| Serial Number | 85750674 |
| Word Mark | BEKINS |
| Filing Date | Wednesday, October 10, 2012 |
| Status | 604 - ABANDONED - AFTER INTER-PARTES DECISION |
| Status Date | Monday, July 29, 2013 |
| Registration Number | 0000000 |
| Registration Date | NOT AVAILABLE |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, January 8, 2013 |
| Concurrent Use Statement | Concurrent use information. Concurrent use information. The Applicant seeks a registration for the listed services in the States of Washington (date of first use 00/00/1903), Oregon (date of first use 00/00/1925 and Colorado (date of first use 01/01/1930). Currently US Trademark Registration numbers 618,004, 659,670, 2,427,605 (BEKINS), 2,455,005 (BEKINS TRADESHOW SERVICES) and 2,762,203 (BEKINS WORLDWIDE SOLUTIONS) are owned by Bekins Holding Corp., formerly Bekins Van Lines. Bekins Van Lines and Bekins Moving & Storage Co. evolved from the original "Bekins" company formed in the 1800's by brothers John and Martin Bekins. In 1954, the Interstate Commerce Commission approved a separation agreement separating the original "Bekins" company into two entities. Also in 1954, Bekins Van Lines Co. applied for a federal trademark registration for the trademark BEKINS to cover "transportation and storage of household goods" claiming a date of first use in commerce of 1891 with no disclosure of the fact that another company, Bekins Moving & Storage Co., had equal rights to the BEKINS name for the same or similar services. Subsequently, four additional marks were registered with no disclosure of Bekins Moving & Storage Co.'s concurrent and co-existing rights. Through the years, Bekins Van Lines and its related companies and Bekins Moving & Storage Co. and its related companies have been able to co-exist without marketplace confusion through geographical separation. The current application seeks a concurrent registration for BEKINS to cover the applied for services in Washington, Oregon and Colorado where Bekins Moving & Storage used the mark prior to the date when Bekins Van Lines (the current Registrant) filed to register the mark. The date of first use on the application is listed as 1891 as this was the first use in interstate commerce. The actual first use by Bekins Moving& Storage in Washington, Oregon and Colorado was as least as early as 01/01/1930, (specific dates listed above) and well prior to the Registrant's first filing date of 03/17/1954 |
| Goods and Services | Moving and storage of goods; Moving company services; Transportation and storage of goods |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | 8 - Abandoned |
| Class Status Date | Monday, July 29, 2013 |
| Primary Code | 039 |
| First Use Anywhere Date | Thursday, November 30, 1899 |
| First Use In Commerce Date | Thursday, November 30, 1899 |
| Party Name | BEKINS MOVING & STORAGE CO. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Mountlake Terrace, WA 98043 |
| Party Name | BEKINS MOVING & STORAGE CO. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Mountlake Terrace, WA 98043 |
| Event Date | Event Description |
| Tuesday, July 30, 2013 | ABANDONMENT NOTICE MAILED - INTER PARTES DECISION |
| Monday, July 29, 2013 | ABANDONMENT - AFTER INTER PARTES DECISION |
| Monday, July 29, 2013 | CONCURRENT USE TERMINATED NO. 999999 |
| Monday, July 29, 2013 | CONCURRENT USE DISSOLVED |
| Tuesday, April 2, 2013 | CONCURRENT USE PROC. INSTITUTED NO. 999999 |
| Tuesday, January 8, 2013 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, January 8, 2013 | PUBLISHED FOR OPPOSITION |
| Wednesday, December 19, 2012 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Saturday, December 1, 2012 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Saturday, December 1, 2012 | ASSIGNED TO LIE |
| Thursday, November 15, 2012 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, November 2, 2012 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, November 1, 2012 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, November 1, 2012 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, November 1, 2012 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, November 1, 2012 | NON-FINAL ACTION E-MAILED |
| Thursday, November 1, 2012 | NON-FINAL ACTION WRITTEN |
| Wednesday, October 31, 2012 | ASSIGNED TO EXAMINER |
| Wednesday, October 31, 2012 | ASSIGNED TO EXAMINER |
| Tuesday, October 30, 2012 | PETITION TO DIRECTOR - MAKE SPECIAL - GRANTED |
| Tuesday, October 30, 2012 | ASSIGNED TO PETITION STAFF |
| Friday, October 19, 2012 | TEAS PETITION TO DIRECTOR-MAKE SPECIAL-RECEIVED |
| Tuesday, October 16, 2012 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
| Saturday, October 13, 2012 | NEW APPLICATION ENTERED IN TRAM |