ASSURED

Pushpay IP Limited

Application Filed: 2018-12-12
Trademark Application Details
Trademark Logo ASSURED

Mark For: ASSURED® trademark registration is intended to cover the categories of computers; Downloadable computer software for facilitating business transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Downloadable computer software for use in business administration and management; Downloadable computer software for facilitating financial transactions; Downloadable computer software for use in facilitating the payment or receipt of monetary and non-monetary contributions; Downloadable computer software for use in merchant processing services; Downloadable computer software for facilitating users to make monetary contributions to others for charity; Downloadable computer software for facilitating others to contribute to religious institutions; Downloadable computer software for facilitating others to contribute to educational institutions; Downloadable computer software for facilitating others to make charitable contributions; Downloadable computer software for facilitating the payment of taxes to government entities; Downloadable computer software for use in processing electronic payments; Downloadable computer software for use in database management, use as a spreadsheet, and for word processing; Downloadable computer software for computer system and application development, deployment and management; Downloadable computer software for computer system and mobile application development, deployment and management; Downloadable computer software for facilitating financial transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Apparatus for recording, transmission or reproduction of sound or images; Downloadable computer application software for mobile phones and handheld computing devices, namely, electronic financial platform software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment for use in payment processing and transactions, and software for use in payment transaction processing; Downloadable computer software for use in processing the exchange of monetary and non-monetary payments, and for compiling information and generating reports for business and tax purposes; Downloadable computer software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Downloadable computer application software for mobile phones, portable media players, handheld computers, tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Downloadable computer application software for mobile devices, namely, mobile phones and tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Downloadable computer software for event registration; Downloadable financial reconciliation software; Downloadable computer software for customer relationship management; Downloadable computer software that enables the streaming of video broadcasts on handheld computing devices; Downloadable computer software for use in accessing downloadable MP3 files and MP3 recordings of podcasts in the field of financial information; Downloadable computer software for use in posting advertisements for church fundraisers; Downloadable computer software for providing charitable fundraising information to others; Downloadable computer software for facilitating the exchange of up to date traffic information among users; Downloadable software for use in social networking; Downloadable computer software for promoting the goods and services of others by creating classified advertisements; Downloadable software for use in accessing online courses at a university; Downloadable computer software for use in event registration and event management. [all]

Status

2021-02-07 UTC
LIVE APPLICATION Under Examination
The trademark application has been accepted by the Office (has met the minimum filing requirements) and that this application has been assigned to an examiner.


Research OneLook Acronym Finder
Serial Number88226634
Registration Number6486675
Mark Literal ElementsASSURED
Mark Drawing Type4 - STANDARD CHARACTER MARK
Mark TypeTRADEMARK. SERVICE MARK
RegisterPRINCIPAL
Current LocationINTENT TO USE SECTION 2019-12-31
Basis1(b)
Class StatusACTIVE
Primary US Classes
  • 021: Electrical Apparatus, Machines and Supplies
  • 023: Cutlery, Machinery, Tools and Parts Thereof
  • 026: Measuring and Scientific Appliances
  • 036: Musical Instruments and Supplies
  • 038: Prints and Publications
Primary International Class
  • 009 - Primary Class
  • (Electrical and scientific apparatus) Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving 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.
Filed UseNo
Current UseNo
Intent To UseYes
Filed ITUYes
44D FiledNo
44E CurrentNo
66A CurrentNo
Current BasisNo
No BasisNo
Attorney NameDavid L. May
Attorney Docket Number069066-112

Timeline

2018-12-12Application Filed
2019-01-04Location: NEW APPLICATION PROCESSING
2019-01-04Status: Live/Pending
2019-01-04Transaction Date
2019-11-05Published
2019-11-05Published for Opposition
2019-12-31Location: INTENT TO USE SECTION
2020-12-02Status: A second request for extension of time to file a Statement of Use has been granted.
2021-09-14Trademark Registered

Trademark Parties (Applicants & Owners)

Party: Pushpay IP Limited
AddressLevel 6, 167 Victoria Street West Auckland NEW ZEALAND 1010
Legal Entity TypeLimited Company (ltd.)
Legal Entity StateNEW ZEALAND

Documents

DrawingJPEG2018-12-12
TEAS RF New ApplicationMULTI2018-12-12
Offc Action OutgoingXML2019-03-12
XSearch Search SummaryXML2019-03-12
XSearch Search SummaryXML2019-03-12
TEAS Rev, App and/or COA of Atty/Dom.RepXML2019-05-08
Response to Office ActionAPPLICATION/XML2019-08-26
Amendment and Mail Process CompleteMULTI2019-08-28
Examiners AmendmentXML2019-09-25
Offc Action OutgoingXML2019-09-25
Amendment and Mail Process CompleteMULTI2019-09-26
TRAM Snapshot of App at Pub for OppostnMULTI2019-09-26
Notice of PublicationXML2019-10-16
Notification Of Notice of PublicationXML2019-10-16
OG Publication ConfirmationXML2019-11-05
Notice of AllowanceXML2019-12-31
Extension of Time to File SOUAPPLICATION/XML2020-06-16
ITU Extension ApprovalAPPLICATION/XML2020-06-18
ITU Unit ActionAPPLICATION/XML,IMAGE/JPEG2020-06-18
Extension of Time to File SOUAPPLICATION/XML2020-12-02
ITU Extension ApprovalAPPLICATION/XML2020-12-04
ITU Unit ActionMULTI2020-12-04

