, 2000 | DOCK | ASSIGNED TO EXAMINER | — |