EQUINITI - Trademark Details
Status: 404 - U.S. registration cancelled because International Registration cancelled in whole or in part
Image for trademark with serial number 79054551
Serial Number
79054551
Registration Number
3722473
Word Mark
EQUINITI
Status
404 - U.S. registration cancelled because International Registration cancelled in whole or in part
Status Date
2017-12-05
Filing Date
2007-12-04
Registration Number
3722473
Registration Date
2009-12-08
Mark Drawing
4000 - Standard character mark Typeset
Published for Opposition Date
2009-09-22
Attorney Name
Law Office Assigned Location Code
L90
Employee Name
STRUCK, ROBERT J
Statements
Certificate of Correction for Registration
In the statement, Page 2, line 21, after "DEALING" "TO RETAIL AND REGISTRATION SERVICE CUSTOMERS" should be inserted. In the statement, Page 2, line 23, after "SERVICES" "TO RETAIL, REGISTRATION SERVICE AND EXECUTION ONLY CUSTOMERS" should be inserted. In the statement, Page 2, line 36, "INDEPENDENT FINANCIAL ADVICE" should be deleted. In the statement, Page 2, line 41, through line 42, "SHARE DEALING SERVICES, NAMELY, STOCK BROKERAGE;" should be deleted. In the statement, Page 2, line 42, after "SERVICES" "TO RETAIL, REGISTRATION SERVICE AND EXECUTION ONLY CUSTOMERS" should be inserted. In the statement, Page 2, line 45, after "SHAREHOLDINGS" "TO RETAIL, REGISTRATION SERVICE AND EXECUTION ONLY CUSTOMERS" should be inserted. In the statement, Page 2, line 53, after "BROKERAGE SERVICES" "TO RETAIL AND REGISTRATION SERVICE CUSTOMERS" should be inserted. In the statement, Page 2, line 56, after "VALUATIONS" "TO RETAIL CUSTOMERS" should be inserted. In the statement, Page 3, line 1, after "SHARES" "TO RETAIL, REGISTRATION SERVICE AND EXECUTION ONLY CUSTOMERS" should be inserted. In the statement, Page 3, line 2, after "CONDITIONS" "TO RETAIL, REGISTRATION SERVICE AND EXECUTION ONLY CUSTOMERS" should be inserted. In the statement, Page 3, line 34, "BANKING SERVICES" should be deleted. In the statement, Page 3, line 51, "FINANCE," should be deleted. In the statement, Page 3, line 55, "MERCHANT BANKING AND INVESTMENT BANKING SERVICES;" should be deleted. In the statement, Page 3, line 58, after "FUTURES" "FOR RETAIL AND REGISTRATION SERVICES CUSTOMERS" should be inserted. In the statement, Page 4, line 1, after "SERVICES" "TO RETAIL CUSTOMERS" should be inserted. In the statement, Page 4, line 5, through line 6, "INSURANCE UNDERWRITING SERVICES FOR ALL TYPES OF INSURANCE;" should be deleted. In the statement, Page 4, line 10, through line 12, "FINANCIAL PLANNING AND INVESTMENT ADVISORY SERVICES; INVESTMENT MANAGEMENT AND FINANCIAL MANAGEMENT SERVICES; FINANCIAL RESEARCH SERVICES;" should be deleted. In the statement, Page 4, line 14, after "INFORMATION" "BUT NOT INCLUDING PROVISION OF BUSINESS AND FINANCIAL INFORMATION RELATING TO COMPANIES AND THEIR FINANCIAL PERFORMANCE" should be inserted. In the statement, Page 4, line 16, after "INVESTMENTS" "TO RETAIL, REGISTRATION SERVICE AND EXECUTION ONLY CUSTOMERS" should be inserted. In the statement, Page 4, line 24, after "SERVICES" "TO RETAIL AND REGISTRATION SERVICE CUSTOMERS" should be inserted. In the statement, Page 4, line 24, through line 27, "ADVISING ON AND MANAGING COMPANIES` CAPITAL STRUCTURES, FLOTATIONS, MERGERS, TAKEOVERS, DEMERGERS, RIGHTS ISSUES, CAPITALISATION ISSUES AND INITIAL PUBLIC OFFERINGS (IPOS); BANKING AND FINANCING SERVICES" should be deleted. In the statement, Page 4, line 34, through line 35, "AND PROVISION OF BANKING SERVICES VIA THE TELEPHONE, THE INTERNET AND INTERACTIVE TELEVISION, NAMELY, ISSUING CREDIT CARDS" should be deleted. In the statement, Page 4, line 40, through line 41, "ELECTRONIC BANKING AND ELECTRONIC FUNDS TRANSFER SERVICES;" should be deleted. In the statement, Page 4, line 43, through line 45, "STOCKBROKING AND SHARE DEALING SERVICES, NAMELY, STOCK BROKERAGE; FINANCIAL PLANNING, ADVICE, RESEARCH AND INFORMATION SERVICES;" should be deleted. In the statement, Page 4, line 50, through line 52, "CORPORATE FINANCE, NAMELY, CONSULTATION IN THE FIELD OF CAPITAL STRUCTURE; CAPITAL MARKETS DEALINGS, NAMELY CAPITAL INVESTMENT SERVICES;" should be deleted.
Goods and Services
