USPTO serial 86478681
WHEN YOU HAVE TO BE RIGHT
Reviewed by CopyMark Law Group
- Filing date
- Status date
- Registration date
- Oct 4, 2016
- Examiner
- SONNEBORN, TRICIA L
- Law office
- TMO LAW OFFICE 110
What this means
This registration is in, or will soon enter, a USPTO maintenance window. Missing a Section 8 or Section 9 filing can cancel the registration.
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Owner
WOLTERS KLUWER GLOBAL BRAND B.V.
ALPHEN AAN DEN RIJN, NL
Alphen Aan Den Rijn, NL
Alphen Aan Den Rijn, NL
ALPHEN AAN DEN RIJN, NL
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 | 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 | ACTIVE | Mar 31, 2015 |
| 016 | 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 | ACTIVE | Dec 31, 2014 |
| 035 | 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 | ACTIVE | Mar 31, 2013 |
| 036 | 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 | ACTIVE | Mar 31, 2013 |
| 038 | 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 | ACTIVE | Mar 31, 2013 |
| 041 | 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 | ACTIVE | Mar 31, 2013 |
| 042 | 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 | ACTIVE | Mar 31, 2013 |
| 044 | 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 | ACTIVE | Mar 31, 2013 |
| 045 | 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 | ACTIVE | Mar 31, 2013 |
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 GLOBAL BRAND B.V.
- Other trademarks owned by Wolters Kluwer N.V.
- Other trademarks owned by Wolters Kluwer N.V.
- Other trademarks owned by Wolters Kluwer N.V.
- Other trademarks in Class 009
- Other trademarks in Class 016
- Other trademarks in Class 035
- Other trademarks in Class 036
- Other trademarks in Class 038
- Other trademarks in Class 041
- Other trademarks in Class 042
- Other trademarks in Class 044
- Other trademarks in Class 045
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Prosecution history
| Date | Code | Event | What it means |
|---|---|---|---|
| Aug 10, 2026 | E89R | TEAS SECTION 8 & 9 RECEIVED | — |
| Oct 4, 2025 | REM2 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED | — |
| Mar 12, 2025 | ASGN | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP | — |
| Feb 21, 2023 | NA85 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED | — |
| Feb 21, 2023 | C15A | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. | — |
| Dec 3, 2022 | APRE | CASE ASSIGNED TO POST REGISTRATION PARALEGAL | — |
| May 24, 2022 | E815 | TEAS SECTION 8 & 15 RECEIVED | — |
| Oct 4, 2021 | REM1 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED | — |
| Aug 26, 2021 | CHAN | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED | — |
| Aug 26, 2021 | TCCA | TEAS CHANGE OF CORRESPONDENCE RECEIVED | — |
| Aug 26, 2021 | ECDR | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS | — |
| 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 | — |
| Jan 8, 2018 | CORV | REVIEW OF CORRESPONDENCE COMPLETE - INFORMATION MADE OF RECORD | — |
| Dec 29, 2017 | EWAF | TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS | — |
| Oct 4, 2016 | 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 30, 2016 | SUNA | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED | — |
| Aug 29, 2016 | CNPR | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED | — |
| Aug 8, 2016 | SUPC | STATEMENT OF USE PROCESSING COMPLETE | — |
| Aug 8, 2016 | AITU | CASE ASSIGNED TO INTENT TO USE PARALEGAL | — |
| Jul 14, 2016 | IUAF | USE AMENDMENT FILED | — |
| Jul 14, 2016 | EISU | TEAS STATEMENT OF USE RECEIVED | The applicant filed a Statement of Use with specimens showing the mark in actual commerce. The USPTO will review the filing for compliance. If accepted, the mark can proceed to registration; if deficient, the USPTO may issue a requirement or office action. |
| Jan 16, 2016 | EXRA | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED | — |
| Jan 14, 2016 | EX1G | SOU EXTENSION 1 GRANTED | — |
| Jan 14, 2016 | EXT1 | SOU EXTENSION 1 FILED | — |
| Jan 14, 2016 | EEXT | SOU TEAS EXTENSION RECEIVED | The applicant requested more time to file a Statement of Use before the Notice of Allowance deadline. Each extension typically adds six months. A limited number of extensions are available for intent-to-use applications not yet in use. |
| Jul 14, 2015 | NOAM | NOA E-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. |
| May 19, 2015 | NPUB | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED | — |
| May 19, 2015 | 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. |
| Apr 29, 2015 | NONP | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED | — |
| Mar 31, 2015 | CNSA | APPROVED FOR PUB - PRINCIPAL REGISTER | — |
| Mar 25, 2015 | DOCK | ASSIGNED TO EXAMINER | — |
| Dec 17, 2014 | NWOS | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED | — |
| Dec 16, 2014 | NWAP | NEW APPLICATION ENTERED | — |