CAPITA - Trademark Details
Status: 700 - Registered
Image for trademark with serial number 79274193
Serial Number
79274193
Registration Number
6391673
Word Mark
CAPITA
Status
700 - Registered
Status Date
2021-06-22
Filing Date
2019-09-12
Registration Number
6391673
Registration Date
2021-06-22
Mark Drawing
3000 - Illustration: Drawing or design which also includes word(s)/ letter(s)/number(s) Typeset
Design Searches
261701, 261704 - Straight line(s), band(s) or bar(s). Vertical line(s), band(s) or bar(s).
Published for Opposition Date
2021-04-06
Attorney Name
Law Office Assigned Location Code
M20
Employee Name
SEVERSON, JUSTIN
Statements
Indication of Colors claimed
Color is not claimed as a feature of the mark.
Description of Mark
The mark consists of the term "CAPITA" with three lines arranged vertically to the top-left of the letter "C".
Goods and Services
downloadable and recorded computer software for public contact, communications and dispatch for use in the fields of law enforcement, security, criminal justice, public safety and emergency services; downloadable and recorded document management software; downloadable and recorded automation software for payment management, processing of electronic payments, process automation, clinical coding and revenue and benefit management; downloadable and recorded software for standardisation of processes for business purposes for use in the fields of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; data networks, namely, data processors and downloadable and recorded computer software for transmission and reception of data; downloadable electronic databases in the field of business management and business organization; downloadable and recorded software for the analysis of business data; downloadable and recorded closed circuit TV (CCTV) software and systems, comprised of cameras, video monitors, electronic data recorders, microphones and electronic controllers; computer networks namely, computer hardware for telecommunications; cloud computer servers; downloadable and recorded software for cloud computing services for business purposes for use in the fields of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; computer hardware to provide smart digital and software solutions, and computer tools and instruments to provide smart digital and software solutions, namely, computer hardware and downloadable software development tools; downloadable electronic publications in the nature of pamphlets, brochures, manuals, and leaflets in the fields of human resources, business management, project management, financial management, procurement management, database management and database searching
Goods and Services
Printed matter, namely book-binding material, photos, stationery, adhesives for stationery or household purposes, artists' materials in the nature of pens, pencils, albums, scrapbooks, blotters, drawing pads, paint trays, palettes, paintbrushes, typewriters and office supplies in the nature of adhesive tape dispensers, binders, clipboards, covers, desk mats, document files and holders, folders for paper, paper cutters, paper shredders for office use, punches, staplers, instructional and teaching materials in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities, plastic materials in the nature of bubble packs, film, bags, sheets for packaging , printers' type, printing blocks for use in the fields of human resources, business management, project management, financial management, procurement management, database management and database searching; brochures in the field of human resources, business management, project management, financial management, procurement management, database management and database searching; Training books in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; Educational books in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; Instructional and teaching materials in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities
Goods and Services
business administration services; business management; business outsourcing services; business transformation services, namely, business record and electronic document management, print management in the nature of managing office printing functions for others, human resources management, operation of telephone and online contact centre services for others and business management of facilities and property business management of facilities and property, supply chain management and remote procurement management; finance records management; advice relating to business acquisitions; business consultancy services relating to digital transformation; advertising, personnel recruitment and employment agency services; human resource services namely administration and recruitment of staff, training and development of staff for others, , the provision of staff incentives schemes to promote quality and productivity for others , andconsultation and advice relating to the aforesaid services; business consultancy, outsourcing services in the nature of arranging procurement of goods and services for others and business management services related to procurement; customer relationship management; data processing services; data management services related to the fields of of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; computer data entry and collection services for business purposes; business analysis services, business data analysis; business data analysis and analytics services in the nature of data creation, enrichment, analysis and application, data profiling, visual analytics to assist with informed decision making namely, data creation, enrichment, analysis and application; promotion of events for business purposes; organisation of events for commercial, promotional and advertising purposes; payroll processing services for others; payroll administration and preparation, advisory services; conducting business research and surveys; conducting market surveys; business development; facilities business management in the fields of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; business records management services namely storing data, running business analytics on data, data profiling, digital evidence management, police record management, data creation records and management information systems for education ; business management consulting services relating to customer relationship management, sales support management, and marketing automation; marketing services; administration of human resources and financial administration pensions on behalf of others ; customer service management for others; management and operation of telephone call centres for others via operation of telephone call centers for others in both the charitable and public sector and the storage of data; management and delivery of customer service enquiries and customer service response handling services for others in the nature of via operation of telephone and online contact centres and control rooms in both the charitable and public sector ; providing office functions; providing business advice and information in relation to the purchase of office machines and equipment; business advice and information in relation to all of the aforesaid services
Goods and Services
financial services namely insurance brokerage , mortgage brokerage, financial management and administration of employee , pension plans and financial planning services and advice; financial support service for companies, banks, financial services firms and their customers, namely, financial consultancy, evaluation and management; insurance services related to governance and regulatory compliance namely, management and operation of insurance syndicates, insurance claims management and underwriting; debt recovery services; monetary affairs, namely, financial information, management and analysis services,; advice relating to real estate and infrastructure; pension financial management services; pension services in the nature of financial management of employee pension plans and providing information in the field of employee financial benefit plans , namely to companies, banks and financial service firms and individuals; financial analysis and research services; electronic payment services, namely, processing secure online internet payments service and payment solutions offering for processing of scheduled payments ;financial trust administration and management; financial administration and management of pension trusts; financial management of funds; retail financing services; financial investment brokerage services; insurance claim services, namely, claims adjustment, claims peer review, reinsurance and credit control; actuarial services; financial services relating to the acquisition of business real estate property; financial advice and information in relation to all of the aforesaid services
Goods and Services
Installation, maintenance and repair of computers and computer hardware; installation, maintenance and repair of office machines and equipment; installation, maintenance and repair of telecommunications devices; advice and information in relation to all of the aforesaid services
