| Serial Number | 79061250 |
| Word Mark | BERNER |
| Filing Date | Monday, May 26, 2008 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, November 3, 2017 |
| Registration Number | 3936689 |
| Registration Date | Tuesday, March 29, 2011 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, December 8, 2009 |
| Description of Mark | The mark consists of a design of an incomplete square and the wording "BERNER". |
| Goods and Services | Measuring instruments for garages, namely, testing devices for measuring and confirming electric power supply, electric testing apparatus for incandescent light bulbs, voltage testers, spark plug testers; measuring instruments for garages, namely, anti-freeze testing devices, namely, testers to check whether the concentration of anti-freeze substance in cars is sufficient; measuring instruments for garages, namely, battery charge testers, measuring instruments for garages, namely, compression pressure testers, measuring instruments for garages, namely, automobile cooling system testers and sensors and gauges for adjusting valves; measuring instruments for garages, namely, gauges in the nature of slide calipers and measuring tapes; measuring instruments for garages, namely, slide calipers; measuring instruments for garages, namely, protractors and carpenter's levels; electric soldering apparatus; welding helmets, welding torches, welding transformers, welding electrodes, reels for electric wire, protective clothing, protective eyewear; all aforementioned goods with the exception of goods used in, and/or designed, manufactured, sold or distributed by, the HVAC or air control industries, namely, HVAC systems, energy recovery systems, geothermal systems, heating and/or cooling coils, heat exchangers, wind turbines, air doors, air curtains, air conditioning systems, air cleaning systems, air entrance systems, strip doors, air diffusion systems, ventilators, fabric ducts, heaters, bi-parting doors, rack covers, fans, rotors, coils, or parts and components of any of the foregoing goods |
| Goods and Services | Hand tools, namely, saws, drill files, knives, pliers, pincers, and plate shears for processing metal, wood and plastic materials; hand-operated tools for fastening tarpaulins; hand tools, namely, pliers for joining and separating electrical connections, pliers, riveting pliers, riveting guns, stripping pliers, spring collets, crimping pliers, bending pliers, offsetting pliers, punch pliers, bending tools for pipes, countersinks; hand tools for battery terminals, namely, battery clip pullers, pincers for connecting cables; hand tools, namely, files, saws, blades for hand saws, and cylinder or hole saws; hand tools, namely, manually-operated grinding, cutting and trimming disks, sharpening and blunting stones, sanding blocks, buffing pins, buffing wheels; hand-operated cutting apparatus, namely, burr removing knives, hand-operated shears and sheet metal shears, hand-operated electrode welding clamps, spatulas for applying filler or putty to a surface; auxiliary hand tools, namely, pliers for assembling and removing disks; inflating and deflating apparatus, namely, hand-operated tire inflators, spark plug wrenches, socket wrenches, hand tools, namely, tube benders and pipe-cutters; hand clamping tools, namely, pliers, nozzle spanners, wrenches for drill chucks, tongs; wheel removing hand tools, namely, gear pullers, planes, screwdrivers, shears, pruning scissors, tree pruners and hedge shears, non-electric can openers; hand tools, namely, screw clamps and cable cutters; mounting tools, namely, hand operated tools for mounting tire valves; spring assembly tools, namely, pliers, hand-operated car lifting jacks; vices, cutlery; all aforementioned goods with the exception of goods used in, and/or designed, manufactured, sold or distributed by, the HVAC or air control industries, namely, HVAC systems, energy recovery systems, geothermal systems, heating and/or cooling coils, heat exchangers, wind turbines, air doors, air curtains, air conditioning systems, air cleaning systems, air entrance systems, strip doors, air diffusion systems, ventilators, fabric ducts, heaters, bi-parting doors, rack covers, fans, rotors, coils, or parts and components of any of the foregoing goods |