Business process outsourcing services in the field of financial and business management; business administration; business management; business management and administration services in the field of share registration, dealing, acquisition and disposal; business management and administration of financial affairs; maintenance of statutory registers, namely, computerized register management; management, maintenance and updating of shareholder records, namely, shareholder record keeping services; attending upon dividend payments and capital reconstruction for others, namely, financial records management; computer database management; management, maintenance and updating of computer databases, namely, management and compilation of computerized databases; reporting and data processing services, namely, statistical analysis and reporting services for business purposes; data processing, data evaluation, namely, evaluations relating to commercial matters; computerized file management; share registry bureau and support services in the nature of share registration services, namely, registering the ownership of stocks and bonds; data collection services, namely, services consisting of the registration, collection, transcription, compilation and systemization of written communications and data; administration of treasury shares, namely, financial statement preparation and analysis for businesses; customer service in the field of financial and business management; operating call centres, namely, operation of telephone call centres for others; customer enquiries and response handling, namely, providing customer service and product enquiry services via telephone and e-mail for others; operating telephone hotlines that provide information and counselling in the fields of employment and financial affairs to employees, retirees and shareholders, namely, management of telephone call centres for others; personnel-related services, namely, personnel management; conducting business and market research surveys; business appraisal; business consultancy services; business information, enquiry, research and investigation services; business organisation consulting; accounting and book-keeping services; economic forecasting and analysis; personnel management, consultancy and recruitment services; rental of office machinery; arranging and conducting of exhibitions, for business and advertising purposes; organisation and preparation of payroll, namely, administration of business payroll for others; publicity and sales promotion services; telephone answering services; consulting services relating to personnel, employee compensation and benefits, to corporate organization, to strategic planning, to marketing, to share dealing, and to business administration and management, namely, business consultation; services relating to investor relations, namely, business appraisal consultancy services; business management, advisory, information and consultation services in the field of corporate social responsibility; management and administration of Annual General Meetings and Extraordinary General Meetings, namely, arranging and conducting business conferences; advisory, information and consultancy services relating to the aforesaid services, namely, business consultation; tax assessment; preparation and completion of income tax returns, namely, tax preparation; provision of information relating to tax; tax consulting and planning services; business consulting and advisory services; provision of statements of account, namely, account auditing; registration, administration and secretarial services for companies, namely, company secretarial services; document reproduction services; providing online information in the field of business management; providing an interactive website featuring information in the field of business management; providing an online computer database in the field of business management
Goods and Services
Management and analysis of shareholders and share dealing * to retail and registration service customers, * namely, share price and holding information services; share dealing services * to retail, registration service and execution only customers, * namely, brokerage of shares and other securities; investor relations services, namely, administration information relating to stock holdings; employee share scheme planning, management and administration services, namely, managing employee portfolios comprising securities; executive share scheme planning, management and administration, namely, managing employee portfolios comprising securities; share incentive scheme planning, management and administration, namely, managing employee portfolios comprising securities; planning, management and administration of employee benefit schemes, namely, managing employee portfolios comprising securities; dividend and interest