ONEYTRUST Trademark - Serial Number 79266207

Serial Number
79266207
Word Mark
ONEYTRUST
Filing Date
Status
REGISTERED
Status Date
2020-05-19
Registration Number
6055677
Registration Date
2020-05-19
Type of Mark
Service Mark
Mark Drawing
Illustration: Drawing with word(s)/letter(s)/number(s) in Stylized form Typeset
Published for Opposition Date
2020-03-03
Attorney Name
Mary Margaret L. O'Donnell

Statements

Indication of Colors claimed

The color(s) grey (pantone cool grey 6 c) and purple (pantone 2612 c) is/are claimed as a feature of the mark.

Description of Mark

The mark consists of the word "ONEYTRUST" with "ONEY" in grey and "TRUST" in purple.

Goods and Services

(009) Apparatus for recording, transmission and reproduction of sound or images; magnetic recording media, namely blank magnetic discs; magnetic or optical data media, namely, blank magnetic and optical disks; data storage devices, namely, blank discs, floppies, tapes, cassettes; telecommunication apparatus, namely, telephones, mobile phones, computers, tablet computers, wireless receivers, portable media players, handheld computers; data processing apparatus; computer hardware and computer peripherals; recorded and downloadable computer software for use in database management, for use as a spreadsheet, for word processing; blank floppy computer disks; data processing apparatus; optical readers; graphic code readers; encoded integrated circuit cards containing programming used to store images, connect multimedia home devices; magnetic coded cards for use as electronic tickets and for use in financial transactions; magnetically encoded credit and payment cards; magnetic identifying cards; magnetically encoded pre-paid telephone cards; mechanisms for coin-operated apparatus; automatic coin and bank note dispensers; electric, mechanical, electromechanical and electronic payment apparatus and equipment, namely, multi-functional electronic payment terminals; apparatus and equipment for payment by means of recognition of registration numbers and other elements for identification of goods and persons, namely, optical character recognition apparatus, fingerprint imagers, fingerprint scanners; electronic payment terminals; electronic wallets being cryptocurrency hardware wallets; automated check-reading apparatus; apparatus, namely, recorded computer software used for securing, identifying and authenticating orders given by computers or any type of computer or telephone terminal; apparatus, namely, computer hardware and recorded software used for securing and authenticating payment orders made by computers or by any type of computer or telephone terminal; apparatus, namely, computer hardware and recorded software used for securing bank operations and electronic data transfers; biometric identification and authentication apparatus and systems, namely, biometric scanners, biometric identification apparatus; apparatus and instruments for analysis and recognition of fingerprints being fingerprint imagers, fingerprint scanners; biometric sensors being biometric identification apparatus; authentication, identification and access control equipment and apparatus, namely, biometric identification apparatus, fingerprint scanners; identification computer terminals and recorded software using biometric data; computer hardware and downloadable and recorded encryption software featuring encryption keys, digital certification of software; downloadable and recorded software for digital signatures, downloadable and recorded software intended for impenetrable storage of data and retrieval and transmission of confidential customer information used by individuals and banking and financial institutions; computer hardware and downloadable and recorded software that facilitates the identification and authentication of near-field communication (NFC) devices and radio-frequency identification devices (RFID); downloadable and recorded software applications for telephones, mobile phones, computers, tablet computers, wireless receivers, portable media players, handheld computers for use in conjunction with contactless payment terminals enabling vendors to accept contactless mobile business transactions, contactless loyalty bonus presentations, contactless discount coupons, discounts, rebates, vouchers and special offers; downloadable and recorded software applications for telephones, mobile phones, computers, tablet computers, wireless receivers, portable media players, handheld computers enabling vendors to deliver coupons, discounts, rebates, vouchers and special offers directly from consumers' mobile telecommunication devices delivered by contactless communication (RFID or NFC); magnetic identification tickets and cards especially using biometrics; magnetically encoded loyalty cards; magnetic identity cards being magnetic identifying cards; downloadable and recorded software applications for computers and mobile telephones enabling payment operations, particularly with mobile telephones; downloadable and recorded software applications for computers and mobile telephones enabling payment operations with electronic money, particularly with mobile telephones; downloadable and recorded software applications for computers and mobile telephones for secure payment, based in particular on the acquisition of a QR code; downloadable and recorded software applications for computers and mobile telephones enabling automatic management of discount coupons, collection and management of loyalty cards, dematerialization of cash register receipts; downloadable and recorded software applications for computers and mobile telephones for storing documents and information and receiving promotional offers; downloadable and recorded software applications for dealing directly with customers, in terms of sales, marketing or services

