| Serial Number | 79085870 |
| Word Mark | CERATIZIT |
| Filing Date | Thursday, February 18, 2010 |
| Status | 708 - PARTIAL SECTION 71 & 15 ACCEPTED AND ACKNOWLEDGED |
| Status Date | Tuesday, May 17, 2022 |
| Registration Number | 4103577 |
| Registration Date | Tuesday, February 28, 2012 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, December 13, 2011 |
| Goods and Services | [ Education services, namely, classes, workshops and seminars in the field of metalworking and the use of machines, especially, cutting tools and machines; providing of training in the field of metalworking, the use of machines, especially, cutting tools and machines, and in the field of hard materials; entertainment, namely, arranging, organizing, conducting, and hosting social entertainment events, parties and galas; entertainment, namely, arranging, organizing, conducting, and hosting congresses and conferences in the fields of the metalworking, hard materials and the use of them in machines and machine tools; sporting and cultural activities, namely, organizing sporting and cultural events, provision of information relating to the organizing of sporting and cultural exhibitions; arranging and conducting of educational colloquiums in the field of metalworking, the use of machines, especially cutting tools and machines, and in the field of hard materials; arranging and conducting of educational conferences in the field of metalworking, the use of machines, especially cutting tools and machines, and in the field of hard materials; arranging and conducting of educational congresses in the field of metalworking, the use of machines, especially, cutting tools and machines, and in the field of hard materials; providing correspondence courses in the field of metalworking, the use of machines, especially cutting tools and machines, and in the field of hard materials; entertainment information; providing non-downloadable online electronic publications, namely, magazines, books and journals in the field of use of metalworking, machines, especially cutting tools and machines, and in the field of hard materials; film production; education information; electronic desktop publishing; videotape editing; organization of education and entertainment competitions, namely, sports competitions, athletic competitions and mathematics competitions; organization of exhibitions for cultural or educational purposes; arranging and conducting of workshops in the field of metalworking, the use of machines, especially cutting tools and machines, and in the field of hard materials; publication of books; arranging and conducting of seminars in the field of use of machines, especially cutting tools and machines, as well as in the fields of hard materials; presentation of live show performances; arranging and conducting of educational symposiums in the field of metalworking, the use of machines, especially cutting tools and machines, and in the field of hard materials; production of radio and television programs; publication of texts, other than publicity texts; educational academies, namely, training in the fields of metalworking, the use of machines, especially cutting tools and machines, and in the field of hard materials; practical training, namely, educational demonstrations; videotape film production ] |
| Goods and Services | [ Hand-operated hand tools and implements, namely, drills, clamps, hammers; cutlery; side arms, other than firearms, namely, hunting knives, swords; razors ] |
| Goods and Services | Machines and machine tools, namely, autogenous soldering machines, continuous metal casting machines, drilling machines for metalworking, tool grinding machines, precision machine tools, namely, hard metal tools, high speed steel (HSS) tools, carbide tools, ceramic tools, poly crystalline diamond (PCD) tools, and diamond-coated and diamond uncoated tools, and hard metal tools, all for use in the cutting and forming of materials by others, power operated metalworking machine tools, namely, drilling, boring, turning and milling tools, milling cutters machine tool, metalworking machine tools, machines and machine tools for the cutting and forming of materials, machine tools, namely, jaws, clamps and vices for use in the precision clamping of work pieces, lathes machine tools, gear cutters machine tool, broaches machine tool, chasers machine tool; motors, other than for land vehicles; machine coupling and transmission components except for land vehicles; agricultural implements other than hand-operated, namely, incorporators, seed drills, hay balers; incubators for eggs; cutting tools for turning, milling and drilling, namely, diamond-pointed metal-cutting tools, cemented carbide cutting tools, cutting machines; tools for working with wood, crushing technology, fixing technology and working with stone, namely, wood planning machines, crushing machines for industrial purposes, power-operated polishers; press drills, namely, power tools in the nature of drill presses; stamping tools, namely, automatic stamping machines, die-stamping machines, stamping presses; parts of power-operated saws, namely, saw teeth; paper cutting machines, paper reeling machines, paper shredding machines; paper-making machines; machine parts, namely, molds for use in processing metals; other wearing parts made of hard metals, made of cermets, made of ceramic materials and of very hard materials, namely, machine parts in the nature of wear plates and strips; tool systems in the nature of tools and tool holders, namely, machine tool holders, lathes, gear cutters |