Attorney of Record

DAVID L. MAY
NIXON PEABODY LLP
799 9TH STREET NW, SUITE 500
WASHINGTON, DC 20001

Good, Services, and Codes


IC 009. US 021 023 026 036 038. G & S: Computers; Downloadable computer software for facilitating business transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Downloadable computer software for use in business administration and management; Downloadable computer software for facilitating financial transactions; Downloadable computer software for use in facilitating the payment or receipt of monetary and non-monetary contributions; Downloadable computer software for use in merchant processing services; Downloadable computer software for facilitating users to make monetary contributions to others for charity; Downloadable computer software for facilitating others to contribute to religious institutions; Downloadable computer software for facilitating others to contribute to educational institutions; Downloadable computer software for facilitating others to make charitable contributions; Downloadable computer software for facilitating the payment of taxes to government entities; Downloadable computer software for use in processing electronic payments; Downloadable computer software for use in database management, use as a spreadsheet, and for word processing; Downloadable computer software for computer system and application development, deployment and management; Downloadable computer software for computer system and mobile application development, deployment and management; Downloadable computer software for facilitating financial transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Apparatus for recording, transmission or reproduction of sound or images; Downloadable computer application software for mobile phones and handheld computing devices, namely, electronic financial platform software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment for use in payment processing and transactions, and software for use in payment transaction processing; Downloadable computer software for use in processing the exchange of monetary and non-monetary payments, and for compiling information and generating reports for business and tax purposes; Downloadable computer software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Downloadable computer application software for mobile phones, portable media players, handheld computers, tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Downloadable computer application software for mobile devices, namely, mobile phones and tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Downloadable computer software for event registration; Downloadable financial reconciliation software; Downloadable computer software for customer relationship management; Downloadable computer software that enables the streaming of video broadcasts on handheld computing devices; Downloadable computer software for use in accessing downloadable MP3 files and MP3 recordings of podcasts in the field of financial information; Downloadable computer software for use in posting advertisements for church fundraisers; Downloadable computer software for providing charitable fundraising information to others; Downloadable computer software for facilitating the exchange of up to date traffic information among users; Downloadable software for use in social networking; Downloadable computer software for promoting the goods and services of others by creating classified advertisements; Downloadable software for use in accessing online courses at a university; Downloadable computer software for use in event registration and event management
IC 035. US 100 101 102. G & S: Advertising; Business management; Business administration; Office functions; Providing incentive award programs for customers through processing of debit card loyalty program points for on-line purchase transactions of a company's goods and services; Customer relationship management; Developing and managing the charitable giving programs of others; insurance and financial services, namely, financial record-keeping for insurance risk management; remote management of computer databases for others; Financial services, namely, providing an online computer website that provides commercial financial transaction data, account management, financial reporting, accounting features and related reference information; Facilitating the exchange of needed information for financial compensation via the Internet; Providing a website for managing, conducting and organizing online auctions that are designed to raise money for charities; Developing and managing the charitable programs of others; Promoting charitable giving that that reflects the core values of the donor by providing a method to identify the donor's core values and to select charities that foster those values; Association services, namely, promoting awareness of charitable giving; Event planning for businesses; On-line event registration for charitable fundraising purposes and events; On-line event registration for educational institutions; Marketing service, namely, promotional services in the field of planned-giving for non-profit and charitable organizations; Promoting the charitable giving of others, namely, tracking and publicizing charitable donations and random acts of kindness; business data analytic services in the nature of providing analysis of charitable giving data; Special event planning for business purposes; Event planning and management for marketing, branding, promoting or advertising the goods and services of others; Providing an online portal for event registration for fundraising events; Online portal for event registration for religious events in the nature of meetings; Online portal for event registration for educational events, cultural events, and social entertainment events. Computer services, namely, remote management of databases for others
IC 036. US 100 101 102. G & S: Financial services, namely, merchant payment transaction processing services; Financial consulting services in the field of planned giving for non-profit and charitable organizations; Financial planning services, namely, developing and managing charitable giving programs on behalf of wealthy individuals or families; Providing on-line information in the field of charitable monetary giving; Financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services; Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network; Financial services, namely, business fundraising provided over a computer network such as the Internet and providing on-line stored value accounts in an electronic commerce environment; Financial affairs, namely, financial information, management and analysis services; Monetary affairs services in the form of monetary strategy consultation and research and monetary exchange operations; Financial and monetary affairs transaction management services, namely, providing secure commercial transaction services and payment options and providing an internet website portal in the field of financial transaction and payment processing services; Payment processing, namely, credit card and debit card transaction processing services; Online gift card payment and transaction processing services; Financial payment and financial transaction services in the form of credit card, debit card loyalty program and credit and debit card payment transaction processing services; Transaction services in the form of providing cash and other rebates for credit card use and debit card use as part of a customer credit card and debit card loyalty program; Financial transaction services, namely, providing secure commercial transactions and payment options; Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; Merchant services, namely, payment transaction processing services; Providing financial data analysis for others, namely, compiling and analyzing church tithing collection statistics for financial purposes
IC 038. US 100 101 104. G & S: Communication services in the nature of short message services (SMS); telecommunication services, namely, providing e-mail notification alerts via the internet; Video broadcasting services over the Internet or other communication network
IC 041. US 100 101 107. G & S: Providing information on education provided on-line from a computer database or the internet; Production and distribution of videos in the field of finance and financial translations; Providing continuing business education courses; Education services, namely, providing tutorial sessions in the field of finance and financial translations; Education services, namely, providing live and on-line classes, seminars, workshops in the fields of finance and financial transactions, charitable giving, customer relationship management, business administration, business management, marketing, event planning and event registration; Providing religious instruction
IC 042. US 100 101. G & S: Design and development of computer hardware and software; Providing a social networking website which features technology that enables users to give charitable financial gifts to others; Web site design and development for others; Computer software development for others; Computer software development for others, namely, custom development, deployment, and management of mobile application software for others; Software as a service (SAAS) services featuring data dashboards for use in monitoring and managing of church tithing collection operations; Software as a service (SAAS) services featuring data dashboards for use in customer relationship management, monitoring and managing of financial transactions, business administration, business management, marketing, event planning and event registration; Software as a service (SAAS) services featuring software for e-mail campaign management, and development and management of charitable donations and pledges; Software as a service (SAAS) services featuring software for use in customer services relationship management; Providing online non-downloadable computer software for use in social networking; Design, creation, hosting, maintenance of websites for others; Hosting the software, websites and other computer applications of others on a virtual private server in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Hosting, managing, developing and maintaining applications, software and websites of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Designing, creating, maintaining and hosting online electronic commerce websites for others; Design, creation, hosting and maintenance of internet sites for third parties; Application service provider (ASP), namely, hosting computer software applications of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management
IC 045. US 100 101. G & S: Personal and social services rendered by others to meet the needs of individuals, namely, companionship services for church members and non-profit donors; Conducting religious prayer services; Providing religious counseling services