management, banking, payment, distribution, and planning services, namely, financial management; debt recovery and collection agencies; corporate and personal trust administration, namely, financial trust operations; [ independent financial advice; ] unit trust and Open Ended Investment Companies (OEICs) administration in the nature of annuity services, namely, account and investment administration; share scheme administration, namely, financial administration of employee retirement plans; pension administration and advice, namely, administration of pension funds; [ share dealing services, namely, stock brokerage; ] share dealing, administration and brokerage services * to retail, registration service and execution only customers, * namely, investment brokerage; portfolio management and administration, namely, financial portfolio management; administration, analysis, and reporting of shares and shareholdings * to retail, registration service and execution only customers, * namely, stock exchange information services; employee share schemes, namely, managing employee portfolios comprising securities and administration information relating to stock holdings; executive share plans, namely, managing employee portfolios comprising securities; share incentive schemes, namely, managing employee portfolios comprising securities; trustee services; benefit schemes, namely, administration of employee flexible benefit plans; provision of information relating to accounts; securities brokerage services * to retail and registration service customers; * financial and investment services, namely, management and brokerage in the fields of stocks, bonds, options, commodities, futures and other securities, and the investment of funds of others; investment portfolio valuations * to retail customers, * namely, financial valuation of personal property and real estate; valuation of securities, stocks and shares * to retail, registration service and execution only customers, * namely, fiscal valuations and assessments; provision of information relating to shares, share prices and market conditions * to retail, registration service and execution only customers, * namely, providing stock market information; administration of pension and compensation schemes and consultancy services relating thereto, namely, administration of employee pension plans; advice, information and management of financial options and benefit schemes, namely, processing, administering and managing employee benefit plans; provision, advice and information in relation to flexible benefit schemes, namely, financial consultation; pension scheme administration services, namely, administration of employee pension plans; pension scheme documentation services, namely, administration of employee welfare benefit plans; consultancy services relating to retirement benefits, namely, financial consulting; administration of share schemes, namely, financial administration of retirement plans; financial services provided to employers, namely, issuance of paycheques to employees, transfers of funds, and deposits to accounts with respect to payroll and payroll disbursements, payroll taxes, payroll deductions, unemployment compensation, wage attachments and benefits, namely, banking services; payroll tax debiting and crediting services; tax payment processing services, namely, processing federal, state and local payroll withholding taxes and remittance of taxes to the appropriate taxing authorities; benefits administration, enrollment and eligibility services for employers and employees relating to employee health, insurance, welfare, transportation, educational assistance and retirement benefits, namely, administration of employee benefit plans concerning insurance and finance; insurance and life assurance services, namely, life insurance underwriting; insurance brokerage; actuarial services; financial analysis and consultation; monetary strategy consultation and research; real estate assessment and management; valuations and financial appraisals of property, namely, appraisal of real estate; property acquisition and management services, namely, land acquisition services; rental, letting and lease of properties, namely, leasing of real property; rental of office space; leasing services, namely, leasing of real estate; [ banking services; ] administration of financial affairs, namely, financial due diligence; charitable fund raising services; administration of mutual funds, namely, mutual fund distribution; mutual funds services, namely, mutual fund