WHEN IT MATTERS

Table of contents:

The "WHEN IT MATTERS" trademark, serial number 85976749 , was filed on 28th of January 2011 with a mark drawing code of 4000 and its transaction date is 85976749. Since 10th of June 2014, the document can be found in the M10 law office in the publication and issue section. The employee responsible is CASTRO, GIANCARLO and the date it was published for opposition on 01/29/2013. The status of this trademark was checked last on 12/10/2013.

Prior registrations: 85229182 (Continuity Parent)

The corresponded responsible for this trademark is KEVIN OLIVEIRA, located at ODIN FELDMAN & PITTLEMAN PC, 1775 WIEHLE AVENUE, SUITE 400, RESTON VA 20190-5159.

The state or country where the trademark was organized is VA by Ntiva, Inc.. The legal entity type behing it is a Corporation, located at 7900 West Park Dr. Suite A50 - A 70, Mclean, VA zip 22102.

GOODS AND/OR SERVICES
International Class - 037 - Building construction; repair; installation services.
U.S. Class106 - Material Treatment
Class Status6 - Active
Status Date02/02/2011
Primary Code037
International Class - 039 - Transport; packaging and storage of goods; travel arrangement
U.S. Class105 - Transportation and Storage
Class Status6 - Active
Status Date10/28/2011
Primary Code039
Goods codes
GS0371Installation, maintenance and repair of computer networks, computer systems and computer hardware and telecommunications equipment and services; consultation in the operation, installation, maintenance and repair of computer networks, computer systems and computer hardware and telecommunications equipment and services
GS0391electronic storage of data that may be transmitted and retrieved remotely via a global computer network; electronic storage of data
PROSECUTION HISTORY
DateDescriptionTypeCode
06/02/2014 TEAS STATEMENT OF USE RECEIVED I - Incoming Correspondence EISU - TEAS STATEMENT OF USE RECEIVED
06/02/2014 TEAS CHANGE OF CORRESPONDENCE RECEIVED I - Incoming Correspondence TCCA - TEAS CHANGE OF CORRESPONDENCE RECEIVED
12/10/2013 NOA MAILED - SOU REQUIRED FROM APPLICANT O - Outgoing Correspondence NOAM - NOTICE OF ALLOWANCE-MAILED
10/31/2013 TTAB RELEASE CASE TO TRADEMARKS T - TTAB Proceeding TMBN
10/31/2013 OPPOSITION TERMINATED NO. 999999 T - TTAB Proceeding OP.T - OPPOSITION TERMINATED NO. 999999
10/31/2013 OPPOSITION DISMISSED NO. 999999 T - TTAB Proceeding OP.D - OPPOSITION DISMISSED NO. 999999
05/30/2013 OPPOSITION INSTITUTED NO. 999999 T - TTAB Proceeding OP.I - OPPOSITION INSTITUTED NO. 999999
02/04/2013 EXTENSION OF TIME TO OPPOSE RECEIVED T - TTAB Proceeding ETOF - EXTENSION OF TIME TO OPPOSE RECEIVED
01/29/2013 PUBLISHED FOR OPPOSITION A - Allowance for Publication PUBO - PUBLISHED FOR OPPOSITION
01/09/2013 NOTICE OF PUBLICATION O - Outgoing Correspondence NPUB - NOTICE OF PUBLICATION
12/22/2012 LAW OFFICE PUBLICATION REVIEW COMPLETED O - Outgoing Correspondence PREV - LAW OFFICE PUBLICATION REVIEW COMPLETED
12/21/2012 ASSIGNED TO LIE A - Allowance for Publication ALIE - ASSIGNED TO LIE
12/05/2012 APPROVED FOR PUB - PRINCIPAL REGISTER P CNSA - APPROVED FOR PUB - PRINCIPAL REGISTER
12/05/2012 TEAS/EMAIL CORRESPONDENCE ENTERED I - Incoming Correspondence TEME - TEAS/EMAIL CORRESPONDENCE ENTERED
