ADP, Inc. (P) vs CollegeNET, Inc. (D)
Pending
Oppositions
Proceeding Details
Proceeding Number
Filing Date
Feb 5, 2024
Last Status Update
Mar 4, 2026
Interlocutory Attorney
MARY CATHERINE FAINT
Parties
Plaintiff
ADP, Inc.




2049 CENTURY PARK EAST, SUITE 2300
LOS ANGELES, CA 90067
Attorney / Correspondent:
Marks:
STANDOUT
Registered
|Reg #: 5114941|S/N: 86318889
STANDOUT
LIVE - REGISTERED
Service MarkWordOwner: ADP, INC.
Status: SECTION 8 & 15-ACCEPTED AND ACKNOWLEDGED
Record Details
Serial No.
86318889
Registration No.
5114941
Status
LIVE
Important Dates
Filed
Jun 24, 2014
Registered
Jan 3, 2017
First Use
May 1, 2011
Goods & Services
Class 041
Educational services, namely, conducting seminars, lectures, teleseminars, teleclasses, and workshops in the field of personal and professional assessment and development, self-fulfillment, psychometrics, strength and leadership development
STANDOUT
Registered
|Reg #: 5114940|S/N: 86318883
STANDOUT
LIVE - REGISTERED
TrademarkWordOwner: ADP, INC.
Status: SECTION 8 & 15-ACCEPTED AND ACKNOWLEDGED
Record Details
Serial No.
86318883
Registration No.
5114940
Status
LIVE
Important Dates
Filed
Jun 24, 2014
Registered
Jan 3, 2017
First Use
May 1, 2011
Goods & Services
Class 009
Computer software programs in the field of personal and professional assessment and development, self-fulfillment, psychometrics, strength and leadership development
STANDOUT
Registered
|Reg #: 5114939|S/N: 86316434
STANDOUT
LIVE - REGISTERED
TrademarkWordOwner: ADP, INC.
Status: SECTION 8 & 15-ACCEPTED AND ACKNOWLEDGED
Record Details
Serial No.
86316434
Registration No.
5114939
Status
LIVE
Important Dates
Filed
Jun 20, 2014
Registered
Jan 3, 2017
First Use
May 1, 2011
Goods & Services
Class 016
Printed materials, namely, books, booklets, articles, brochures, pamphlets, manuals, leaflets, flyers, informational sheets, newsletters, periodicals, magazines, in the field of personal and professional assessment and development, self-fulfillment, psychometrics, strength and leadership development
STANDOUT
Registered
|Reg #: 5589463|S/N: 87813426
STANDOUT
LIVE - REGISTERED
Service MarkWordOwner: ADP, INC.
Status: SECTION 8 & 15-ACCEPTED AND ACKNOWLEDGED
Record Details
Serial No.
87813426
Registration No.
5589463
Status
LIVE
Important Dates
Filed
Feb 27, 2018
Registered
Oct 23, 2018
First Use
May 1, 2011
Goods & Services
Class 042
Providing temporary use of non-downloadable software for use in conducting strengths assessments, tracking employee engagement and satisfaction, providing employee coaching and training, and tracking and reporting employee performance, in the field of talent activation, personal and professional assessment and development, self-fulfillment, psychometrics, strength and leadership development, cognitive strength assessment, coaching and training
STANDOUT
Pending
S/N: 97764409
STANDOUT
LIVE - PENDING
TrademarkCombinedOwner: ADP, Inc.
Status: NON-FINAL ACTION – MAILED
Record Details
Serial No.
97764409
Status
LIVE
Important Dates
Filed
Jan 23, 2023
Goods & Services
Class 009Class 016
(Based on Use in Commerce) Educational services, namely, conducting seminars, lectures, teleseminars, teleclasses, and workshops in the field of personal and professional assessment and development, self-fulfillment, psychometrics, strength and leadership development; providing virtual coaching services for employees and team leaders to assess and enhance employee engagement, productivity, and performance; (Based on Intent to Use) Downloadable computer software programs for use in conducing and administering personal and professional assessment and
development, self-fulfillment, psychometrics, strength and leadership development; downloadable software in the nature of a
computer software platform for use by employees and team leaders to assess and enhance employee engagement, productivity,
and performance; downloadable mobile application software in the nature of a computer software platform for use by employees
and team leaders to assess and enhance employee engagement, productivity, and performance; (Based on Intent to Use) Printed materials, namely, books, booklets, articles, brochures, pamphlets, manuals, leaflets, flyers, informational sheets, newsletters, periodicals, magazines, in the field of personal and professional assessment and development, self-fulfillment, psychometrics, strength and leadership development; (Based on Use in Commerce) Human capital management (HCM) being personnel management and administration; human resources management and
administration; business services, namely, conducting assessments and surveys for use by team employees and leaders and
team members to assess and enhance employee engagement, productivity, and performance; providing consulting services for
employees and team leaders to assess and enhance employee engagement, productivity, and performance; business services,
namely, compiling and analyzing employee engagement data for use by team leaders to assess and enhance employee
engagement, productivity, and performance; (Based on Use in Commerce) Providing temporary use of non-downloadable software for use in conducting strengths assessments, tracking employee engagement and satisfaction, providing employee coaching and training, and tracking and reporting employee performance, in the field of talent activation, personal and professional assessment and development, self-fulfillment, psychometrics, strength and leadership development, cognitive strength assessment, coaching and training; providing online non-downloadable software in the nature of a computer software platform for use by employees and team leaders to assess and enhance employee engagement, productivity, and performance; software as a service (SaaS) services featuring computer software in the nature of a computer software platform for use by employees and team leaders to assess and enhance employee engagement, productivity, and performance
VS
Defendant
CollegeNET, Inc.