(035) Advertising; publication of advertising texts; dissemination of advertising material in the nature of leaflets, prospectuses, printed matter, samples; dissemination of advertisements; advertising agencies; rental of advertising material; rental of advertising space; rental of advertising time on all communication media; marketing; online advertising on a computer network; advertising by mail order; writing of advertising texts; telephone marketing services; production of advertising films; business operation assistance to industrial or commercial companies; commercial business management; rental of vending machines; arranging newspaper subscription services; electronic newspaper subscription services; telephone subscription services; arranging subscriptions to a mobile telephone service or to a radio paging service; arranging subscriptions to telecommunication services, to a global telecommunication network, the Internet or private access network intranets, to a provider of access to a data transmission or telecommunication computer network; arranging subscriptions to a database or multimedia server center; arranging subscriptions to telematic services, to data transmission services by telematic means; arranging subscriptions to a central service providing access to a computer network for telecommunication or data transmission; arranging subscriptions to television or radio programs, to videograms, sound recordings, audiovisual programs; arranging subscription service to computer databases; administrative business management and supervision of multimedia networks and telecommunication networks; commercial information agencies; cost price analysis; market study; market research; market opinion polling; price comparison services; compilation of statistics; public relations; demonstration of goods; presentation of goods on all communication media for retail purposes, namely, sales promotion; commercial information and advice for consumers being consumer advice shop; tracking, analysis, forecasting and reporting the behavior of cardholders for business purposes; administrative processing of purchase orders; organization of exhibitions and trade fairs for commercial or advertising purposes; computer file management; collection and systematization of data in a central file; business information search in computer files for others; document reproduction; compilation and management of databases on consumers for marketing and consumer response analysis; commercial information and commercial advice services for consumers in the choice of products and services; promotional services being commercial promotion in all forms and on all media including via a computer communication network such as the Internet or Intranet and particularly by providing privileged user cards; hosting of commercial events for promotional and advertising purposes; customer relationship management aimed at collecting, processing, analyzing information relating to customers and potential customers, for building customer loyalty by offering the best service; promotional offer services, namely, sales promotion for others; retail store services for credit cards and debit cards provided via mobile telecommunication; retail store services for credit cards and debit cards provided online or via other electronic means or networks using electronically digitized information; business organization and business management of commercial operations for customer loyalty schemes particularly by means of loyalty cards; sales promotion for others by issuing loyalty cards enabling the accumulation of purchase points and the awarding of purchase vouchers, promotional offers and gifts; sales promotion for others through the issuance of promotional offers to customers using a payment card or a means of electronic payment, particularly via a computer or a mobile telephone; commercial research services

(036) Insurance services, namely insurance agencies, insurance consultancy, insurance carrier services; casualty insurance underwriting services; financial and monetary affairs, namely, financial information and banking services; financing and lending services; stock exchange brokerage; capital investment; electronic payment services being electronic processing and subsequent transmission of bill payment data, processing electronic payments made through prepaid cards; electronic payment services involving electronic processing and subsequent transmission of bill payment data of bank, credit, debit, payment, stored value prepaid card services and other cards or checks providing financial advantages; online banking services accessible via the Internet or any telecommunication network including via mobile telephone; issuance of gift cards for payment and gift checks for payment; issuance of travelers' checks; consultancy relating to financial and insurance matters; financial valuation and financial risk management services for third parties in the field of consumer credit; financial sponsorship of sporting events, entertainment events; credit card, money order, loyalty coupon, check, prepaid cards and credit or debit card processing services for the supply of gifts and any goods or services particularly via computer networks or by telephone; financial transaction services, namely providing secure payment commercial transactions and financing services made available via a telephone or a computer terminal; payment verification services using biometric authentication; financial services, namely processing electronic payments through loyalty cards or payment cards; loyalty program payment processing services; promotional loyalty coupon payment processing services; payment authorization services, namely, processing of payment transactions; processing services for virtual currency transactions on behalf of third parties; financial management of payment means, particularly redeeming the vouchers of others for payment of goods or services; sales promotion for others through the issuance of loyalty cards or payment cards for collection of purchase points and the award of purchase vouchers, promotional offers and gifts; setting up in the nature of mutual fund development, establishing mutual funds for others and financial management of mutual funds, investment of funds; financial management of employee compensation plans, financial management of employee retirement plans, retirement investment management; real estate affairs, namely, real estate consultation, real estate management consultation; real estate agencies; management, rental and valuation of real property being apartments and offices; rent collection; arranging of real estate leasing agreements; real estate appraisal; real estate brokerage, real estate consultancy