12/05/2012 CORRESPONDENCE RECEIVED IN LAW OFFICE I - Incoming Correspondence CRFA - CORRESPONDENCE RECEIVED IN LAW OFFICE
11/14/2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED I - Incoming Correspondence TROA - TEAS RESPONSE TO OFFICE ACTION RECEIVED
09/28/2012 TEAS CHANGE OF CORRESPONDENCE RECEIVED I - Incoming Correspondence TCCA - TEAS CHANGE OF CORRESPONDENCE RECEIVED
05/30/2012 NON-FINAL ACTION MAILED O - Outgoing Correspondence CNRT - NON-FINAL ACTION MAILED
05/29/2012 AMENDMENT OF ALLEGED USE DISAPPROVED F - First Action AAUD - AMENDMENT OF ALLEGED USE DISAPPROVED
05/29/2012 NON-FINAL ACTION WRITTEN R - Renewal CNRT - NON-FINAL ACTION WRITTEN
05/09/2012 DIVISIONAL PROCESSING COMPLETE D - Assigned to Examiner DPCC - DIVISIONAL PROCESSING COMPLETE
03/30/2012 DIVISIONAL REQUEST RECEIVED I - Incoming Correspondence DRRR - DIVISIONAL REQUEST RECEIVED
05/09/2012 CASE ASSIGNED TO INTENT TO USE PARALEGAL A - Allowance for Publication AITU
04/12/2012 ASSIGNED TO LIE A - Allowance for Publication ALIE - ASSIGNED TO LIE
03/30/2012 TEAS REQUEST FOR RECONSIDERATION RECEIVED I - Incoming Correspondence ERFR
03/30/2012 TEAS REQUEST TO DIVIDE RECEIVED I - Incoming Correspondence ERTD
03/30/2012 TEAS AMENDMENT OF USE RECEIVED I - Incoming Correspondence EAAU - TEAS AMENDMENT OF USE RECEIVED
03/30/2012 EX PARTE APPEAL-INSTITUTED T - TTAB Proceeding EXPI - EX PARTE APPEAL-INSTITUTED
03/30/2012 JURISDICTION RESTORED TO EXAMINING ATTORNEY T - TTAB Proceeding JURT
03/30/2012 EXPARTE APPEAL RECEIVED AT TTAB T - TTAB Proceeding EXAF - EXPARTE APPEAL RECEIVED AT TTAB
11/22/2011 FINAL REFUSAL MAILED O - Outgoing Correspondence CNFR - FINAL REFUSAL MAILED
11/22/2011 FINAL REFUSAL WRITTEN R - Renewal CNFR - FINAL REFUSAL WRITTEN
11/22/2011 PREVIOUS ALLOWANCE COUNT WITHDRAWN Z - Deletion ZZZX - PREVIOUS ALLOWANCE COUNT WITHDRAWN
11/22/2011 APPROVED FOR PUB - PRINCIPAL REGISTER P CNSA - APPROVED FOR PUB - PRINCIPAL REGISTER
10/28/2011 TEAS/EMAIL CORRESPONDENCE ENTERED I - Incoming Correspondence TEME - TEAS/EMAIL CORRESPONDENCE ENTERED
10/28/2011 CORRESPONDENCE RECEIVED IN LAW OFFICE I - Incoming Correspondence CRFA - CORRESPONDENCE RECEIVED IN LAW OFFICE
10/28/2011 TEAS RESPONSE TO OFFICE ACTION RECEIVED I - Incoming Correspondence TROA - TEAS RESPONSE TO OFFICE ACTION RECEIVED
04/28/2011 NON-FINAL ACTION MAILED F - First Action CNRT - NON-FINAL ACTION MAILED
04/27/2011 NON-FINAL ACTION WRITTEN R - Renewal CNRT - NON-FINAL ACTION WRITTEN
04/26/2011 ASSIGNED TO EXAMINER D - Assigned to Examiner DOCK - ASSIGNED TO EXAMINER
02/02/2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM I - Incoming Correspondence NWOS
02/01/2011 NEW APPLICATION ENTERED IN TRAM I - Incoming Correspondence NWAP - NEW APPLICATION ENTERED IN TRAM

The "WHEN IT MATTERS" trademark, serial number 85229191 , was filed on 28th of January 2011 with a mark drawing code of 4000 and its transaction date is 85229191. Since 2nd of April 2012, the document can be found in the M10 law office in the publication and issue section. The employee responsible is CASTRO, GIANCARLO and the date it was published for opposition on 01/10/2012. The status of this trademark was checked last on 03/06/2012.

