MAINTENANCE CONNECTION — 1802565
Application number
1802565
Registration number
TMA1257243
Type(s)
Standard Characters
Category
Trademark
CIPO Status
REGISTERED
TM5 status
LIVE/REGISTRATION/Issued
and Active
The trademark application has been registered with the Office.
Filed
2016-09-29
Registered
2024-09-20
Registration Expiry Date
2034-09-20
Registered Owner
Accruent, LLC
11500 Alterra Parkway
Suite 110
Austin, TX 78758
UNITED STATES OF AMERICA
Agent
CLARK WILSON LLP
900 - 885 WEST GEORGIA STREET
VANCOUVER
BRITISH COLUMBIA V6C3H1
Old Owner
Maintenance Connection, LLC
1477 Drew Avenue, Suite 103
Davis, CA 95618
UNITED STATES OF AMERICA
Old Owner
MC Seller Holdings, Inc.
1477 Drew Avenue, Suite 103
Davis, CA 95616
UNITED STATES OF AMERICA
Documents
Index headings
- MAINTENANCE CONNECTION
- CONNEXION
Goods (Nice class & Statement)
- 9
- (1) Downloadable cloud computer software for maintenance management, namely, scheduling, tracking and managing preventative and predictive maintenance, tasks, equipment inventory, and emergency repairs in the fields of industry and manufacturing, namely warehouse management, process manufacturing, power generation, oil and gas, energy delivery, metal and mining and vehicle fleets, healthcare, namely, hospitals, medical facilities, biomed facilities, senior living facilities, and medical device manufacturing, facilities management, and government, namely, local, state and federal government facilities management; Downloadable computer software for maintenance management, namely, scheduling, tracking and managing preventative and predictive maintenance, tasks, equipment inventory, and emergency repairs in the fields of industry and manufacturing, namely warehouse management, process manufacturing, power generation, oil and gas, energy delivery, metal and mining and vehicle fleets, healthcare, namely, hospitals, medical facilities, biomed facilities, senior living facilities, and medical device manufacturing, facilities management, and government, namely, local, state and federal government facilities management.
Services (Nice class & Statement)
- 41
- (1) Training in the use and operation of maintenance software, namely, software for scheduling, tracking and managing preventative and predictive maintenance, tasks, equipment inventory, and emergency repairs in the fields of industry and manufacturing, namely warehouse management, process manufacturing, power generation, oil and gas, energy delivery, metal and mining and vehicle fleets, healthcare, namely, hospitals, medical facilities, biomed facilities, senior living facilities, and medical device manufacturing, facilities management, and government, namely, local, state and federal government facilities management.
- 42
- (2) Providing temporary use of online non-downloadable computer software for maintenance management, namely, scheduling, tracking and managing preventative and predictive maintenance, tasks, equipment inventory, and emergency repairs in the fields of industry and manufacturing, namely warehouse management, process manufacturing, power generation, oil and gas, energy delivery, metal and mining and vehicle fleets, healthcare, namely, hospitals, medical facilities, biomed facilities, senior living facilities, and medical device manufacturing, facilities management, and government, namely, local, state and federal government facilities management.
Claims
- Priority Filing Date: March 30, 2016, Country or Office: UNITED STATES OF AMERICA, Application No. 86958796 in association with the same kind of goods and in association with the same kind of services (1)
Recordals (known also as Footnotes)
CHANGE IN TITLE / CHANGEMENT EN TITRE: TYPE OF CHANGE / GENRE DE CHANGEMENT: Assignment / Cession DATE REGISTERED / DATE DE L'ENREGISTREMENT: 2024-08-28 DATE OF CHANGE / DATE DE CHANGEMENT: 2024-08-14 COMMENTS / COMMENTAIRES: FROM/DE: Maintenance Connection, LLC TO/A: Accruent, LLCAction History
| Action | Action date | Due date | Comments |
|---|---|---|---|
| Filed | 2016-09-29 | ||
| Created | 2016-09-29 | ||
| Formalized | 2016-10-05 | ||
| Search Recorded | 2017-05-16 | ||
| Examiner's First Report | 2017-05-16 | 2017-11-16 | |
| Amendment to Application | 2018-09-07 | Name / Voir Preuve au dossier/See evidence on File No. 1802565 | |
| Approval Notice Sent | 2018-09-10 | 2018-10-08 | Approval notice declared void on 2018/09/11 |
| Correspondence Created | 2018-09-11 | 2019-03-11 | |
| Extension of Time | 2019-03-14 | 2019-09-11 | Request Letter Date: 2019/03/11 |