| Goods and Services | Power tools, namely, machines designed for cutting, drilling, grinding, sawing, planing, milling, polishing metal, wood and synthetic materials and for fastening tarpaulins, and parts thereof; electrical drills, drilling machines and sanding machines; power-operated nailing guns; power-operated spray guns, spray guns for paint, hot melt glue guns, electric can openers, hammer drills; power or pneumatic cutting and grinding apparatus, namely, right angle grinders, countersinks, power-operated tap drills and thread-cutting tools, power-operated right angle grinders, power compass saws, finishing sanding machines, power-operated screwdrivers; angular gear cutting machines, power staplers; cutting and grinding discs driven with electrical angle grinders, namely, cutting-off and de-burring disks made of corundum that are used as machine parts and used for activating machines; torque converters not for land vehicles; chain saws, circular saws; power operated steel cutting tools, namely, thread taps and dies; power tools and parts for power tools, namely, countersinks and power operated de-burring bits, power chisels, power drill bits and power core bits; all aforementioned goods with the exception of goods used in, and/or designed, manufactured, sold or distributed by, the HVAC or air control industries, namely, HVAC systems, energy recovery systems, geothermal systems, heating and/or cooling coils, heat exchangers, wind turbines, air doors, air curtains, air conditioning systems, air cleaning systems, air entrance systems, strip doors, air diffusion systems, ventilators, fabric ducts, heaters, bi-parting doors, rack covers, fans, rotors, coils, or parts and components of any of the foregoing goods |
| Goods and Services | Ironmongery and small items of metal hardware, namely, spring rings, metal safety chains, metal connective hinges, metal fastening collars for fastening bolted connections, metal cables and wires not for electrical purposes, metal cable rollers and reels, metal cable unwinding drums, metal cable holders, metal lubricator nipples, metal threaded rods, metal plugs and plug-in couplings; non-electric metal terminals, namely, wire clamps, quick-release fasteners, washers, shim washers and grommets, metal pipe fittings, perforated metal plates, metal locks, metal keys, and wire rope fittings of metal, namely, sockets; metal storing and sorting chests; metal clamping plates with screws; metal crampons, metal rope thimbles, welding wires, wire rope fittings in the nature of press studs and parts thereof as parts of iron fittings for wire rope; hand operated metal hose reels and hand operated non-electric cable reels; metal drawer guides and slides; metal furniture handles and locks; metal door handles and locks; metal angle brackets for connecting wood, cast and other construction materials; general purpose metal containers; metal tool containers; metal tool boxes; fastening materials, namely, nails, metal rivets, metal bolts, metal hooks, metal screws, metal nuts, metal gasket and sealing rings, metal gasket and sealing discs, metal springs, metal fastening anchors, metal fastening brackets, metal pipe hangers, metal clamps, metal cable fastening anchors, metal cable bands and clips; metal fastening sets for sanitary fittings, namely, bolts, rivets and screws; and metal fasteners for insulating plates, namely, bolts, rivets and screws, metal pegs and dowels; metal furniture fittings, namely, brackets, screws and dowels, metal welding and soldering rods; metal fasteners for mounting and demounting heating radiators in buildings, namely, bolts, rivets, screws, reels, brackets, clamps, hooks and eyes; metal license plates and securing means therefor, namely, metal nuts, washers, screws and bolts; all aforementioned goods with the exception of goods used in, and/or designed, manufactured, sold or distributed by, the HVAC or air control industries, namely, HVAC systems, energy recovery systems, geothermal systems, heating and/or cooling coils, heat exchangers, wind turbines, air doors, air curtains, air conditioning systems, air cleaning systems, air entrance systems, strip doors, air diffusion systems, ventilators, fabric ducts, heaters, bi-parting doors, rack covers, fans, rotors, coils, or parts and components of any of the foregoing goods |