The corresponded responsible for this trademark is KEVIN OLIVEIRA, located at ODIN, FELDMAN & PITTLEMAN, PC, 9302 LEE HWY STE 1100, FAIRFAX, VA 22031-1215.

The state or country where the trademark was organized is VA by Ntiva, Inc.. The legal entity type behing it is a Corporation, located at 7900 West Park Dr. Suite A50 - A 70, Mclean, VA zip 22102.

GOODS AND/OR SERVICES
International Class - 035 - Advertising; business management; business administration; office functions.
U.S. Class102 - Insurance and Financial
Class Status6 - Active
Status Date02/02/2011
Primary Code035
Goods codes
GS0351retail store services featuring computer hardware, software, network and networking components, telecommunications products and services, cabling and wiring
PROSECUTION HISTORY
DateDescriptionTypeCode
03/30/2012 TEAS STATEMENT OF USE RECEIVED I - Incoming Correspondence EISU - TEAS STATEMENT OF USE RECEIVED
03/06/2012 NOA MAILED - SOU REQUIRED FROM APPLICANT O - Outgoing Correspondence NOAM - NOTICE OF ALLOWANCE-MAILED
01/10/2012 PUBLISHED FOR OPPOSITION A - Allowance for Publication PUBO - PUBLISHED FOR OPPOSITION
12/21/2011 NOTICE OF PUBLICATION O - Outgoing Correspondence NPUB - NOTICE OF PUBLICATION
12/03/2011 LAW OFFICE PUBLICATION REVIEW COMPLETED O - Outgoing Correspondence PREV - LAW OFFICE PUBLICATION REVIEW COMPLETED
11/21/2011 ASSIGNED TO LIE A - Allowance for Publication ALIE - ASSIGNED TO LIE
10/28/2011 APPROVED FOR PUB - PRINCIPAL REGISTER P CNSA - APPROVED FOR PUB - PRINCIPAL REGISTER
10/28/2011 TEAS/EMAIL CORRESPONDENCE ENTERED I - Incoming Correspondence TEME - TEAS/EMAIL CORRESPONDENCE ENTERED
10/28/2011 CORRESPONDENCE RECEIVED IN LAW OFFICE I - Incoming Correspondence CRFA - CORRESPONDENCE RECEIVED IN LAW OFFICE
10/28/2011 TEAS RESPONSE TO OFFICE ACTION RECEIVED I - Incoming Correspondence TROA - TEAS RESPONSE TO OFFICE ACTION RECEIVED
04/28/2011 NON-FINAL ACTION MAILED F - First Action CNRT - NON-FINAL ACTION MAILED
04/27/2011 NON-FINAL ACTION WRITTEN R - Renewal CNRT - NON-FINAL ACTION WRITTEN
04/26/2011 ASSIGNED TO EXAMINER D - Assigned to Examiner DOCK - ASSIGNED TO EXAMINER
02/02/2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM I - Incoming Correspondence NWOS
02/01/2011 NEW APPLICATION ENTERED IN TRAM I - Incoming Correspondence NWAP - NEW APPLICATION ENTERED IN TRAM

The "WHEN IT MATTERS" trademark, serial number 85229182 , was filed on 28th of January 2011 with a mark drawing code of 4000 and its transaction date is 85229182. Since 10th of June 2014, the document can be found in the M10 law office in the publication and issue section. The employee responsible is CASTRO, GIANCARLO and the date it was published for opposition on 02/19/2013. The status of this trademark was checked last on 12/10/2013.

Prior registrations: 85976749 (Continuity Child)

The corresponded responsible for this trademark is KEVIN OLIVEIRA, located at ODIN FELDMAN & PITTLEMAN PC, 1775 WIEHLE AVENUE, SUITE 400, RESTON VA 20190-5159.

The state or country where the trademark was organized is VA by Ntiva, Inc.. The legal entity type behing it is a Corporation, located at 7900 West Park Dr. Suite A50 - A 70, Mclean, VA zip 22102.

