ADVANCING THE WAY THE WORLD PAYS, BANKSAND INVESTS - Trademark Details
Status: 732 - Third Extension - Granted
Image for trademark with serial number 88550825
Serial Number
88550825
Word Mark
ADVANCING THE WAY THE WORLD PAYS, BANKSAND INVESTS
Status
732 - Third Extension - Granted
Status Date
2022-02-03
Filing Date
2019-07-30
Mark Drawing
4000 - Standard character mark Typeset
Published for Opposition Date
2020-07-07
Law Office Assigned Location Code
N10
Employee Name
TANNER, MICHAEL R
Statements
Goods and Services
Downloadable computer software used in conducting financial transaction processing, authorization, and verification, processing financial payments, conducting and processing mobile payments, and detecting and preventing fraudulent financial transactions; downloadable computer software used for processing electronic payments, conducting and processing electronic funds transfers, conducting and processing treasury transactions, check processing, processing electronic billing and payment collection transactions, and for processing credit card, debit card, bank card, stored value card, prepaid gift card, prepaid customer loyalty card, electronic benefits card, and prepaid debit or credit card transactions; downloadable computer software used for evaluating and analyzing financial transactions for providing wealth management services; downloadable computer software used for evaluating and analyzing financial risk in the process of providing financial risk management; downloadable computer software used in the operation and management of banks, credit unions, savings institutions, lenders, investment and trust companies, insurance companies, and other financial institutions and financial-services businesses, and in the rendering of banking and financial services; downloadable computer software for use in the operation and management of automated teller machines and payment terminals; point-of-sale terminals; electronic payment terminals; automated teller machines; mobile payment acceptance terminals; electronic display interfaces, namely, multi-functional electronic payment terminals for use in the authentication of cashless payment means and for use in the identification of cashless payment means; pin code entry devices, namely, electronic personal identification number (PIN) pads
Goods and Services
Billing services; business outsourcing services; business risk management; business risk management consultation; call center services, namely, operation and management of telephone, email, and chat communications centers for others; business consulting, namely, business management consulting, business marketing and advertising consulting, business consulting and information services; marketing consulting; advertising consulting; marketing and advertising serivces; business process re-engineering services; business administration of consumer loyalty programs for others; promoting the goods and services of others by means of the issuance of loyalty rewards cards; providing customer support services related to credit cards, debit cards, bank cards, stored value cards, prepaid gift cards, prepaid customer loyalty cards, electronic benefits cards, prepaid debit or credit cards, electronic check, electronic funds, and bill payment transactions in the nature of call assisting businesses with customer follow-up as it pertains to credit and debit cards, bank cards, stored value cards, prepaid gift cards, prepaid customer loyalty cards, electronic benefits cards, prepaid debit or credit cards, electronic checks, electronic funds and bill payment transactions to improve customer outcomes and satisfaction through the use of telecommunication devices and computer networks with automated interaction and data feedback, monitoring and compilation capacity; conducting user incentive programs relating to the use of credit cards, debit cards, bank cards, stored value cards, prepaid gift cards, prepaid customer loyalty cards, electronic benefits cards, and prepaid debit or credit cards, namely, promoting the sale of credit card accounts through the administration of incentive award programs, and promoting the sale of goods and services of others by means of contests and incentive award programs
Goods and Services
Financial services, namely, ATM banking services; financial services in the nature of financial transaction processing, authorization, fraud checking and prevention, verification, namely, credit card and debit card transaction processing services, merchant services comprising payment transaction processing services, providing electronic processing of ACH and credit card transactions and electronic payments via a global computer network, credit card authorization services, payment and funds verification services; financial services comprising payment processing services, electronic funds transfer, investment funds transfer and transaction services, and credit card, debit card, bank card, stored value card, prepaid gift card, prepaid customer loyalty card, electronic benefits card, prepaid debit or credit card payment and check processing, namely, loyalty program payment processing services, providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments, processing electronic payments made through prepaid cards, electronic payment services involving electronic processing and subsequent transmission of bill payment data, credit card and debit card payment processing services, processing electronic payments made through prepaid cards, check processing services; merchant services, namely, payment transaction processing services; financial risk management services provided in connection with credit cards, checks, wire transfers, deposits, account openings, and payments; financial consulting; investment and trust management services, namely, estate trust management, real estate investment trust management services, trust management accounts, investment management; wealth management services; credit risk management; fraud reimbursement services in the field of credit card purchases, debit card purchases, and electronic check purchases; loyalty program payment processing services; bill payment services; issuing credit cards, debit cards, bank cards, stored value cards, prepaid gift cards, prepaid customer loyalty cards, prepaid electronic benefits cards, and prepaid credit or debit cards; banking services; online banking services; credit card, debit card, bank card, stored value card, prepaid gift card, prepaid customer loyalty card, electronic benefits card, and prepaid credit or debit card implementation, namely, issuing credit cards, debit cards, bank cards, stored value cards, prepaid gift cards, prepaid customer loyalty cards, prepaid electronic benefits cards, and prepaid credit or debit cards; debt collection services, namely, collection of debts, debt recovery, and collection agencies; information, advisory, and consultancy services related to all the aforesaid services, namely, processing of contactless credit and debit card payments, providing financial information in the field of financial transaction and payment processing services, providing financial consulting services in the field of financial transaction and payment processing services; financial risk management services in the fields of electronic funds transfer, credit cards, debit cards, check transactions, and banking
Goods and Services