| Goods and Services | Common metals and their alloys; building materials of metal, namely, composite panels composed primarily of metal, metal building flashing, metal cladding for construction and building; transportable buildings of metal; railway material of metal, namely, materials of metal for railway construction, metallic materials for railway tracks, metal railway crossovers; non-electric cables and wires of common metal; ironmongery in the nature of small items of metal hardware, namely, metal screws, metal bolts, metal nails; pipes of metal; metal and metal fire resistant safes; goods of common metal not included in other classes, namely, common metal drawer pulls, common metal baskets, common metal boxes, buckles of common metal; ores of metal, namely, copper ores, iron ores, lead ores, nickel ores, chrome iron ores, galena ores, manganese ores, molybdenum ores, tin ores, tungsten ores, zinc ores; cermets; extruded hard metal shanks; hard metal materials, namely, cermets; laminated composite materials, namely, building materials in the nature of composite panels composed primarily of metal; very hard materials, namely, hard solder; semi-worked products in these materials, all goods being of metal, namely, semi-worked common metals for further manufacture |
| Goods and Services | [ Advertising; business management; business administration; providing office functions; publicity columns preparation, namely, writing of publicity column texts, publication of publicity columns texts; dissemination and distribution of advertising matter in the nature of leaflets, pamphlets, printed matter and samples; document reproduction; distribution of samples for publicity purposes; business organization consultancy; updating of advertising material; dissemination of advertising matter; publication of publicity texts; online advertising on a computer network; advertising by mail order; radio advertising; business management assistance; public relations; business inquiries; television advertising; bill-posting, namely, billing, bill presentment services, bill sticking; demonstration of goods; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes ] |
| Goods and Services | [ Chemicals used in industry and science; chemicals used in photography, namely, photographic chemicals, photographic developers, photographic emulsions; chemicals used in agriculture, horticulture and forestry except fungicides, herbicides, insecticides and parasiticides; unprocessed artificial resins, unprocessed plastics; fertilizers; fire extinguishing compositions; tempering preparations; soldering preparations, namely, soldering chemicals, soldering fluxes, tempering chemicals for use in metalworking or soldering; chemical substances for preserving foodstuffs, namely, food preserving chemicals, chemical additives for use in the manufacture of food; tanning substances, namely, enzymes for use in the tanning of leather, tanning agents for use in the manufacture of leather; adhesives for industrial purposes; technical ceramics, namely, ceramic powders used in manufacturing, ceramic glazings in the nature of a dry chemical preparation for use in the manufacture of ceramics, ceramic particles for use as a filtering media in the field of hard material production and treatment industries ] |
| Translation of Words in Mark | The wording "CERATIZIT" has no meaning in a foreign language. |
| Goods and Services | [ Scientific and technological services and research and design services relating thereto, namely, scientific research, new product design services, product development; industrial analysis and research services, namely, industrial research in the field of metalworking, the use of machines, especially cutting tools and machines, and in the field of hard materials; consumer product safety testing, product testing, materials testing and evaluation; design and development of computer hardware and software; technical consulting regarding design and development of cutting machine tools for the processing of metals and synthetic materials, especially turning, deburring and tapping tools, drills, milling cutters, side-and-face milling cutters, saws, boring, reaming and countersinking tools; technical consulting regarding design and development of parts of such tools, especially interchangeable cutting parts made of high speed steel, hard metal, cermets, of ceramic or of extra-hard materials and other cutting materials, sawtooth and extruded hard metal shank tools, guillotines for processing paper, mechanical forming tools, tool systems for cutting designed for processing metals and synthetic materials, mechanical clamping apparatus for tools and work pieces designed to be used with machine tools, tool crib automats for storing and dispensing machine tools, wear parts for machines made of hard metal, cermets and ceramics or of synthetic materials; design and development of computer programs and computer software, especially for logistics tool management systems, for controlling automated machinery, as well as for all functional and operational sectors, also in connection with the Internet and e-commerce; technical consulting in the field of information technology services provided by engineers and technical experts, especially regarding strength of materials and quality control, namely, technical consulting regarding design, development and use of cutting machine-tools for the processing of metals and synthetic materials, especially turning, deburring and tapping tools, drills, milling cutters, side-and-face milling cutters, saws, reaming and countersinking tools; services provided by engineers and technical experts, especially regarding strength of materials and quality control, namely, technical consulting regarding design, development and the use of parts of such tools, especially interchangeable cutting parts made of high speed steel, hard metal, cermets, ceramics or of extra-hard materials and other cutting materials, sawtooth and extruded hard metal shank tools, guillotines for processing paper, mechanical forming tools, tool systems for cutting designed for processing metals and synthetic materials, mechanical clamping apparatus for tools and work pieces designed to be used with machine tools, tool crib automats for storing and dispensing machine tools and wear parts for synthetic materials ] |
