| Serial Number | 79174009 |
| Word Mark | AKASTOR |
| Filing Date | Friday, October 24, 2014 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, March 15, 2024 |
| Registration Number | 5273222 |
| Registration Date | Tuesday, August 29, 2017 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, January 10, 2017 |
| Description of Mark | The mark consists of a design of the word "AKASTOR" in gray, a blue incomplete circle with two white bands extending from the bottom to near the top right of the circle, all on a white background. |
| Goods and Services | Data processing equipment, computers; software for monitoring drilling equipment, drilling operations, and oil and gas production; software and computer hardware for operating and managing the separation and treatment of liquids, gases and solids; human machine interface (HMI) software, namely, software for managing and controlling machines; software for real-time control and monitoring of drilling data and alarms; software for drilling and well intervention; computer hardware and software for drilling control cabins and instrument rooms for conducting and remotely operating drilling operations; software for remote control and supervision of drilling rigs and drilling operations; software and computer hardware for viewing drilling operations; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electric switches |
| Certificate of Correction for Registration | In the Statement, Page 1, line 13, after FLUID, "petroleum" should be inserted, and, In the Statement, Page 1, line 14, after METAL, "for storing petroleum" should be inserted, and, In the Statement, Page 1, line 15 after the first occurrence of METAL, "for use in oil and gas drilling," should be inserted, and, In the Statement, Page 2, line 11, after SUPPLY, "excluding water storage tanks" should be inserted. |
| Goods and Services | Machines and machine tools for oil and gas drilling and for oil and gas drill ships and oilfield service boats, namely, drilling rigs, drilling rig mechanization machines and devices, drilling rigs, jack-up drilling rigs, draw-work machines being parts of drilling rigs, cathead machines, drilling fluid additive machines, sack cutting machines, oil pump machines, slurry pumps, riser elevator machines, riser feeding machines, tubular high pressure riser feeding machines, machine tensioners being part of machines, hydraulic lifting machines, crane machines, mud bucket machines, pipe deck pipe handler machines, shale shaker machines, oil processing machines, gas processing machines, machines and machine tools used for separation and treatment of liquids, gases and solids, gravity separators and skimmers, flotation machines, water treatment machines, hydraulic and mechanical flotation system machines, mechanical coalescers, filtration machines, cyclone machines; separation machines used for separation of liquids, gases and solids, water injection machines for enhanced oil recovery, sulphate removal machines, replacement parts for all the aforesaid goods; motors and engines other than for land vehicles; machine coupling and transmission components except for land vehicles; pumps as parts of machines for management and control of fluids; valves being parts of machines or pumps; clack valves being machine parts; machines for installation of drilling equipment; pumps of metal, mud pumps of metal, top drives of metal, rotary table of metal all being parts of drilling rigs; winches of metal; all for use in the field of oil and gas production |
| Goods and Services | Common metals and their alloys; metal building materials, namely, metal mooring buoys for drilling ships or oil tankers, portable risers made of steel to transport oil and gas from subsea well to oil platform, flexible composite metal pipes and branching tubes of metal for pipelines composed primarily of steel for transportation and transfer of hydraulic fluids and petroleum and electric power and electric signals; transportable buildings of metal; non-electric cables and wires of common metal; pipes and tubes of metal; common metal pulls; offshore drilling platforms of metal; oilfield processing equipment of metal, namely, drill floors of metal, blow-out preventers of metal, metal valves not being part of machines, surge tanks of metal in the nature of fluid * petroleum * storage tanks; flow dividers of metal, namely, metal valves not being part of machines, bulk storage tanks of metal * for storing petroleum *, mud mixing storage tanks of metal * for use in oil and gas drilling *, mud standpipe manifolds of metal, cement standpipe manifolds of metal; hose loading stations of metal, namely, manually operated reels of hoses; drilling risers of metal, namely, metal mine drilling and working platforms; metal pipes; fittings of metal for pipes and drilling; well pipes of metal; drilling templates of metal; piping systems of metal, namely, metal joints, clips, branching pipes, collars, junctions, muffs, pipework and expansion joints for piping; manifolds of metal for pipelines; reinforcing materials of metal for pipes; pipe and drilling couplings of metal; pipe and drilling coupling components of metal, namely, hydraulic couplings with metal seals and metal-to-metal coupling seals; coupling systems of metal comprising metal couplings for use with hydraulic and pneumatic systems; structural joint connectors of metal; metal valves not being parts of machines |
| Indication of Colors claimed | The color(s) blue, grey and white is/are claimed as a feature of the mark. |
| Goods and Services | Ships, drill ships, ships designed for subsea well construction and intervention services and oilfield service boats |