Installation and maintenance of point-of-sale-terminals, computer payment terminals, mobile payment acceptance terminals, and automated teller machines for others; installation of point-of-sale-terminals and computer payment terminals, and mobile payment acceptance terminals for others
Goods and Services
Telecommunications, namely, call center services in the nature of routing and queuing telephone calls, emails, chat requests, and other forms of communications; providing electronic transmission of credit card, debit card, bank card, stored value card, prepaid gift card, prepaid customer loyalty card, electronic benefits card, prepaid credit or debit card, electronic check and electronic funds transaction data and electronic payment data via a global computer network; providing electronic delivery and transmission of reports featuring credit card, debit card, bank card, stored value card, prepaid gift card, prepaid customer loyalty card, electronic benefits card, or prepaid credit and debit card transaction data and electronic payment processing data via a global computer network; automated teller machine (ATM), point-of-sale terminal, computer payment terminal, and mobile payment acceptance terminal operation services, namely, providing secure, encrypted access to a global computer payment network and telecommunications infrastructure used by bankcard association networks, merchants, and financial institutions, providing telecommunications connections to a global computer payment network used by automated teller machines (ATM), point-of-sale terminals, computer payment terminals, and mobile payment acceptance terminals
Goods and Services
Delivery of point-of-sale-terminals and computer payment terminals, and mobile payment acceptance terminals for others by air, rail, ship or truck
Goods and Services
Custom manufacture of blank credit cards, debit cards, bank cards, stored value cards, prepaid gift cards, prepaid customer loyalty cards, electronic benefits cards, and prepaid debit or credit cards to the order and specification of others
Goods and Services
Educational services, namely, providing in-person or online educational and business training classes and workshops in the fields of the operation and management of banks, savings institutions, lenders, investment and trust companies, corporate capital market groups, credit unions, insurance companies, and other financial institutions and financial-services businesses; educational services, namely, providing educational and business training classes, seminars, and workshops in the fields of payment processing, financial transaction processing, electronic funds transfer and transaction services, payment terminals, and automated teller machines
Goods and Services
Computer software development, programming, and design for others; computer systems integration services; computer services, namely, integration of computer software into multiple systems and networks and computer systems integration services; computer software consulting for others; computer software installation, updating, and maintenance for others; technical support services, namely, troubleshooting of computer software problems; information technology consulting services; website design, maintenance, hosting, and consulting, namely, design, creation, hosting, and maintenance of websites for others, web site design consultancy, consultancy with regard to webpage design; application service provider, namely, hosting computer software applications of others; providing quality assurance services in the fields of banking and financial services and operations; outsource service provider in the field of information technology; providing temporary use of online, non-downloadable software for use in conducting financial transaction processing, authorization, and verification, processing financial payments, conducting and processing mobile payments, and detecting and preventing fraudulent financial transactions; providing temporary use of online, non-downloadable software for use in processing electronic payments, for conducting and processing electronic funds transfers, for conducting and processing treasury transactions, for check processing, for processing electronic billing and payment collection transactions, and for processing credit card, debit card, bank card, stored value card, prepaid gift card, prepaid customer loyalty card, electronic benefits card, and prepaid debit or credit card transactions; providing temporary use of online, non-downloadable software for use in evaluating and analyzing financial transactions for providing treasury management services; providing temporary use of online, non-downloadable software for use in evaluating and analyzing financial transactions for providing wealth management services; providing temporary use of online, non-downloadable software for use in evaluating and analyzing financial risk in the process of providing financial risk management; providing temporary use of online, non-downloadable software for use in the operation and management of banks, credit unions, savings institutions, lenders, investment and trust companies, insurance companies, and other financial institutions and financial-services businesses, and in the provision and rendering of banking and financial services; electronic monitoring of electronic funds transfers, credit and debit card activity, and electronic check and banking transactions to detect fraud via the internet; electronic monitoring in connection with deposits, account openings, payments, and employees to detect fraud via the internet, namely, electronic monitoring of credit card activity to detect fraud via the internet, electronic monitoring of electronic payments and payment activity to detect fraud via the internet, electronic monitoring of financial account openings to detect fraud via the internet, monitoring of computer systems for detecting unauthorized access or data breach; fraud detection services in the fields of electronic funds transfer, credit cards, debit cards, check transactions, and banking, namely, electronic monitoring of electronic funds transfers, credit and debit card activity, and electronic check and banking transactions to detect fraud via the internet; fraud detection services in connection with deposits, account openings, payments, and employees, namely, electronic monitoring of credit card activity to detect fraud via the internet, electronic monitoring of electronic payments and payment activity to detect fraud via the internet, electronic monitoring of financial account openings to detect fraud via the internet, electronic monitoring of online banking transactions to detect fraud via the internet; data encryption services; equipment leasing, namely, leasing of computer hardware and peripheral equipment for use in point of sale transactions; graphic design of credit cards, debit cards, bank cards, stored value cards, prepaid gift cards, prepaid customer loyalty cards, electronic benefits cards, and prepaid debit or credit cards for others; leasing and renting of point-of-sale terminals, computer payment terminals, mobile payment acceptance terminals, and other computerized electronic payment facilitating hardware
Goods and Services
Licensing of computer software for others
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
2019-08-11
Primary Code
009
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
2019-08-11
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
2019-08-11
Primary Code
036
International Class
038 - Telecommunications. - Telecommunications.