Goods and Services
Providing telecommunications connections to a global computer network; telecommunications routing and junction services ;network conferencing services; provision of access to computer databases in the nature of a global computer network; provision of access to on-line computer services and computer database services; providing access to a global computer network; provision of communications information; advice and information in relation to all of the aforesaid services
Goods and Services
Transportation services, namely packaging articles for transportation and storage of goods; Coordinating travel arrangements forothers; travel consultancy; travel organisation; travel management; advice and information in relation to all of the aforesaid services
Goods and Services
Arranging and conducting educational conferences, exhibitions, seminars, symposiums and workshops in the fields of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; hosting of educational exhibitions and educational conferences and hosting seminars in the field of primary, secondary and higher education, financial services, local and national government, health, retail, telecommunications, transport and utilities, providing administrative and data management services in the field of education; training services in the fields of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; organization of educational, entertainment, sporting and cultural events, namely organization of social entertainment events; publication of electronic texts, publications and online journals in the fields of technology, digital transformation, learning, development and technology and telecommunications; publication of printed matter; publication of electronic publications in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; Publication services namely, the publication of printed and electronic publications in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; training of staff for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; Translation services, business training consultancy services; providing information, consultation and advice in relation to the development, organization and feasibility of community sporting and cultural activities; career advisory services, namely, providing advice concerning education options to pursue career opportunities; career information and advisory services being career counselling, namely, providing advice concerning education options to pursue career opportunities; arranging the provision of and delivering certification of education and training awards for educational, professional and personal development; charitable services namely education and training in the fields of financial services, local and national government, health, retail, telecommunications, transport and utilities; commercial training services for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; computer assisted training services for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; computer based training for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; computer training for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; advisory about computer training services for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; computerised training for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; computerised training and conducting of courses relating to administrative training and career counselling; conducting training seminars for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; conducting training seminars for clients for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; conducting workshops for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; Consultancy services relating to the analysis of training requirements for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; consultancy services relating to the design of training courses for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; consultancy services relating to the training of employees; consultancy services relating to training for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; courses relating to management for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; education services relating to business training education services relating to vocational training namely, vocational education for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; educational services relating to sales training providing on-line information and news in the field of employment training management training consultancy services, namely, training in the field of business management; management training services for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; mentoring in the field of IT and training specific to the individual's needs, customer experience, and other professional and personal development; organisation of computer related training courses for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; organisation of conferences relating to training for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; organisation of conferences relating to vocational training for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; organisation of seminars relating to training for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; organisation of symposia relating to training for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; organisation of training courses for business purposes in the field of education, financial services, local and national government, health, retail, telecommunications, transport and utilities; organisation of training courses in the field of design; organisation of training seminars in the field of design; advice and information in relation to all of the aforesaid services
Goods and Services
Providing temporary use of on-line non-downloadable software to store, manage, track, analyse, and report data in the field of marketing, promotion, sales, customer information, customer relationship management, sales support and employee efficiency; providing temporary use of on-line non-downloadable software to facilitate communicating among peer professionals in the advertising, marketing and business services fields, and for customising computer application user interfaces; computer services, namely, designing, developing, and maintaining computer software applications for others and consulting services related thereto; computer and internet security consultancy and data encryption services; online hosted computer services, namely, designing, developing, customising, and maintaining computer software applications for others and consulting services related thereto; all the foregoing services available from computer databases, the Internet; information technology [IT] consultancy and implementation; technical support services, namely, troubleshooting in the nature of computer hardware diagnosis, resolution and management; computer software technical support services, namely, on-site management of information technology (IT) systems of others, development of software products, troubleshooting of computer software problems; cloud computing services featuring software for business purposes; consultancy in the design, implementation, management and development of computer hardware and computer software; computer systems analysis and reporting, technical data analysis; computer programming, computer programs and computer system design; information, advice and consultancy in relation to all of the aforesaid services
Goods and Services
Medical services; advice and information in relation to all of the aforesaid services
Goods and Services
Security services for the physical protection of tangible property and individuals; through the implementation of security hardware and software, delivery of secured networks for the interchange of information separate from the public internet, provision of security solutions in the nature of counter-terrorism checks, security checks and developed vetting, the provision of commercial building security services in the nature of security guard services, providing physical access to properties via a remote call-in locking device and information about the aforesaid; ;security consultancy in the fields of cyber security being in the nature of restricting unauthorised access to computer systems and commercial building security; legal services; notary public services; reviewing standards and practices to ensure client's compliance with laws and regulations in the fields of property, litigation and recoveries; advice and information in relation to all of the aforesaid services
Classification Information
International Class
009 - Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus. - Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
US Class Codes
021, 023, 026, 036, 038
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
009
International Class
016 - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks. - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks.