| Goods and Services | Synthetic plastic as semi-finished products, in the form of foils, plates, rods, profiles, hoses, tubes, blocks; sealing, packing and insulating materials; flexible pipes, not of metal; all aforementioned goods with the exception of goods used in, and/or designed, manufactured, sold or distributed by, the HVAC or air control industries, namely, HVAC systems, energy recovery systems, geothermal systems, heating and/or cooling coils, heat exchangers, wind turbines, air doors, air curtains, air conditioning systems, air cleaning systems, air entrance systems, strip doors, air diffusion systems, ventilators, fabric ducts, heaters, bi-parting doors, rack covers, fans, rotors, coils, or parts and components of any of the foregoing goods |
| Goods and Services | Industrial oils and greases, industrial lubricants, automotive lubricants, drilling lubricants |
| Goods and Services | Cleaning, polishing, scouring and abrasive preparations |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Paints, lacquers, rust preservatives and preventatives in the nature of a coating, anti-rust oils, anti-rust greases; wood preservatives for use against deterioration of wood; mordant dyes for general use |
| Goods and Services | Chemicals used in industry, industrial adhesives |
| Goods and Services | Accessories for motor vehicles, namely, counterbalance weights for balancing wheels and tires, brake line fittings, fasteners as parts for fitted covers for vehicles, windshield wipers; parts for vehicles, namely, brake and clutch cables and cable guides fuses, battery terminals, spark plug connectors |
| Goods and Services | Lamps; automotive headlamps; all aforementioned goods with the exception of goods used in, and/or designed, manufactured, sold or distributed by, the HVAC or air control industries, namely, HVAC systems, energy recovery systems, geothermal systems, heating and/or cooling coils, heat exchangers, wind turbines, air doors, air curtains, air conditioning systems, air cleaning systems, air entrance systems, strip doors, air diffusion systems, ventilators, fabric ducts, heaters, bi-parting doors, rack covers, fans, rotors, coils, or parts and components of any of the foregoing goods |
| Goods and Services | Packaging containers of plastic, plastic pegs; workshop furniture; shelf systems comprising shelving; storage, workshop and garage furniture in the nature of perforated plate systems, comprising metal perforated plates hooks and tool holders for storing tools and tool parts; tool cabinets and boxes, not of metal; plastic novelty license plates and securing means therefor, namely, plastic nuts, washers, screws and bolts |
| International Class | 001 - Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. |
| US Class Codes | 001, 005, 006, 010, 026, 046 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, November 3, 2017 |
| Primary Code | 001 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 002 - Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. |
| US Class Codes | 006, 011, 016 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, November 3, 2017 |
| Primary Code | 002 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 003 - Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. |
| US Class Codes | 001, 004, 006, 050, 051, 052 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, November 3, 2017 |
| Primary Code | 003 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 004 - Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting. |
| US Class Codes | 001, 006, 015 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, November 3, 2017 |
| Primary Code | 004 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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, November 3, 2017 |
| 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, November 3, 2017 |
| Primary Code | 007 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 008 - Hand tools and implements (hand-operated); cutlery; side arms; razors. |
| US Class Codes | 023, 028, 044 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, November 3, 2017 |
| Primary Code | 008 |
| 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, November 3, 2017 |
| 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, November 3, 2017 |
| 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, November 3, 2017 |
| Primary Code | 012 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 017 - Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal. |
| US Class Codes | 001, 005, 012, 013, 035, 050 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, November 3, 2017 |