GOODS AND/OR SERVICES
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.
U.S. Class101 - Advertising and Business
Class Status6 - Active
Status Date02/02/2011
Primary Code042
Goods codes
GS0421software consulting services; planning, designing, and configuring computer networks; installation, maintenance, and repair of computer software; computer network and software technical support services; remote computer network technical monitoring and software maintenance services; help desk services, namely, troubleshooting of computer hardware and software problems; analysis and design of technical security and firewall systems for computer networks; development of software applications; website design; database design and development; design and development of computer software; website hosting; computer consultation in the areas of technical support, network security, and the use and operation of computer software; computer consultation in the areas of computer network infrastructure systems analysis and integration; remote network monitoring; remote computer backup services; design and development of computer hardware and computer software; computer consultation services; computer services, namely, computer system design and development; computer hardware and software integration for computer systems; computer programming services; computer software design services; computer systems analysis; computer systems design services; software development; providing temporary use of non downloadable computer software for computer systems analysis; database development; maintenance of software, software systems and internet web sites; information technology consultation services; computer consultation on the computer-related aspects of information technology security and e-commerce; providing information over local and internal computer networks and the internet on the subjects of computer analysis, computer systems design services, and software and software development; integration of computer systems and networks into multiple systems and networks; providing computer and computer network security services in the nature of implementing technical security and firewall systems, namely, updating and upgrading of systems and computer software relating to computer security and prevention of computer risks; back-up services for computer hard drive data
PROSECUTION HISTORY
DateDescriptionTypeCode
06/02/2014 TEAS STATEMENT OF USE RECEIVED I - Incoming Correspondence EISU - TEAS STATEMENT OF USE RECEIVED
06/02/2014 TEAS CHANGE OF CORRESPONDENCE RECEIVED I - Incoming Correspondence TCCA - TEAS CHANGE OF CORRESPONDENCE RECEIVED
12/10/2013 NOA MAILED - SOU REQUIRED FROM APPLICANT O - Outgoing Correspondence NOAM - NOTICE OF ALLOWANCE-MAILED
10/29/2013 TTAB RELEASE CASE TO TRADEMARKS T - TTAB Proceeding TMBN
10/29/2013 OPPOSITION TERMINATED NO. 999999 T - TTAB Proceeding OP.T - OPPOSITION TERMINATED NO. 999999
10/29/2013 OPPOSITION DISMISSED NO. 999999 T - TTAB Proceeding OP.D - OPPOSITION DISMISSED NO. 999999
06/12/2013 OPPOSITION INSTITUTED NO. 999999 T - TTAB Proceeding OP.I - OPPOSITION INSTITUTED NO. 999999
02/26/2013 EXTENSION OF TIME TO OPPOSE RECEIVED T - TTAB Proceeding ETOF - EXTENSION OF TIME TO OPPOSE RECEIVED
02/19/2013 PUBLISHED FOR OPPOSITION A - Allowance for Publication PUBO - PUBLISHED FOR OPPOSITION
01/30/2013 NOTICE OF PUBLICATION O - Outgoing Correspondence NPUB - NOTICE OF PUBLICATION
01/11/2013 LAW OFFICE PUBLICATION REVIEW COMPLETED O - Outgoing Correspondence PREV - LAW OFFICE PUBLICATION REVIEW COMPLETED