US Class Codes
100, 101, 104
Class Status Code
6 - Active
Class Status Date
2019-08-11
Primary Code
038
International Class
040 - Treatment of materials. - Treatment of materials.
US Class Codes
100, 103, 106
Class Status Code
6 - Active
Class Status Date
2020-04-16
Primary Code
040
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
2019-08-11
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
2019-08-11
Primary Code
042
Current Trademark Owners
Party Type
20 - Owner at Publication
Address
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Trademark Owner History
Party Type
20 - Owner at Publication
Address
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Party Type
10 - Original Applicant
Address
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Correspondences
Name
David M. Kelly and Lynn M. Jordan
Address
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Prior Registrations
Relationship TypeReel Number
Prior Registration5906433
Madrid International Filings
Entry Number
1
Reference Number
A0088509
Original Filing Date USPTO
2019-08-09
International Registration Number
1513252
International Registration Date
2019-08-09
International Status Code
480
International Renewal Date
2029-08-09
Madrid History Events
DateCodeDescription
2019-10-07IRREGIRREGULARITY NOTICE RECEIVED FROM IB
2020-02-06CREATAPPLICATION FOR IR REGISTERED BY IB
2020-01-10IRRACRESPONSE TO IRREGULARITY REVIEWED AND ACCEPTED
2020-01-10IRSNTIRREGULARITY RESPONSE SENT TO IB
2019-08-09NEWAPNEW APPLICATION FOR IR RECEIVED
2019-08-09ACERTAUTOMATICALLY CERTIFIED
2019-08-09APPSTIR CERTIFIED AND SENT TO IB
2019-12-20IRRCVIRREGULARITY RESPONSE RECEIVED FROM APPLICANT
Trademark Events
Event DateEvent Description
2019-08-02NEW APPLICATION ENTERED IN TRAM
2019-08-11NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
2019-09-18ASSIGNED TO EXAMINER
2019-10-08NON-FINAL ACTION WRITTEN
2019-10-08NON-FINAL ACTION E-MAILED
2019-10-08NOTIFICATION OF NON-FINAL ACTION E-MAILED
2020-04-08TEAS RESPONSE TO OFFICE ACTION RECEIVED
2020-04-15ASSIGNED TO LIE
2020-04-16CORRESPONDENCE RECEIVED IN LAW OFFICE
2020-04-16TEAS/EMAIL CORRESPONDENCE ENTERED
2020-04-22EXAMINERS AMENDMENT -WRITTEN
2020-04-22EXAMINERS AMENDMENT E-MAILED
2020-04-22NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
2020-04-22EXAMINER'S AMENDMENT ENTERED
2020-05-29APPROVED FOR PUB - PRINCIPAL REGISTER
2020-06-17NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
2020-07-07PUBLISHED FOR OPPOSITION
2020-07-07OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
2020-09-01NOA E-MAILED - SOU REQUIRED FROM APPLICANT
2021-02-18TEAS EXTENSION RECEIVED
2021-02-18EXTENSION 1 FILED
2021-02-18EXTENSION 1 GRANTED
2021-02-20NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
2021-08-09TEAS EXTENSION RECEIVED
2021-08-09EXTENSION 2 FILED
2021-08-09EXTENSION 2 GRANTED
2021-08-11NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
2022-01-27TEAS EXTENSION RECEIVED
2022-02-03CASE ASSIGNED TO INTENT TO USE PARALEGAL
2022-01-27EXTENSION 3 FILED
2022-02-03EXTENSION 3 GRANTED
2022-02-04NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED