| Serial Number | 79252277 |
| Word Mark | AVFOIL |
| Filing Date | Tuesday, August 28, 2018 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, January 21, 2020 |
| Registration Number | 5963982 |
| Registration Date | Tuesday, January 21, 2020 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, November 5, 2019 |
| Goods and Services | Computer programs for controlling aircraft, helicopters and drones, database management, record management, asset management, parts management, planning and scheduling management and inspections for use in the aviation industry; computer programs for use in recording, updating and reviewing electronic maintenance documents, aircraft logbooks, flight records, repair information technical databases and aircraft parts inventories for use in aviation management; computer programs for human resource management, human capital management, and customer resource management; computer programs for integrated management of core business processes; computer programs for management of aviation regulatory requirements; computer programs for record management, document management, transaction monitoring and data analysis; computer programs for providing enhanced electronic mail and scheduling capabilities, for use by individual computer users, namely, computer programs for managing, viewing, and editing files, documents, electronic mail messages and private network and global computer network communications; computer programs for meeting and event scheduling, managing group calendars, task delegation and reporting, recording notes, transferring data to and from databases and to and from computer programs and computer files; address book computer programs; telephone dialing computer programs |
| Goods and Services | Aviation transportation information services, namely, providing and updating navigational, enroute, airport, regulatory, flight and emergency information, and operational information in the nature of runway analysis, weight and balance information; transportation information services; providing information in the field of aviation travel and aviation transportation via an online searchable database; leasing of aircraft and aircraft engines; rental of aircraft and aircraft engines; import and export cargo handling services; providing information on air transportation via a website; chartering of vehicles and apparatus for locomotion by air; air charter services; providing air transportation information via an online computer database; arranging air transport for travellers; travel and transport information services; helicopter transport; aircraft transport; travel agency services, namely, making reservations and bookings for transportation; tracking, locating and monitoring of aircraft services for commercial use; freight management services, namely, tracking documents, packages and freight over computer networks, intranets and the internet for business purposes |
| Pseudo Mark | AV FOIL |
| Goods and Services | Financial services, namely, electronic funds transfer; clearing and reconciling financial transactions; insurance brokerage and underwriting for providing purchase protection insurance for goods and services purchased by others via a global computer network and wireless networks; credit card transaction processing services; providing electronic mobile payment services for others, namely, payment transaction processing services; credit card payment processing services; providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; electronic foreign exchange payment processing; payment processing services, namely, credit card and debit card transaction processing services; holding securities, funds and other assets in escrow for sale transactions; on-line escrow services relating to the exchange of services; escrow services for the travel industry; maintaining escrow accounts for sales transactions; aircraft appraisal and valuation services; aircraft brokerage; aircraft financing services |
| Goods and Services | Provision of an on-line marketplace for buyers and sellers of aircraft and aviation related goods and services; providing classified ad listings for aircraft and aviation related services via a searchable website; providing information on aircraft being offered for sale via an on-line searchable database; computerized on-line retail store services in the field of aircraft provided over a global communications network; arranging and conducting auctions; auctioning via telecommunication networks; provision of goods and services price quotations; business invoicing services; providing configuration data and engine information regarding the OEM assessment of operational history, namely, parts, repairs, configurations, and maintenance practices, for specifically identified aircraft engines and gas turbine engines for the purpose of consumers to make informed purchasing decisions; aircraft crew scheduling services; business management services, namely, aircraft management for others; freight management services, namely, administrative processing of shipment data, preparing shipping documents and invoices over computer networks, intranets and the internet for business purposes; business data analysis services in the field of aviation; inventory management; records management services, namely, document indexing for others; import-export agency services; analysis of market research data and statistics; business research and data analysis services in the field of aviation; providing online business management services including accounting, marketing, business project management, and business development; online advertising and marketing services in the field of aviation; crew scheduling information, namely, aircraft crew scheduling services |
| Goods and Services | Title searching; providing title searches and retrieving related documents in the field of aircraft title via an on-line searchable database; provision of information relating to aircraft accident investigations |