717 TEXAS, SUITE 3300
HOUSTON, TX 77002
Attorney / Correspondent:
Mark:
STANDOUT
Pending
S/N: 97560250
STANDOUT
LIVE - PENDING
Service MarkCombinedOwner: CollegeNET, Inc.
Status: OPPOSITION PENDING

Record Details
Serial No.
97560250
Status
LIVE
Important Dates
Filed
Aug 23, 2022
First Use
Apr 1, 2015
Goods & Services
Class 035Class 042
Providing an interactive computer database for use by educational institutions, students, prospective students, employers, employees, and prospective employees featuring information for conducting, preparing for, and practicing live and asynchronous employment interviews; platform as a service (PAAS) featuring computer software platforms for recording, uploading, and sharing user-generated videos, essays, resumes, applications, and information; software as a service (SAAS) services featuring software for recording, uploading, and sharing user-generated videos, essays, resumes, applications, and information; providing a website featuring technology that enables users to upload and share user-generated videos, essays, resumes, applications, and information
TTAB Documents
Title | Date | Entry # | Category | Code | Actions |
|---|---|---|---|---|---|
TRIAL DATES RESET | Mar 4, 2026 | 28 | Scheduling | 657 | |
P REPLY IN SUPPORT OF MOTION | Oct 1, 2025 | 27 | Motions | 335 | |
D REPLY IN SUPPORT OF MOTION | Sep 16, 2025 | 26 | Motions | 329 | |
D OPP/RESP TO MOTION | Sep 11, 2025 | 25 | Motions | 405 | |
SUSP PEND DISP OF OUTSTNDNG MOT | Sep 8, 2025 | 24 | Status | 518 | |
P OPP/RESP TO MOTION | Aug 27, 2025 | 23 | Motions | 416 | |
P MOT TO COMPEL DISCOVERY | Aug 22, 2025 | 22 | Motions | 338 | |
MOT TO AMEND ANS OR COUNTERCLAIM/AMENDED ANS OR COUNTERCLAIM | Aug 15, 2025 | 21 | Motions | 317 | |
D APPEARANCE / POWER OF ATTORNEY | Jun 13, 2025 | 20 | Parties | 623 | |
EXTENSION OF TIME GRANTED | Feb 10, 2025 | 19 | Extensions | 513 | |
D MOT FOR EXT W/ CONSENT | Feb 10, 2025 | 18 | Motions | 643 | |
EXTENSION OF TIME GRANTED | Dec 12, 2024 | 17 | Extensions | 513 | |
D MOT FOR EXT W/ CONSENT | Dec 12, 2024 | 16 | Motions | 643 | |
EXTENSION OF TIME GRANTED | Nov 5, 2024 | 15 | Extensions | 513 | |
D MOT FOR EXT W/ CONSENT | Nov 5, 2024 | 14 | Motions | 643 | |
EXTENSION OF TIME GRANTED | Oct 9, 2024 | 13 | Extensions | 513 | |
D MOT FOR EXT W/ CONSENT | Oct 9, 2024 | 12 | Motions | 643 | |
EXTENSION OF TIME GRANTED | Aug 6, 2024 | 11 | Extensions | 513 | |
P MOT FOR EXT W/ CONSENT | Aug 5, 2024 | 10 | Motions | 650 | |
ANSWER | Jul 15, 2024 | 9 | Pleadings | 107 | |
SUSPENDED | Apr 8, 2024 | 8 | Status | 516 | |
P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS | Apr 8, 2024 | 7 | Motions | 511 | |
D CHANGE OF CORRESP ADDRESS | Feb 7, 2024 | 6 | Parties | 626 | |
SUSPENDED | Feb 6, 2024 | 5 | Status | 516 | |
P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS | Feb 6, 2024 | 4 | Motions | 511 | |
INSTITUTED | Feb 5, 2024 | 3 | Status | 128 | |
NOTICE AND TRIAL DATES SENT; ANSWER DUE: | Feb 5, 2024 | 2 | Scheduling | 707 | |
FILED AND FEE | Feb 5, 2024 | 1 | Fees | 124 |