| Serial Number | 79084910 |
| Word Mark | CACAO BARRY SINCE 1842 |
| Filing Date | Friday, July 2, 2010 |
| Status | 706 - SECTION 71 ACCEPTED |
| Status Date | Tuesday, January 4, 2022 |
| Registration Number | 3976649 |
| Registration Date | Tuesday, June 14, 2011 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, March 29, 2011 |
| Indication of Colors claimed | The color(s) gold, black is/are claimed as a feature of the mark. |
| NOT AVAILABLE | "CACAO" AND "SINCE 1842" |
| Goods and Services | Cocoa butter for food purposes; [ mixed milk-based drinks made of chocolate and/or cocoa based ingredients, in particular, flavored and caffeinated mixed milk-based drinks; dietary supplements and food additives made of chocolate and/or cocoa based ingredients for non-medical purposes based on proteins, edible fats and fatty substances, also containing polyphenols, carbohydrates, fibres, with added vitamins, minerals and trace elements ] |
| Description of Mark | The mark consists of the wording "CACAO BARRY" in black, the wording "SINCE 1842" and two horizontal lines in black and gold, a concentric oval design consisting of three ovals in gold with black shadowing, all within a square border in gold with black shadowing. |
| Goods and Services | Raw chocolate for use in industry or households; compound coating made of chocolate; compound coating made of chocolate for use in the manufacture of candies, industrial chocolate; chocolate syrup; [ chocolate based candy for retail sale and use in food manufacturing; ] liquid and solid chocolate intended for sale to the chocolate industry and not for direct human consumption; cocoa and cocoa powder, in particular instant powder, [ cocoa-based drinks in powder form; cocoa-based and chocolate-based drinks; chocolate and chocolate goods, in particular chocolate bars and chocolate tablets, including chocolate bars and tablets with a fruit filling or containing fructose; ] chocolate mixtures and chocolate coatings; [ confectionery, namely, chocolate candies and pralines; waffles with a chocolate coating, in particular waffle biscuits and waffle pralines; ] chocolate-coated dragees; [ chocolate desserts; ] chocolate, [ nut and nougat creams being spreads; flavoring agents and seasonings made of chocolate and/or cocoa based ingredients for foodstuff, especially flavoring agents for beverages; dietary supplements and food additives made of chocolate and/or cocoa based ingredients for non-medicinal purposes, for non-nutritional purposes based on carbohydrates and fibres ] |
| Goods and Services | [ Sanitary preparations for medical purposes; dietetic substances adapted for medical use made of chocolate and/or cocoa based ingredients; dietary supplements made of chocolate and/or cocoa based ingredients; nutritional additives and taste enhancers made of chocolate and/or cocoa based ingredients for medical purposes for use in foods and dietary supplements for human consumption; dietary supplements and nutritional food additives made of chocolate and/or cocoa based ingredients adapted for medical purposes based on proteins, fats, fatty acids, polyphenols, carbohydrates, fibres, with the addition of vitamins, minerals, trace elements, either separately or in combinations ] |
| Translation of Words in Mark | The English translation of "CACAO" in the mark is "COCOA". |
| International Class | 005 - Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. |
| US Class Codes | 006, 018, 044, 046, 051, 052 |
| Class Status Code | G - NOT AVAILABLE |
| Class Status Date | Tuesday, October 17, 2017 |
| Primary Code | 005 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 029 - Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats. |
| US Class Codes | 046 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, August 6, 2010 |
| Primary Code | 029 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 030 - Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice. |
| US Class Codes | 046 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, August 6, 2010 |
| Primary Code | 030 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | BARRY CALLEBAUT FRANCE |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | FR |
| Party Name | Barry Callebaut France S.A.S. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | F-78250 Meulan FR |
| Party Name | Barry Callebaut France S.A.S. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | F-78250 Meulan FR |
| Event Date | Event Description |
| Thursday, August 5, 2010 | SN ASSIGNED FOR SECT 66A SUBSEQ DESIG FROM IB |
| Friday, August 6, 2010 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, August 10, 2010 | APPLICATION FILING RECEIPT MAILED |
| Thursday, October 14, 2010 | ASSIGNED TO EXAMINER |
| Thursday, October 21, 2010 | NON-FINAL ACTION WRITTEN |
| Friday, October 22, 2010 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Friday, October 22, 2010 | REFUSAL PROCESSED BY MPU |
| Friday, October 22, 2010 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Friday, November 12, 2010 | REFUSAL PROCESSED BY IB |
| Thursday, December 23, 2010 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, December 23, 2010 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, December 23, 2010 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, January 3, 2011 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, February 1, 2011 | ASSIGNED TO LIE |
| Tuesday, February 1, 2011 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Friday, February 11, 2011 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Tuesday, February 15, 2011 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Friday, February 18, 2011 | EXAMINERS AMENDMENT -WRITTEN |
| Friday, February 18, 2011 | EXAMINERS AMENDMENT E-MAILED |
| Friday, February 18, 2011 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Friday, February 18, 2011 | EXAMINER'S AMENDMENT ENTERED |
| Friday, February 18, 2011 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, February 23, 2011 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Thursday, March 10, 2011 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Thursday, March 10, 2011 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Tuesday, March 29, 2011 | PUBLISHED FOR OPPOSITION |
| Tuesday, March 29, 2011 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, June 14, 2011 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, September 14, 2011 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, September 27, 2011 | FINAL DISPOSITION PROCESSED |
| Tuesday, September 27, 2011 | FINAL DISPOSITION NOTICE SENT TO IB |
| Sunday, February 24, 2013 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Friday, September 13, 2013 | CHANGE OF OWNER RECEIVED FROM IB |
| Thursday, May 22, 2014 | CORRECTION TRANSACTION RECEIVED FROM IB |
| Thursday, May 29, 2014 | CORRECTION FROM IB ENTERED - NO REVIEW REQUIRED |
| Thursday, September 7, 2017 | TEAS SECTION 71 RECEIVED |
| Tuesday, October 10, 2017 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Tuesday, October 17, 2017 | REGISTERED - PARTIAL SEC 71 ACCEPTED |
| Tuesday, October 17, 2017 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Sunday, June 17, 2018 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Wednesday, June 20, 2018 | GENERIC MADRID TRANSACTION CREATED |
| Wednesday, June 20, 2018 | GENERIC MADRID TRANSACTION SENT TO IB |
| Thursday, September 27, 2018 | INTERNATIONAL REGISTRATION RENEWED |
| Friday, September 28, 2018 | PARTIAL INVALIDATION PROCESSED BY THE IB |
| Sunday, June 14, 2020 | COURTESY REMINDER - SEC. 71 (10-YR) E-MAILED |
| Monday, June 14, 2021 | TEAS SECTION 71 RECEIVED |
| Monday, November 29, 2021 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Tuesday, January 4, 2022 | REGISTERED-SEC.71 ACCEPTED |
| Tuesday, January 4, 2022 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Saturday, July 9, 2022 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Sunday, September 4, 2022 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Wednesday, September 28, 2022 | INVALIDATION REVIEWED - NO ACTION REQUIRED BY OFFICE |
| Thursday, December 11, 2025 | NEW REPRESENTATIVE AT IB RECEIVED |