USPTO serial 77905321
COMPLIANCEONE
Reviewed by CopyMark Law Group
- Filing date
- Status date
- Registration date
- Feb 1, 2011
- Examiner
- SUAREZ, MARIA VICTORIA
- Law office
- GENERIC WEB UPDATE
What this means
Status 800 means the registration was renewed after acceptable combined Section 8 and Section 9 filings. The mark remains registered for another 10-year term with active federal protection. Calendar the next Section 8 and 9 deadline in 10 years and maintain monitoring.
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Current trademark owner
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Owner
Wolters Kluwer Financial Services, Inc.
St. Cloud, MN
Other trademarks owned by Wolters Kluwer Financial Services, Inc.
Wolters Kluwer Financial Services, Inc.
St. Cloud, MN
Other trademarks owned by Wolters Kluwer Financial Services, Inc.
Wolters Kluwer Financial Services, Inc.
ST. CLOUD, MN
Other trademarks owned by Wolters Kluwer Financial Services, Inc.
Attorney of record
The USPTO lists this attorney as the applicant's representative for correspondence on this application.
Andrew J. Avsec
Andrew J. Avsec Crowell & Moring LLPP.O. Box 10395Chicago, IL 60610UNITED STATESGoods and services
| Class | Description | Status | First use |
|---|---|---|---|
| 009 | 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; Electronic database in the fields of documents and images can be viewed, copied, and printed for purposes of conducting financial transactions recorded on computer media; software that assists in compliance validation related to mortgages, loans, deposit accounts, and retirement accounts | ACTIVE | Mar 4, 2007 |
| 035 | Records management services, namely, providing a database for compiling, storing and accessing financial information; Audit support services, namely, review and analysis of a company's sales, as well as the preparation, organization and presentation of the documents and data requested by a government body, and advice on government regulatory processes, policies and strategy for the financial services industries | ACTIVE | Mar 4, 2007 |
| 036 | 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 | ACTIVE | Mar 4, 2007 |
| 041 | Training of others in the use of computer software for banking, loan and deposit transactions, compliance, disclosure and retirement plans and accounts, and for performing calculations related thereto; Training services in the field of financial management software; Educational services, namely, developing and conducting training courses and distribution of training materials in connection therewith for financial management software as requested by customers; Training services in the field of processing printed, electronic and computer-generated forms and documents used in the financial services industries | ACTIVE | Mar 4, 2007 |
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 Wolters Kluwer Financial Services, Inc.
- Other trademarks owned by Wolters Kluwer Financial Services, Inc.
- Other trademarks owned by Wolters Kluwer Financial Services, Inc.
- Other trademarks in Class 009
- Other trademarks in Class 035
- Other trademarks in Class 036
- Other trademarks in Class 041
- Similar marks named COMPLIANCEONE
- Recently changed USPTO trademarks
- Recently filed trademarks
- Browse all trademark records
Prosecution history
| Date | Code | Event | What it means |
|---|---|---|---|
| Aug 26, 2021 | CHAN | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED | — |
| Aug 26, 2021 | TCCA | TEAS CHANGE OF CORRESPONDENCE RECEIVED | — |
| Aug 26, 2021 | 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. |
| Aug 26, 2021 | REAP | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED | — |
| Aug 26, 2021 | COAR | TEAS CHANGE OF OWNER ADDRESS RECEIVED | — |
| Jun 24, 2021 | NA89 | NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED | — |
| Jun 24, 2021 | 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. |
| Jun 24, 2021 | 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. |
| Jun 15, 2021 | EROP | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED | — |
| May 12, 2021 | PR89 | POST REGISTRATION ACTION MAILED - SEC. 8 & 9 | — |
| May 10, 2021 | APRE | CASE ASSIGNED TO POST REGISTRATION PARALEGAL | — |
| Jan 29, 2021 | E89R | TEAS SECTION 8 & 9 RECEIVED | — |
| Feb 1, 2020 | REM2 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED | — |
| Mar 17, 2017 | NA85 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED | — |
| Mar 17, 2017 | C15A | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. | — |
| Mar 16, 2017 | APRE | CASE ASSIGNED TO POST REGISTRATION PARALEGAL | — |
| Jan 13, 2017 | E815 | TEAS SECTION 8 & 15 RECEIVED | — |
| Feb 1, 2011 | 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. |
| Nov 16, 2010 | NPUB | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED | — |
| Nov 16, 2010 | 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. |
| Oct 12, 2010 | PREV | LAW OFFICE PUBLICATION REVIEW COMPLETED | — |
| Oct 12, 2010 | ALIE | ASSIGNED TO LIE | — |
| Sep 29, 2010 | CNSA | APPROVED FOR PUB - PRINCIPAL REGISTER | — |
| Sep 28, 2010 | TEME | TEAS/EMAIL CORRESPONDENCE ENTERED | — |
| Sep 28, 2010 | CRFA | CORRESPONDENCE RECEIVED IN LAW OFFICE | — |
| Sep 28, 2010 | TROA | TEAS RESPONSE TO OFFICE ACTION RECEIVED | 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 29, 2010 | GNRN | NOTIFICATION OF NON-FINAL ACTION E-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 29, 2010 | GNRT | NON-FINAL ACTION E-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 29, 2010 | CNRT | NON-FINAL ACTION WRITTEN | 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 29, 2010 | DOCK | ASSIGNED TO EXAMINER | — |
| Jan 12, 2010 | MPMK | NOTICE OF PSEUDO MARK MAILED | — |
| Jan 9, 2010 | NWOS | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED | — |
| Jan 8, 2010 | NWAP | NEW APPLICATION ENTERED | — |