| 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 | G - NOT AVAILABLE |
| Class Status Date | Monday, May 6, 2019 |
| Primary Code | 001 |
| 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 | 6 - Active |
| Class Status Date | Friday, September 10, 2010 |
| 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 | 6 - Active |
| Class Status Date | Friday, September 10, 2010 |
| 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 | G - NOT AVAILABLE |
| Class Status Date | Tuesday, May 17, 2022 |
| Primary Code | 008 |
| 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 | G - NOT AVAILABLE |
| Class Status Date | Tuesday, May 17, 2022 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 041 - Education; providing of training; entertainment; sporting and cultural activities. |
| US Class Codes | 100, 101, 107 |
| Class Status Code | G - NOT AVAILABLE |
| Class Status Date | Tuesday, May 17, 2022 |
| Primary Code | 041 |
| 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 | G - NOT AVAILABLE |
| Class Status Date | Tuesday, May 17, 2022 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | CERATIZIT SA |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | MAMER L-8232 LU |
| Party Name | CERATIZIT SA |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | LU |
| Party Name | CERATIZIT SA |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | LU |
| Event Date | Event Description |
| Saturday, July 1, 2023 | NEW REPRESENTATIVE AT IB RECEIVED |
| Tuesday, April 11, 2023 | PARTIAL INVALIDATION PROCESSED BY THE IB |
| Tuesday, March 7, 2023 | PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Tuesday, March 7, 2023 | INVALIDATION PROCESSED |
| Tuesday, January 17, 2023 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Tuesday, May 17, 2022 | NOTICE OF ACCEPTANCE OF SEC. 71 & 15 - E-MAILED |
| Tuesday, May 17, 2022 | REGISTERED - PARTIAL SEC. 71 ACCEPTED & SEC. 15 ACK. |
| Wednesday, May 11, 2022 | TEAS SECTION 71 & 15 RECEIVED |
| Sunday, February 28, 2021 | COURTESY REMINDER - SEC. 71 (10-YR) E-MAILED |
| Thursday, March 19, 2020 | INTERNATIONAL REGISTRATION RENEWED |
| Friday, March 6, 2020 | PARTIAL INVALIDATION PROCESSED BY THE IB |
| Tuesday, January 28, 2020 | PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Tuesday, January 28, 2020 | INVALIDATION PROCESSED |
| Monday, January 6, 2020 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Monday, May 6, 2019 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Monday, May 6, 2019 | REGISTERED - PARTIAL SEC 71 ACCEPTED |
| Monday, April 29, 2019 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Tuesday, October 30, 2018 | POST REGISTRATION ACTION MAILED - SEC.71 |
| Tuesday, October 16, 2018 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Monday, April 16, 2018 | POST REGISTRATION ACTION MAILED - SEC.71 |
| Monday, March 19, 2018 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Wednesday, February 28, 2018 | TEAS SECTION 71 RECEIVED |
| Tuesday, February 28, 2017 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Friday, August 2, 2013 | NEW REPRESENTATIVE AT IB RECEIVED |
| Sunday, May 19, 2013 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Friday, March 1, 2013 | NEW REPRESENTATIVE AT IB RECEIVED |
| Tuesday, October 30, 2012 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Friday, July 27, 2012 | FINAL DISPOSITION NOTICE SENT TO IB |
| Thursday, July 26, 2012 | FINAL DISPOSITION PROCESSED |
| Friday, July 6, 2012 | NOTIFICATION PROCESSED BY IB |
| Monday, May 28, 2012 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, February 28, 2012 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, February 15, 2012 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, February 15, 2012 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Tuesday, December 13, 2011 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, December 13, 2011 | PUBLISHED FOR OPPOSITION |
| Wednesday, November 23, 2011 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, November 23, 2011 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, November 23, 2011 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Friday, November 4, 2011 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, October 25, 2011 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, October 25, 2011 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, October 25, 2011 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Tuesday, October 25, 2011 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, October 25, 2011 | EXAMINERS AMENDMENT -WRITTEN |
| Thursday, May 5, 2011 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Thursday, May 5, 2011 | FINAL REFUSAL E-MAILED |
| Thursday, May 5, 2011 | FINAL REFUSAL WRITTEN |
| Wednesday, March 30, 2011 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, March 30, 2011 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, March 28, 2011 | ASSIGNED TO LIE |
| Friday, March 18, 2011 | TEAS VOLUNTARY AMENDMENT RECEIVED |
| Thursday, March 17, 2011 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, March 17, 2011 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, March 17, 2011 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Saturday, October 9, 2010 | REFUSAL PROCESSED BY IB |
| Tuesday, September 21, 2010 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Monday, September 20, 2010 | REFUSAL PROCESSED BY MPU |
| Saturday, September 18, 2010 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Friday, September 17, 2010 | NON-FINAL ACTION WRITTEN |
| Tuesday, September 14, 2010 | APPLICATION FILING RECEIPT MAILED |
| Friday, September 10, 2010 | ASSIGNED TO EXAMINER |
| Friday, September 10, 2010 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, September 9, 2010 | SN ASSIGNED FOR SECT 66A APPL FROM IB |