(038) Telecommunications consultation; information relating to telecommunications; technical consultancy in the field of telecommunications, namely, technical consulting in the field of audio, text and visual data transmission and communication; telecommunication services, multimedia telecommunications and telecommunications services related to electronic commerce intended for the banking and finance fields, namely, transfer of data by telecommunications; news agencies, namely transmission of news items to news reporting organizations; press agencies, namely, news agency services for electronic transmission; communications by radio, by telegram; television program broadcasting; broadcasting of radio and television programs; telephone communication services; mobile radio telephony services; wireless telephone mobile telecommunication services available via a prepaid card system; telephone communication services including call transfer, call forwarding, directory inquiry, voice messaging and video messaging services; rental of telecommunication apparatus, message transmission apparatus, fax machines, telephones, modems; electronic message transmission; facsimile transmission; communications by computer terminals; communications by fiber-optic networks; computer-aided transmission of messages and images; transmission of information contained in databases; electronic messaging; electronic transmission of messages, information and data, on line or off line, from data processing systems or computer network systems, including the global telecommunication network called the Internet, and the global network called the World Wide Web; provision of access to telecommunication networks, to a global computer network, including the global network called the Internet; electronic bulletin board services; teleconferencing services; rental of access time to a database server center; rental of access time to databases and computer database server centers, wireless networks, short or long distance, telephone, radio telephone, global communication networks or to a private or restricted network, to a server center for global communication or to a private or restricted network; provision of access to databases; information transmission via electronic communications networks from a data bank stored on computers or on the Internet in the field of financial services; providing telecommunication channels for home-shopping services; provision of access to discussion forums on the Internet; providing multiple user access to a secure information network for the transfer and broadcast of a wide range of information in the field of financial services; secure transmission of data, particularly with access codes; directory inquiry services being telephone call completion services for directory assistance customers; provision of access to a mobile telephone network including a subscription or package deal; provision of access to computer or telematic databases and database server centers; teleconferencing services; provision of access to web sites for digital music on the Internet; provision of access to Internet websites, namely, files in MP3 format; provision of access to film downloading and viewing services; transmission services for video games, digital data, software, ringtones, images, animated images, films, musical files; transmission of photographs, images, moving images, music, sound, games, ringtones by mobile telephone; transmission of photographs, images, moving images, music, sounds via a local wireless network; transmission of photographs, images, moving images, music, sounds, games, ringtones via a radio communication network; transmission of music, images, moving images, sounds, data, games, ringtones by means of downloading; audiovisual program broadcasting via computer terminals; audiovisual program broadcasting via a global communication network of the Internet type or private or reserved access being the intranet, or cable, or satellite, or VHF; telephone communication services for telephone assistance and call centers; on-line information services relating to telecommunications; providing online discussion groups, namely, providing on-line chat rooms for social networking

(042) Technical research in the field of computer software design using biometrics; quality control for others; surveying; technical project study, namely, conducting feasibility studies in the field of new technologies, new software design; technical project studies in the fields of websites, e-commerce, electronic banking, electronic payment and ticketing; technical studies relating to the provision of Internet sites and computer systems especially for electronic trading and electronic payments; programming for computers; computer system design; software development and design, installation, updating and maintenance; development and design, installation, updating, maintenance and rental of software in the fields of finance, banking, currency, real estate, stock exchange, saving and insurance; providing temporary use of online, non-downloadable software for processing electronic payments; providing temporary use of online, non-downloadable authentication software to control access and communication with computers and computer networks; rental of computers, of computer software; computer and software consultancy; technical consultancy relating to information technology; analysis of technology requirements for the installation of computer systems; recovery of computer data; creation and maintenance of websites for third parties; rental of web servers; hosting of web sites; provision of Internet search engines; duplication of computer programs; conversion of computer programs and data other than physical conversion; conversion of data or documents from physical to electronic media; research and development of new products for third parties; protection services, namely, on-line scanning, detecting, quarantining and eliminating of computer viruses and third-party intrusions into computers or computer networks; studies, consultancy, information, technical advice and support being maintenance of computer software to prevent computer risks, providing computer security threat analysis with respect to computer security; development of computer systems enabling payment operations via the Internet, by computer or mobile telephone; development of computer systems enabling payment operations using electronic money; design of software applications for computers and mobile telephones enabling secure payment operations; financial transaction authentication services, namely, authentication and validation of digital certificates given to bank cards, integrated computer software on bank cards, terminals and payment systems by bank cards as well as production sites for such cards with regard to their operation and their security characteristics; monitoring of computer systems for the detection of unauthorized access or data protection breaches; electronic monitoring of credit card transactions for the detection of fraud via the Internet; identity verification and authentication of the person making an electronic payment, namely, electronic signature verification services using technology to authenticate user identity for electronic payments; security and anti-fraud services with respect to e-commerce and electronic payments, namely, computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability; technical research services in the field of computer security software design