| Change of Title Registered | 2019-05-10 | Assignment / Voir Preuve au dossier/See evidence on File No. 1802565 | |
| Correspondence Created | 2019-10-29 | 2020-04-29 | |
| Approved | 2020-04-16 | APPROVED BY PROGRAM EX200M1 | |
| Approval Notice Sent | 2020-04-16 | APPROVED BY PROGRAM EX200M1 | |
| Advertised | 2020-05-06 | Vol.67 Issue 3419 | |
| Opposed | 2020-05-13 | S/O filed electronically | |
| Agent Changed | 2021-01-19 | From: 6208 To: 8035 | |
| Opposition Removed | 2024-07-02 | File removed from Opposition back into Advertised. | |
| Registration Pending | 2024-07-10 | ||
| Registration Fee Notice Sent | 2024-07-10 | 2025-01-10 | |
| Change of Title Registered | 2024-08-28 | Assignment/Cession | |
| Registered | 2024-09-20 | 2034-09-20 |
Opposition History
Case # 1 : Asset Pro Solutions Inc. doing business as Maintenance Connection Canada - Closed
| Action | Action date | Due date |
|---|---|---|
| S/O Fee Received | 2020-05-13 | |
| S/O Filed | 2020-05-13 | |
| S/O Forwarded for Review | 2020-05-15 | |
| S/O Sent to Applicant | 2020-05-29 | 2020-07-29 |
| Correspondence Created | 2020-05-29 |
Counter Statement
| Action | Action date | Due date |
|---|---|---|
| C/S Filed by Applicant | 2020-07-27 | |
| C/S Served on Opponent | 2020-07-27 | 2020-11-27 |
Evidence - Opponent
| Action | Action date | Due date |
|---|---|---|
| Evidence Served on Applicant | 2020-11-19 | 2021-11-12 |
| Evidence Filed by Opponent | 2020-11-19 |
Evidence - Applicant
| Action | Action date | Due date |
|---|---|---|
| Administrative Delay | 2021-05-21 | |
| Extension of Time Granted to Applicant | 2021-07-29 | |
| Evidence Filed by Applicant | 2021-11-12 | |
| Evidence Served on Opponent | 2022-02-11 | 2023-01-12 |
Reply Evidence
| Action | Action date | Due date |
|---|---|---|
| Administrative Delay | 2022-03-21 | |
| Administrative Delay | 2022-07-19 | |
| Extension of Time Granted to Opponent | 2022-09-13 | |
| No Reply Evidence by Opponent | 2023-01-12 | 2023-01-26 |
Decision
| Action | Action date | Due date |
|---|---|---|
| Decision Transmitted to Parties | 2024-03-28 | 2024-05-28 |
| Decision - Opposition Rejected | 2024-03-28 |
Oral Hearing
| Action | Action date | Due date |
|---|---|---|
| Note to File | 2023-07-10 | |
| Case Forwarded for Decision | 2023-07-27 | |
| Note to File | 2023-07-27 |
Written Arguments - Opponent
| Action | Action date | Due date |
|---|---|---|
| Written Argument Requested - Opponent | 2022-01-28 | 2023-04-30 |
| Correspondence Created | 2022-02-28 | 2022-03-28 |
| Extension of Time Granted to Opponent | 2022-02-28 | |
| Written Argument Requested - Opponent | 2023-01-30 | 2023-04-30 |
| Extension of Time Granted to Opponent - Cooling-off | 2023-03-15 | |
| Written Argument Filed by Opponent | 2023-04-26 | |
| Written Argument/Statement Served on Applicant | 2023-04-26 | 2023-06-26 |
Written Arguments - Applicant
| Action | Action date | Due date |
|---|---|---|
| Written Argument Filed by Applicant | 2023-06-26 | |
| Written Argument/Statement Served on Opponent | 2023-06-26 | 2023-07-26 |
Cross Examination by Opponent
| Action | Action date | Due date |
|---|---|---|
| Correspondence Created | 2022-02-21 | |
| Correspondence Created | 2022-03-21 | |
| Cross Examination Order on Applicant | 2022-03-21 | 2022-09-21 |
| Correspondence Created | 2022-03-21 | |
| Correspondence Created | 2022-04-07 | |
| Correspondence Created | 2022-07-19 | |
| Cross Examination Letter Sent to Applicant - 4 + 4 Months | 2022-07-19 | |
| Extension of Time Granted to Opponent | 2022-07-19 | |
| Cross Examination Transcripts Served by Opponent | 2022-08-31 | 2022-09-30 |
| Cross Examination Transcripts Filed by Opponent | 2022-08-31 | |
| Cross Examination Undertakings Filed by Applicant | 2022-09-12 | |
| Cross Examination Undertakings Served by Applicant | 2022-09-12 |
Cross Examination by Applicant
| Action | Action date | Due date |
|---|---|---|
| Cross Examination of Opponent Requested | 2021-01-15 | |
| Cross Examination Order on Opponent | 2021-01-19 | 2021-05-19 |
| Cross Examination Letter Sent to Opponent - 4 + 4 Months | 2021-01-19 | |
| Cross Examination Undertakings Served by Opponent | 2021-05-19 | |
| Cross Examination Transcripts Filed by Applicant | 2021-05-19 | |
| Cross Examination Transcripts Served by Applicant | 2021-05-19 | 2021-06-19 |
| Cross Examination Undertakings Filed by Opponent | 2021-07-12 | |
| Correspondence Created | 2021-07-19 | 2021-08-09 |
| Correspondence Created | 2021-07-19 | 2021-08-09 |
| Correspondence Created | 2021-07-29 |