investment; cash management services; credit card factoring services; invoice discounting services, namely, loans and discount of bills; cash dispensing services, namely, automated teller machine services; loan financing; mortgage lending; mortgage brokerage; provision of security for loans, namely, guarantee assurance underwriting; registration services for credit cards, charge cards, cash cards, cheque guarantee cards, debit cards, payment cards, financial cards and purchase cards; card and cash replacement services, namely, cash replacement rendered by credit card; rental, hire and leasing of equipment for processing financial cards and data relating thereto, namely, rental of cash dispensers or automated-teller machines; processing of data relating to card transactions and other payment transactions, namely, credit card transaction processing services; provision of [ finance, ] money exchange and money transmission services, namely, electronic transfer of money; currency services, namely, currency exchange and advice; bureau de change services, namely, currency transfer services; foreign exchange information services; [ merchant banking and investment banking services; ] equity capital investment and savings account services; investment management services; brokerage of bonds, securities, commodities and futures * for retail and registration services customers; * market making services, namely, commodity brokerage; securities valuation services * to retail customers, * namely, stock exchange price quotations; share underwriting services, namely, guarantee assurance underwriting; securities lending services, namely, commercial lending services; dividend collection services, namely, collection of debts; payment collection services, namely, collection agencies; [ insurance underwriting services for all types of insurance; ] unit trust services, namely, estate trust management; investment trust services, namely, trust management accounts; securities brokerage; personal equity plan services, namely, financial portfolio management services; tax services, namely, fiduciary tax payment processing services; [ financial planning and investment advisory services; investment management and financial management services; financial research services; ] pension fund services, namely, administration of employee pension plans; provision of financial information * but not including provision of business and financial information relating to companies and their financial performance; * electronic stock transfer services, namely, investment by electronic means; safe-keeping, administration and valuation of investments * to retail, registration service and execution only customers, * namely, investment management; collateral agency services, namely, mortgaging of securities for others; securities custody services in the nature of financial investment services, namely, administering the issuance, underwriting and distribution of securities; safe custody services, namely, safe deposit box services; financial information services relating to investment portfolios, indicative share prices, share balance movements, share dealing, employee share schemes, ISAs (Individual Savings Accounts), and corporate-sponsored nominee shareholding services * to retail and registration service customers; * [ advising on and managing companies` capital structures, flotations, mergers, takeovers, demergers, rights issues, capitalisation issues and Initial Public Offerings (IPOs); banking and financing services; ] deposit-taking and storage of valuables, namely, safety deposit box services; credit consultation; consumer, commercial and mortgage lending; current accounts, savings and investment accounts, bank card, credit card, debit card, charge card and cash card services, namely, checking account, savings account, credit and cash card and debit card services; issuance of electronic purses and chipcards for electronic payment; [ and provision of banking services via the telephone, the Internet and interactive television, namely, issuing credit cards; ] money transfer; issue of letters of credit and financial guarantees; foreign exchange transactions; issue of travellers cheques and bank cheques; futures, forwards, derivatives and option markets transactions in the nature of financial services, namely, investment fund transfer and transaction services; [ electronic banking and electronic funds transfer services; ] money transfer services; electronic money transfer services; financial leasing, namely, lease