(045) Escorting in society, namely, chaperoning; dating services; civil protection being guard services; night surveillance agencies; monitoring of burglar alarms; detective agencies; personal, physical security consultancy; fire-fighting services; rental of fire extinguishers, fire alarms and safes; opening of security locks; copyright management; industrial and intellectual property licensing; legal services; legal services intended for the protection of an individual's reputation on global communication networks such as the Internet or private or restricted access networks such as the Intranet or Extranet; litigation services; arbitration services; legal or judicial research; research services for legal documents; mediation; dispute resolution services, especially within the framework of e-commerce; registering domain names in computer files being legal services; investigations into personal background checks and verification of personal identity as part of personal background investigations relating to identity theft services; rental of domain names on the Internet

Classification Information

International Class
(009) Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
US Class Codes
021, 023, 026, 036, 038
Class Status
Active
Class Status Date
2019-09-09
Primary Code
009
First use anywhere
0
First use in commerce
0
International Class
(035) Advertising; business management; business administration; office functions.
US Class Codes
100, 101, 102
Class Status
Active
Class Status Date
2019-09-09
Primary Code
035
First use anywhere
0
First use in commerce
0
International Class
(036) Insurance; financial affairs; monetary affairs; realestate affairs.
US Class Codes
100, 101, 102
Class Status
Active
Class Status Date
2019-09-09
Primary Code
036
First use anywhere
0
First use in commerce
0
International Class
(038) Telecommunications.
US Class Codes
100, 101, 104
Class Status
Active
Class Status Date
2019-09-09
Primary Code
038
First use anywhere
0
First use in commerce
0
International Class
(042) Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
US Class Codes
100, 101
Class Status
Active
Class Status Date
2019-09-09
Primary Code
042
First use anywhere
0
First use in commerce
0
International Class
(045) Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
US Class Codes
100, 101
Class Status
Active
Class Status Date
2019-09-09
Primary Code
045
First use anywhere
0
First use in commerce
0

Current Owner

Original Registrant

Party Name
Address

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Legal Entity Type
Société Anonyme (SA)

Trademark Owner History

Original Applicant

Party Name
Address

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Legal Entity Type
Société Anonyme (SA)

Owner at Publication

Party Name
Address

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Legal Entity Type
Société Anonyme (SA)

Original Registrant

Party Name
Address

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Legal Entity Type
Société Anonyme (SA)

Correspondences

Party Name
Mary Margaret L. O'Donnell, Blue Filament Law PLLC
Address

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Trademark Events

Event Date
Event Description
2020-10-11
FINAL DECISION TRANSACTION PROCESSED BY IB
2020-09-19
FINAL DISPOSITION NOTICE SENT TO IB
2020-09-19
FINAL DISPOSITION PROCESSED
2020-08-19
FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
2020-07-16
CHANGE OF NAME/ADDRESS REC'D FROM IB
2020-05-19
REGISTERED-PRINCIPAL REGISTER
2020-03-03
OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
2020-03-03
PUBLISHED FOR OPPOSITION
2020-02-28
NOTIFICATION PROCESSED BY IB
2020-02-12
NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
2020-02-12
NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB
2020-02-12
NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
2020-01-30
APPROVED FOR PUB - PRINCIPAL REGISTER
2020-01-24
ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
2020-01-24
TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
2020-01-16
TEAS/EMAIL CORRESPONDENCE ENTERED
2020-01-15
CORRESPONDENCE RECEIVED IN LAW OFFICE
2020-01-15
TEAS RESPONSE TO OFFICE ACTION RECEIVED
2019-10-19
REFUSAL PROCESSED BY IB
2019-10-01
NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
2019-10-01
REFUSAL PROCESSED BY MPU
2019-09-17
NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
2019-09-16
NON-FINAL ACTION WRITTEN
2019-09-13
APPLICATION FILING RECEIPT MAILED
2019-09-09
ASSIGNED TO EXAMINER
2019-09-09
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
2019-08-29
SN ASSIGNED FOR SECT 66A APPL FROM IB