US Class Codes
002, 005, 022, 023, 029, 037, 038, 050
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
016
International Class
035 - Advertising; business management; business administration; office functions. - Advertising; business management; business administration; office functions.
US Class Codes
100, 101, 102
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
035
International Class
036 - Insurance; financial affairs; monetary affairs; real estate affairs. - Insurance; financial affairs; monetary affairs; real estate affairs.
US Class Codes
100, 101, 102
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
036
International Class
037 - Building construction; repair; installation services. - Building construction; repair; installation services.
US Class Codes
100, 103, 106
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
037
International Class
038 - Telecommunications. - Telecommunications.
US Class Codes
100, 101, 104
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
038
International Class
039 - Transport; packaging and storage of goods; travel arrangement. - Transport; packaging and storage of goods; travel arrangement.
US Class Codes
100, 105
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
039
International Class
041 - Education; providing of training; entertainment; sporting and cultural activities. - Education; providing of training; entertainment; sporting and cultural activities.
US Class Codes
100, 101, 107
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
041
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; legal services. - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.
US Class Codes
100, 101
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
042
International Class
044 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
US Class Codes
100, 101
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
044
International Class
045 - Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals. - Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
US Class Codes
100, 101
Class Status Code
6 - Active
Class Status Date
2019-12-20
Primary Code
045
Current Trademark Owners
Party Name
Party Type
30 - Original Registrant
Address
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Trademark Owner History
Party Name
Party Type
30 - Original Registrant
Address
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Party Name
Party Type
20 - Owner at Publication
Address
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Party Name
Party Type
10 - Original Applicant
Address
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Correspondences
Name
Michael J. Leonard
Address
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International Registrations
International Registration Number
1503671
International Registration Date
2019-09-12
International Publication Date
2019-12-19
International Renewal Date
2029-09-12
Auto Protection Date
2021-06-19
International Status
001 - Request for extension of protection established
International Status Date
2019-12-19
Priority Claimed In
False
First Refusal In
True
Trademark Events
Event DateEvent Description
2019-12-19SN ASSIGNED FOR SECT 66A APPL FROM IB
2019-12-20NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
2019-12-20ASSIGNED TO EXAMINER
2019-12-24APPLICATION FILING RECEIPT MAILED
2020-01-02NON-FINAL ACTION WRITTEN
2020-01-03NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
2020-01-29REFUSAL PROCESSED BY MPU
2020-01-29NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
2020-02-15REFUSAL PROCESSED BY IB
2020-07-02NEW REPRESENTATIVE AT IB RECEIVED
2020-07-23TEAS RESPONSE TO OFFICE ACTION RECEIVED
2020-07-23CORRESPONDENCE RECEIVED IN LAW OFFICE
2020-07-24TEAS/EMAIL CORRESPONDENCE ENTERED
2020-08-13NON-FINAL ACTION WRITTEN
2020-08-13NON-FINAL ACTION E-MAILED
2020-08-13NOTIFICATION OF NON-FINAL ACTION E-MAILED
2021-01-02CHANGE OF NAME/ADDRESS REC'D FROM IB
2021-01-28TEAS RESPONSE TO OFFICE ACTION RECEIVED
2021-01-28CORRESPONDENCE RECEIVED IN LAW OFFICE
2021-01-29TEAS/EMAIL CORRESPONDENCE ENTERED
2021-02-28APPROVED FOR PUB - PRINCIPAL REGISTER
2021-03-17NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
2021-03-17NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB
2021-03-17NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
2021-04-04NOTIFICATION PROCESSED BY IB
2021-04-06PUBLISHED FOR OPPOSITION
2021-04-06OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
2021-05-19NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB
2021-05-19NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
2021-06-06NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB
2021-06-22REGISTERED-PRINCIPAL REGISTER
2021-09-22FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
2021-10-07FINAL DISPOSITION PROCESSED
2021-10-07FINAL DISPOSITION NOTICE SENT TO IB
2021-11-04FINAL DECISION TRANSACTION PROCESSED BY IB