| Goods and Services | HVAC units; apparatus for water supply * excluding water storage tanks *, oil processing apparatus, and apparatus and installations for the separation and treatment of liquids, gases and solids, namely, separators for the cleaning and purification of liquids, oil, gases and solids; replacement parts for the aforesaid goods; separators for the cleaning and purification of oil and gases, oil purifying installations; gas purifying installations; flare stacks for use in oil refineries and in the oil and gas industry |
| International Class | 006 - Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; nonelectric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores. |
| US Class Codes | 002, 012, 013, 014, 023, 025, 050 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 006 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 007 - Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs. |
| US Class Codes | 013, 019, 021, 023, 031, 034, 035 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 007 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 009 - Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; 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. |
| US Class Codes | 021, 023, 026, 036, 038 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 011 - Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes. |
| US Class Codes | 013, 021, 023, 031, 034 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 011 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 012 - Vehicles; apparatus for locomotion by land, air, or water. |
| US Class Codes | 019, 021, 023, 031, 035, 044 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 012 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Akastor AS |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | NO |
| Party Name | Akastor AS |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | NO |
| Party Name | Akastor AS |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | NO |
| Event Date | Event Description |
| Thursday, October 15, 2015 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Monday, October 19, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, October 19, 2015 | ASSIGNED TO EXAMINER |
| Friday, October 23, 2015 | APPLICATION FILING RECEIPT MAILED |
| Tuesday, October 27, 2015 | NON-FINAL ACTION WRITTEN |
| Wednesday, October 28, 2015 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Thursday, October 29, 2015 | REFUSAL PROCESSED BY MPU |
| Thursday, October 29, 2015 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Tuesday, November 17, 2015 | REFUSAL PROCESSED BY IB |
| Friday, April 22, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, May 5, 2016 | ASSIGNED TO LIE |
| Thursday, May 12, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, May 12, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, May 25, 2016 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, May 25, 2016 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Friday, June 3, 2016 | FINAL REFUSAL WRITTEN |
| Friday, June 3, 2016 | FINAL REFUSAL E-MAILED |
| Friday, June 3, 2016 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Monday, November 21, 2016 | EXPARTE APPEAL RECEIVED AT TTAB |
| Monday, November 21, 2016 | EX PARTE APPEAL-INSTITUTED |
| Monday, November 21, 2016 | JURISDICTION RESTORED TO EXAMINING ATTORNEY |
| Monday, November 21, 2016 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Wednesday, November 23, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, November 23, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Sunday, November 27, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Sunday, November 27, 2016 | EXPARTE APPEAL TERMINATED |
| Thursday, December 8, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, December 21, 2016 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, December 21, 2016 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, December 21, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, January 6, 2017 | NOTIFICATION PROCESSED BY IB |
| Tuesday, January 10, 2017 | PUBLISHED FOR OPPOSITION |
| Tuesday, January 10, 2017 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, February 7, 2017 | EXTENSION OF TIME TO OPPOSE RECEIVED |
| Wednesday, March 15, 2017 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Wednesday, March 15, 2017 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Saturday, April 1, 2017 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Thursday, July 20, 2017 | EXTENSION OF TIME TO OPPOSE PROCESS - TERMINATED |
| Tuesday, August 29, 2017 | REGISTERED-PRINCIPAL REGISTER |
| Friday, September 8, 2017 | LIMITATION OF GOODS RECEIVED FROM IB |
| Wednesday, November 15, 2017 | LIMITATION FROM THE IB EXAMINED AND ENTERED |
| Wednesday, November 29, 2017 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Wednesday, December 6, 2017 | CORRECTION UNDER SECTION 7 - PROCESSED |
| Tuesday, December 12, 2017 | FINAL DISPOSITION PROCESSED |
| Tuesday, December 12, 2017 | FINAL DISPOSITION NOTICE SENT TO IB |
| Friday, January 26, 2018 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, August 6, 2018 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Friday, August 24, 2018 | INVALIDATION REVIEWED - NO ACTION REQUIRED BY OFFICE |
| Friday, June 5, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, July 23, 2020 | REVIEW OF CORRESPONDENCE COMPLETE - ADDRESS UPDATED |
| Monday, August 29, 2022 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Friday, March 15, 2024 | CANCELLED SECTION 71 |
| Saturday, November 16, 2024 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |