| Serial Number | 79088206 |
| Word Mark | D DEKRA ON THE SAFE SIDE. |
| Filing Date | Wednesday, June 23, 2010 |
| Status | 706 - SECTION 71 ACCEPTED |
| Status Date | Wednesday, May 25, 2022 |
| Registration Number | 4021266 |
| Registration Date | Tuesday, September 6, 2011 |
| Mark Drawing | 5000 - Drawing with word(s) / letter(s) / number(s) in Stylized form |
| Published for Opposition Date | Tuesday, June 21, 2011 |
| Goods and Services | Educational services, namely, conducting classes, seminars, conferences, and workshops in the field of safety in conducting technical appliances, vehicle safety, quality management, and occupational health and safety; training services in the field of safety in conducting [ technical appliances, ] vehicle safety, quality management, and occupational health and safety; continuing education services, namely, providing live and on-line continuing professional education seminars in the field of safety in conducting [ technical appliances, vehicle safety, quality management, and occupational health and safety; professional coaching services in the field of safety in conducting technical appliances, vehicle safety, quality management, and occupational health and safety; conducting workshops, colloquiums and seminars in the field of safety in conducting technical appliances, vehicle safety, quality management, and occupational health and safety; ] conception and development of teaching and training programs in the field of safety in conducting [ technical appliances, ] vehicle safety, quality management, and occupational health and safety [ ; job placement training services, namely, conducting workshops, classes, seminars, courses, conferences, and distributing related training materials featuring skills for job interviews, job seeking techniques, and searching techniques for vacant positions; education information; driver safety training; publication of printed matter; publishing of electronic publications; arranging and conducting of cultural and sporting events; entertainment services, namely, arranging and conducting of competitions for actors; production of live music and theater events; organization of exhibitions for cultural or educational purposes ] |
| Description of Mark | The mark consists of the words "DEKRA" and a stylized triangle design, both green and in color. The words "ON THE SAFE SIDE" are entirely in black. The mark has a white background. |
| Certificate of Correction for Registration | Line 29 and 30 "business liquidation services on behalf of insurance companies" should be deleted, and "business liquidation services subsidiaries/branches on behalf of insurance companies liquidation" should be inserted. Line 33, "appraisals for insurance claims of personal property" should be deleted in class 36. |
| Goods and Services | Insurance company services, namely, [ the administration and settlement of insurance agreements and collection of insurance premiums relating to claim settlement; business liquidation services * subsidiaries/branches * on behalf of insurance companies * liquidation *; life insurance settlement claims services within the scope of insurance agreements; tax payment processing services on behalf of third parties; insurance claims processing; insurance brokerage; ]appraisals for insurance claims of personal property |
| Indication of Colors claimed | The color(s) green, black and white is/are claimed as a feature of the mark. |
| Goods and Services | [ Employment agency services for placement of temporary workers; employment agency services; professional business consultancy for natural and legal persons in the field of career planning, professional career evaluation, career development, career management and employment inplacement and outplacement services; personnel placement and recruitment; employment staffing consultation services; psychological testing for the selection of personnel; ] professional business consultancy, personnel management consultancy and business management services, management consultation, business administration services, business management, business management and organization consultancy, business management consultancy; business information and inquiries; business organization consultation; providing office functions; [ business management advisory services relating to franchising; ] damage management for insurance companies, insurance brokers and industrial companies, namely, the technical investigation of vehicle damage and consulting services in the field of collection of evidence for forensic purposes; advertising and marketing services; compilation of information into computer databases; updating and maintenance of data in computer databases, collection and systemization of data and information into computer databases; conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes |
| Goods and Services | Development, updating and maintenance of software and data bases; certification, namely, testing, analysis and evaluation of the management systems, personnel, medical products and medical devices, food-stuffs, animal feed, [ and gym machines ] of others for the purpose of certification; quality control for others; quality management services, namely, quality evaluation and analysis, quality assurance, and quality control in the field of [ technical appliances and ] motor vehicles; [ surveying services; ] drafting scientific expert opinions relating to [ technical appliances, ] technical norms and guidelines, [ real estate, and ] motor vehicles; engineering; physics research; computer programming; technical consultancy in the field of vehicle manufacturing and vehicle safety, industrial goods safety, surveillance and maintenance of industrial equipment and machines, transport, logistics, construction and environment, occupational health and safety, and computer programming; damage management for insurance companies, insurance brokers and industrial companies, namely, the technical investigation of vehicle damage and consulting services in the field of collection of evidence for forensic purposes; [ homepage and webpage design for third parties; ] material testing [ ; operation of an internet search engine for obtaining science and research data on a global commuter network; and drawing up of plans and engineering drawings ] |
| 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, November 8, 2010 |
| 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, November 8, 2010 |
| Primary Code | 036 |
| 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 | 6 - Active |
| Class Status Date | Monday, November 8, 2010 |
| 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 | 6 - Active |
| Class Status Date | Monday, November 8, 2010 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | DEKRA e.V. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | 70565 Stuttgart DE |
| Party Name | DEKRA e.V. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | DEKRA e.V. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Event Date | Event Description |
| Sunday, April 30, 2023 | PARTIAL INVALIDATION PROCESSED BY THE IB |
| Tuesday, March 14, 2023 | PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Tuesday, March 14, 2023 | INVALIDATION PROCESSED |
| Wednesday, January 25, 2023 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Wednesday, May 25, 2022 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Wednesday, May 25, 2022 | REGISTERED-SEC.71 ACCEPTED |
| Tuesday, May 24, 2022 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Friday, September 3, 2021 | TEAS SECTION 71 RECEIVED |
| Sunday, September 6, 2020 | COURTESY REMINDER - SEC. 71 (10-YR) E-MAILED |
| Thursday, July 23, 2020 | INTERNATIONAL REGISTRATION RENEWED |
| Friday, August 17, 2018 | PARTIAL INVALIDATION PROCESSED BY THE IB |
| Thursday, June 14, 2018 | PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Thursday, June 14, 2018 | INVALIDATION PROCESSED |
| Sunday, June 10, 2018 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Tuesday, October 10, 2017 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Tuesday, October 10, 2017 | REGISTERED-SEC.71 ACCEPTED |
| Tuesday, October 10, 2017 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Wednesday, September 6, 2017 | TEAS SECTION 71 RECEIVED |
| Thursday, February 16, 2017 | NEW REPRESENTATIVE AT IB RECEIVED |
| Saturday, December 1, 2012 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Monday, April 16, 2012 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, March 26, 2012 | FINAL DISPOSITION NOTICE SENT TO IB |
| Monday, March 26, 2012 | FINAL DISPOSITION PROCESSED |
| Sunday, February 26, 2012 | LIMITATION FROM THE IB EXAMINED AND ENTERED |
| Monday, March 26, 2012 | CORRECTION UNDER SECTION 7 ¿ PROCESSED |
| Monday, March 26, 2012 | ASSIGNED TO PARALEGAL |
| Friday, January 27, 2012 | LIMITATION OF GOODS RECEIVED FROM IB |
| Tuesday, December 6, 2011 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, September 6, 2011 | REGISTERED-PRINCIPAL REGISTER |
| Sunday, September 4, 2011 | NOTIFICATION PROCESSED BY IB |
| Tuesday, June 21, 2011 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, June 21, 2011 | PUBLISHED FOR OPPOSITION |
| Wednesday, June 1, 2011 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, June 1, 2011 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, May 18, 2011 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Friday, May 13, 2011 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, May 13, 2011 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, May 13, 2011 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, May 9, 2011 | ASSIGNED TO LIE |
| Wednesday, May 4, 2011 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Sunday, November 28, 2010 | REFUSAL PROCESSED BY IB |
| Friday, November 12, 2010 | APPLICATION FILING RECEIPT MAILED |
| Wednesday, November 10, 2010 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Wednesday, November 10, 2010 | REFUSAL PROCESSED BY MPU |
| Wednesday, November 10, 2010 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Tuesday, November 9, 2010 | NON-FINAL ACTION WRITTEN |
| Monday, November 8, 2010 | ASSIGNED TO EXAMINER |
| Monday, November 8, 2010 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, November 5, 2010 | SN ASSIGNED FOR SECT 66A APPL FROM IB |