securitization; global custody services, namely, safe deposit services; [ stockbroking and share dealing services, namely, stock brokerage; financial planning, advice, research and information services; ] financial and portfolio management; personal equity plans, namely, providing a web site featuring personal financial information and financial advice; tax and estate planning; pensions services, namely, administration of employee pension plans; fiduciary representatives and trustee services; investment funds and unit trust services, namely, investment of funds for others; [ corporate finance, namely, consultation in the field of capital structure; capital markets dealings, namely, capital investment services; ] export and project finance, namely, financing of industrial activities; provision of development capital and equity finance, namely, project financing; lease-purchase financing; factoring and invoice discounting, namely, loans and discount of bills; real estate agency services; property survey, valuation, investment and management services, namely, evaluation and management of real property; insurance agencies; insurance underwriting services for all types of insurance and insurance brokerage; life insurance underwriting; services relating to investor relations, namely, financial consultancy services; advisory, information and consultancy services relating to the aforesaid services, namely, financial information and advisory services; providing online information in the field of financial management; providing an interactive website featuring information in the field of financial management; providing an online computer database in the field of financial management
Classification Information
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
F - Section 71 - Cancelled
Class Status Date
2016-07-15
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
F - Section 71 - Cancelled
Class Status Date
2016-07-15
Primary Code
036
Correspondences
Name
FIELD FISHER WATERHOUSE LLP
Address
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International Registrations
International Registration Number
0966187
International Registration Date
2007-12-04
International Publication Date
2008-07-31
International Renewal Date
2017-12-04
Auto Protection Date
2010-01-10
International Status
102 - Death of IR (Dead as a Result of Non-Renewal, Renunciation or Cancellation by Holder of International Registration)
International Status Date
2017-12-05
Priority Claimed In
True
Priority Claimed Date
2007-06-04
First Refusal In
True
Trademark Events
Event DateEvent Description
2008-07-10SN ASSIGNED FOR SECT 66A APPL FROM IB
2008-07-11NEW APPLICATION ENTERED IN TRAM
2008-07-11ASSIGNED TO EXAMINER
2008-07-17NON-FINAL ACTION WRITTEN
2008-07-18NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
2008-07-21REFUSAL PROCESSED BY MPU
2008-07-21NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
2008-08-15REFUSAL PROCESSED BY IB
2008-08-22TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
2008-08-22ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
2009-01-16TEAS RESPONSE TO OFFICE ACTION RECEIVED
2009-01-26ASSIGNED TO LIE
2009-01-26CORRESPONDENCE RECEIVED IN LAW OFFICE
2009-01-26TEAS/EMAIL CORRESPONDENCE ENTERED
2009-02-10FINAL REFUSAL WRITTEN
2009-02-11FINAL REFUSAL MAILED
2009-08-10TEAS REQUEST FOR RECONSIDERATION RECEIVED
2009-08-10CORRESPONDENCE RECEIVED IN LAW OFFICE
2009-08-11TEAS/EMAIL CORRESPONDENCE ENTERED
2009-08-14APPROVED FOR PUB - PRINCIPAL REGISTER
2009-08-17LAW OFFICE PUBLICATION REVIEW COMPLETED
2009-09-02NOTICE OF PUBLICATION
2009-09-22PUBLISHED FOR OPPOSITION
2009-12-08REGISTERED-PRINCIPAL REGISTER
2010-03-08FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
2010-03-23FINAL DISPOSITION PROCESSED
2010-03-23FINAL DISPOSITION NOTICE SENT TO IB
2011-06-26NEW REPRESENTATIVE AT IB RECEIVED
2011-06-26LIMITATION OF GOODS RECEIVED FROM IB
2012-12-28NEW REPRESENTATIVE AT IB RECEIVED
2013-01-28FINAL DECISION TRANSACTION PROCESSED BY IB
2016-01-21CASE ASSIGNED TO POST REGISTRATION PARALEGAL
2016-01-21CERTIFICATE OF CORRECTION ISSUED
2016-01-22LIMITATION FROM THE IB EXAMINED AND ENTERED
2016-07-15CANCELLED SECTION 71
2017-03-15TOTAL INVALIDATION OF REG EXT PROTECTION CREATED
2017-03-25INVALIDATION PROCESSED
2017-03-25TOTAL INVALIDATION OF REG EXT PROTECTION SENT TO IB
2017-05-12TOTAL INVALIDATION PROCESSED BY THE IB
2017-06-15NEW REPRESENTATIVE AT IB RECEIVED
2018-06-22DEATH OF INTERNATIONAL REGISTRATION
2018-06-22NOTIFICATION OF EFFECT OF CANCELLATION OF INTL REG MAILED