International Codes:9
U.S. Codes:021,023,026,036,038
International Codes:35
U.S. Codes:100,101,102
International Codes:36
U.S. Codes:100,101,102
International Codes:38
U.S. Codes:100,101,104
International Codes:41
U.S. Codes:100,101,107
International Codes:42
U.S. Codes:100,101
International Codes:45
U.S. Codes:100,101
Type CodeType
GS0451Personal and social services rendered by others to meet the needs of individuals, namely, companionship services; Conducting religious prayer services; Providing religious counseling services
GS0351Remote management of computer databases for others; Financial services, namely, providing an online computer website that provides commercial financial transaction data, account management, financial reporting, accounting features and related reference information; Facilitating the exchange of needed information for financial compensation via the Internet; Providing a website for managing, conducting and organizing online auctions that are designed to raise money for charities

Trademark Filing History

DescriptionDateProceeding Number
NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED2020-12-04
TEAS EXTENSION RECEIVED2020-12-02
EXTENSION 2 GRANTED2020-12-0298765
EXTENSION 2 FILED2020-12-0298765
NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED2020-06-18
TEAS EXTENSION RECEIVED2020-06-16
EXTENSION 1 GRANTED2020-06-1698765
EXTENSION 1 FILED2020-06-1698765
NOA E-MAILED - SOU REQUIRED FROM APPLICANT2019-12-31
PUBLISHED FOR OPPOSITION2019-11-05
OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED2019-11-05
NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED2019-10-16
ASSIGNED TO LIE2019-09-3073797
NOTIFICATION OF FINAL REFUSAL EMAILED2019-09-25
NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED2019-09-256328
FINAL REFUSAL WRITTEN2019-09-2573703
FINAL REFUSAL E-MAILED2019-09-25
EXAMINERS AMENDMENT E-MAILED2019-09-256328
EXAMINERS AMENDMENT -WRITTEN2019-09-2573703
EXAMINER'S AMENDMENT ENTERED2019-09-2588888
APPROVED FOR PUB - PRINCIPAL REGISTER2019-09-25
TEAS/EMAIL CORRESPONDENCE ENTERED2019-08-2788889
TEAS RESPONSE TO OFFICE ACTION RECEIVED2019-08-26
CORRESPONDENCE RECEIVED IN LAW OFFICE2019-08-2688889
TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED2019-05-08
ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED2019-05-08
NOTIFICATION OF NON-FINAL ACTION E-MAILED2019-03-126325
NON-FINAL ACTION WRITTEN2019-03-1273703
NON-FINAL ACTION E-MAILED2019-03-126325
ASSIGNED TO EXAMINER2019-03-1173703
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM2019-01-04
NEW APPLICATION ENTERED IN TRAM2018-12-15

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