12/19/2012 EXPARTE APPEAL TERMINATED T - TTAB Proceeding EXPT - EXPARTE APPEAL TERMINATED
12/18/2012 APPROVED FOR PUB - PRINCIPAL REGISTER P CNSA - APPROVED FOR PUB - PRINCIPAL REGISTER
11/27/2012 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED I - Incoming Correspondence CHAN - APPLICANT CHANGES (NON-RESPONSIVE) ENTERED
11/27/2012 TEAS/EMAIL CORRESPONDENCE ENTERED I - Incoming Correspondence TEME - TEAS/EMAIL CORRESPONDENCE ENTERED
11/27/2012 CORRESPONDENCE RECEIVED IN LAW OFFICE I - Incoming Correspondence CRFA - CORRESPONDENCE RECEIVED IN LAW OFFICE
11/14/2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED I - Incoming Correspondence TROA - TEAS RESPONSE TO OFFICE ACTION RECEIVED
09/28/2012 TEAS CHANGE OF CORRESPONDENCE RECEIVED I - Incoming Correspondence TCCA - TEAS CHANGE OF CORRESPONDENCE RECEIVED
05/30/2012 NON-FINAL ACTION MAILED O - Outgoing Correspondence CNRT - NON-FINAL ACTION MAILED
05/29/2012 AMENDMENT OF ALLEGED USE DISAPPROVED F - First Action AAUD - AMENDMENT OF ALLEGED USE DISAPPROVED
05/29/2012 NON-FINAL ACTION WRITTEN R - Renewal CNRT - NON-FINAL ACTION WRITTEN
05/09/2012 DIVISIONAL PROCESSING COMPLETE D - Assigned to Examiner DPCC - DIVISIONAL PROCESSING COMPLETE
03/30/2012 DIVISIONAL REQUEST RECEIVED I - Incoming Correspondence DRRR - DIVISIONAL REQUEST RECEIVED
05/09/2012 CASE ASSIGNED TO INTENT TO USE PARALEGAL A - Allowance for Publication AITU
04/12/2012 ASSIGNED TO LIE A - Allowance for Publication ALIE - ASSIGNED TO LIE
03/30/2012 TEAS REQUEST FOR RECONSIDERATION RECEIVED I - Incoming Correspondence ERFR
03/30/2012 TEAS REQUEST TO DIVIDE RECEIVED I - Incoming Correspondence ERTD
03/30/2012 TEAS AMENDMENT OF USE RECEIVED I - Incoming Correspondence EAAU - TEAS AMENDMENT OF USE RECEIVED
03/30/2012 EX PARTE APPEAL-INSTITUTED T - TTAB Proceeding EXPI - EX PARTE APPEAL-INSTITUTED
03/30/2012 JURISDICTION RESTORED TO EXAMINING ATTORNEY T - TTAB Proceeding JURT
03/30/2012 EXPARTE APPEAL RECEIVED AT TTAB T - TTAB Proceeding EXAF - EXPARTE APPEAL RECEIVED AT TTAB
11/22/2011 FINAL REFUSAL MAILED O - Outgoing Correspondence CNFR - FINAL REFUSAL MAILED
11/22/2011 FINAL REFUSAL WRITTEN R - Renewal CNFR - FINAL REFUSAL WRITTEN
11/22/2011 PREVIOUS ALLOWANCE COUNT WITHDRAWN Z - Deletion ZZZX - PREVIOUS ALLOWANCE COUNT WITHDRAWN
11/22/2011 APPROVED FOR PUB - PRINCIPAL REGISTER P CNSA - APPROVED FOR PUB - PRINCIPAL REGISTER
10/28/2011 TEAS/EMAIL CORRESPONDENCE ENTERED I - Incoming Correspondence TEME - TEAS/EMAIL CORRESPONDENCE ENTERED
10/28/2011 CORRESPONDENCE RECEIVED IN LAW OFFICE I - Incoming Correspondence CRFA - CORRESPONDENCE RECEIVED IN LAW OFFICE
10/28/2011 TEAS RESPONSE TO OFFICE ACTION RECEIVED I - Incoming Correspondence TROA - TEAS RESPONSE TO OFFICE ACTION RECEIVED
04/28/2011 NON-FINAL ACTION MAILED F - First Action CNRT - NON-FINAL ACTION MAILED
04/27/2011 NON-FINAL ACTION WRITTEN R - Renewal CNRT - NON-FINAL ACTION WRITTEN
04/26/2011 ASSIGNED TO EXAMINER D - Assigned to Examiner DOCK - ASSIGNED TO EXAMINER
02/02/2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM I - Incoming Correspondence NWOS
02/01/2011 NEW APPLICATION ENTERED IN TRAM I - Incoming Correspondence NWAP - NEW APPLICATION ENTERED IN TRAM


Information gathered on 12/31/2009. No claim is made regarding the current trademark status. This page is not to be used as legal documentation. Always consult a licensed attorney.

Based on public records. Inadvertent errors are possible.
This web site is not associated with, endorsed by, or sponsored by and has no official or unofficial affiliation with the trademark's owners.