| Primary Code | 017 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 020 - Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. |
| US Class Codes | 002, 013, 022, 025, 032, 050 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, November 3, 2017 |
| Primary Code | 020 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Berner Omnichannel Trading Holding SE |
| Party Type | 32 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | Berner Trading Holding GmbH |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 98 - Unknown |
| Address | DE |
| Party Name | Berner SE |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | DE |
| Party Name | Berner GmbH |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | DE |
| Party Name | Berner GmbH |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 16 - Limited Liability Company |
| Address | DE |
| Event Date | Event Description |
| Saturday, October 22, 2022 | CHANGE OF OWNER RECEIVED FROM IB |
| Friday, September 14, 2018 | TOTAL INVALIDATION PROCESSED BY THE IB |
| Tuesday, July 10, 2018 | TOTAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Tuesday, July 10, 2018 | INVALIDATION PROCESSED |
| Tuesday, July 3, 2018 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Friday, November 3, 2017 | CANCELLED SECTION 71 |
| Sunday, January 3, 2016 | INTERNATIONAL REGISTRATION RENEWED |
| Saturday, May 18, 2013 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Thursday, March 29, 2012 | CHANGE OF OWNER RECEIVED FROM IB |
| Monday, August 8, 2011 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Friday, July 8, 2011 | FINAL DISPOSITION NOTICE SENT TO IB |
| Friday, July 8, 2011 | FINAL DISPOSITION PROCESSED |
| Wednesday, June 29, 2011 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Friday, May 13, 2011 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Tuesday, March 29, 2011 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, February 8, 2011 | PAPER RECEIVED |
| Tuesday, February 22, 2011 | TTAB RELEASE CASE TO TRADEMARKS |
| Tuesday, February 22, 2011 | OPPOSITION TERMINATED NO. 999999 |
| Tuesday, February 22, 2011 | OPPOSITION DISMISSED NO. 999999 |
| Friday, July 2, 2010 | REFUSAL PROCESSED BY IB |
| Tuesday, June 8, 2010 | OPPOSITION INSTITUTED NO. 999999 |
| Monday, June 7, 2010 | OPPOSITION NOTICE (IB REFUSAL) SENT TO IB |
| Saturday, June 5, 2010 | OPPOSITION NOTICE (IB REFUSAL) CREATED |
| Thursday, May 13, 2010 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Thursday, April 29, 2010 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Thursday, April 29, 2010 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Friday, January 29, 2010 | CHANGES/CORRECTIONS AFTER PUB APPROVAL ENTERED |
| Thursday, January 28, 2010 | ASSIGNED TO PETITION STAFF |
| Tuesday, January 5, 2010 | EXTENSION OF TIME TO OPPOSE RECEIVED |
| Tuesday, December 22, 2009 | PAPER RECEIVED |
| Tuesday, December 8, 2009 | PUBLISHED FOR OPPOSITION |
| Wednesday, November 18, 2009 | NOTICE OF PUBLICATION |
| Thursday, November 5, 2009 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Thursday, November 5, 2009 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, November 5, 2009 | EXAMINERS AMENDMENT MAILED |
| Wednesday, November 4, 2009 | EXAMINER'S AMENDMENT ENTERED |
| Wednesday, November 4, 2009 | EXAMINERS AMENDMENT -WRITTEN |
| Tuesday, November 3, 2009 | AMENDMENT FROM APPLICANT ENTERED |
| Tuesday, November 3, 2009 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, October 30, 2009 | PAPER RECEIVED |
| Tuesday, April 28, 2009 | NON-FINAL ACTION MAILED |
| Tuesday, April 28, 2009 | NON-FINAL ACTION WRITTEN |
| Friday, April 10, 2009 | AMENDMENT FROM APPLICANT ENTERED |
| Friday, April 10, 2009 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, April 10, 2009 | ASSIGNED TO LIE |
| Thursday, April 9, 2009 | PAPER RECEIVED |
| Thursday, January 8, 2009 | REFUSAL PROCESSED BY IB |
| Friday, December 5, 2008 | APPLICATION FILING RECEIPT MAILED |
| Wednesday, December 3, 2008 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Wednesday, December 3, 2008 | REFUSAL PROCESSED BY MPU |
| Wednesday, December 3, 2008 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Tuesday, December 2, 2008 | NON-FINAL ACTION WRITTEN |
| Monday, December 1, 2008 | ASSIGNED TO EXAMINER |
| Monday, December 1, 2008 | NEW APPLICATION ENTERED IN TRAM |
| Thursday, November 27, 2008 | SN ASSIGNED FOR SECT 66A SUBSEQ DESIG FROM IB |