| Goods and Services | Aircraft; aircraft carriers; airplanes and structural parts therefor; structural parts of aircraft, namely, nacelles comprised of an inlet cowl, fan cowls, pylon/strut, exhaust nozzle, and exhaust cone; aircraft parts, namely, brake discs, brake linings and related mechanical parts therefor; aircraft landing gear; tilt rotor aircraft; jet aircraft; light aircraft; helicopters and structural parts therefor; drones and unmanned aerial vehicles (UAVs), and structural parts and components therefor |
| Goods and Services | Providing temporary use of non-downloadable software for database management, record management, asset management, parts management, planning and scheduling management, inspections, recording, updating and reviewing electronic maintenance documents, aircraft logbooks, flight records, repair information technical databases and aircraft parts inventories for use in the aviation industry; software as a service (SAAS) services featuring software for controlling aircraft, helicopters and drones, database management, record management, asset management, parts management, planning and scheduling management, inspections, recording, updating and reviewing electronic maintenance documents, aircraft logbooks, flight records, repair information technical databases and aircraft parts inventories for use in the aviation industry; software as a service (SAAS) services featuring software for use in the aviation industry for managing fleet inspection and the repair, maintenance, tracking, and procurement of aviation equipment; providing temporary use of on-line non-downloadable software for processing electronic payments; developing and hosting a server on a global computer network for the purpose of facilitating e-commerce via such a server; providing temporary use of online non-downloadable cloud computing software for use in email, contacts, management and accessing remotely stored data for such applications; providing temporary use of on-line non-downloadable software and applications for email, calendaring, and contacts management; software as a service (SAAS) services, featuring software for human resource management, human capital management, and customer resource management; software as a service (SAAS) services, featuring software for integrated management of core business processes; software as a service (SAAS) services, featuring software for management of aviation regulatory requirements; software as a service (SAAS) services, featuring software for record management, document management, transaction monitoring and data analysis; research and engineering in the fields of aviation; design of aircraft, helicopters, drones and parts thereof in the field of aviation; consultation and research in the field of aerospace engineering; weather forecasting; weather reporting; weather information services |
| 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 | 6 - Active |
| Class Status Date | Monday, February 25, 2019 |
| Primary Code | 009 |
| 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 | 6 - Active |
| Class Status Date | Monday, February 25, 2019 |
| Primary Code | 012 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 25, 2019 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 036 - Insurance; financial affairs; monetary affairs; real estate affairs. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 25, 2019 |
| Primary Code | 036 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 25, 2019 |
| Primary Code | 039 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 25, 2019 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 045 - Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, February 25, 2019 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | AVFOIL LIMITED |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | NZ |
| Party Name | AVFOIL LIMITED |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | NZ |
| Party Name | AVFOIL LIMITED |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | NZ |
| Event Date | Event Description |
| Monday, February 25, 2019 | ASSIGNED TO EXAMINER |
| Thursday, February 21, 2019 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Monday, February 25, 2019 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, March 1, 2019 | APPLICATION FILING RECEIPT MAILED |
| Friday, March 1, 2019 | NON-FINAL ACTION WRITTEN |
| Saturday, March 2, 2019 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Wednesday, March 13, 2019 | REFUSAL PROCESSED BY MPU |
| Wednesday, March 13, 2019 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Friday, March 29, 2019 | REFUSAL PROCESSED BY IB |
| Monday, June 17, 2019 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Monday, June 17, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, June 17, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, September 13, 2019 | EXAMINERS AMENDMENT -WRITTEN |
| Friday, September 13, 2019 | EXAMINERS AMENDMENT E-MAILED |
| Friday, September 13, 2019 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Friday, September 13, 2019 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, October 1, 2019 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, October 16, 2019 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, October 16, 2019 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, October 16, 2019 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, November 1, 2019 | NOTIFICATION PROCESSED BY IB |
| Tuesday, November 5, 2019 | PUBLISHED FOR OPPOSITION |
| Tuesday, November 5, 2019 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, January 21, 2020 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, April 21, 2020 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Friday, May 1, 2020 | FINAL DISPOSITION PROCESSED |
| Friday, May 1, 2020 | FINAL DISPOSITION NOTICE SENT TO IB |
| Friday, May 22, 2020 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, October 10, 2022 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Monday, October 10, 2022 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Monday, October 10, 2022 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, January 21, 2025 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |