| Serial Number | 79172663 |
| Word Mark | DINESEN |
| Filing Date | Tuesday, May 12, 2015 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, September 6, 2016 |
| Registration Number | 5033692 |
| Registration Date | Tuesday, September 6, 2016 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, June 21, 2016 |
| Goods and Services | Non-metal building materials, namely, floors of hardwood, floor tiles of wood, floor boards of wood, floor panels of wood, planks of wood, shaped timber, sawn timber, namely, wood boards, wood beams, wood blocks, soffits, panels of wood; non-metallic rigid pipes for building; pitch; non-metallic transportable buildings; monuments, not of metal; building and construction materials and elements, namely, non-metal piles, non-metal flooring material, not of metal; doors, gates, and windows not of metal and outdoor blinds, not of metal and not of textile; transportable buildings, not of metal; acoustic panels of wood for ceilings; acoustic panels of wood as noise barriers for walls; architraves, namely, moldings and finish trim of non-metallic materials; non-metallic blocks for construction, namely, wood blocks; non-metallic wood blocks for use in flooring construction; boards made of wood particles; building components, namely, boards made of wood; non-metallic building fronts, namely, wood siding; building panels, not of metal, namely, non-metal door panels, non-metal ceiling panels, non-metal floor panels; non-metallic building sections, namely, non-metal door panels; ceiling boards of wood; non-metallic decorative mouldings for use in construction; facade construction panels of non-metallic materials; floors, not of metal; floorboards; floor tiles of wood; floor boards of wood; non-metallic floor boards; non-metal floor panels, namely, of wood; planks; shaped timber; sawn timber; wood; wood, semi-worked |
| Goods and Services | [ Building construction; ] advisory services relating to the renovation of property; apartment refurbishment services; floor maintenance services, namely, cleaning, renewing oil or lacquer finish; floor layering, namely, application of oil or lacquer; [ installation of fabricated construction units; ] installation of fitted furniture; [ installation of fittings for Buildings, namely, furnaces; ] interior refurbishment of buildings; installing wood flooring; installing wallboard; maintenance and repair of flooring, namely, cleaning, floor sanding, polishing of floors, oiling of floors; building restoration |
| Goods and Services | Business advisory services relating to promotional activities; advisory services relating to sales promotion; consultancy relating to advertising; consultancy relating to the organization of promotional campaigns for business; consultations relating to business advertising; consultations relating to business promotion; professional consultancy relating to marketing; arranging the distribution of advertising literature in response to telephone enquiries; arranging the distribution of advertising samples; arranging the distribution of advertising samples in response to telephone enquiries; direct mail advertising; dissemination of advertising material; distribution of advertising announcements; distribution of advertising material by post; distribution of printed promotional material by post; distribution of products for advertising purposes; distribution of publicity materials whether cross border or not; distribution of publicity texts; distribution of samples; customer club services, for commercial, promotional and/or advertising purposes; customer loyalty services for commercial, promotional and/or advertising purposes; promoting the goods and services of others by Means of issuance of loyalty card services; management of customer loyalty, incentive or promotional schemes; organization and management of business incentive and loyalty schemes to promote the sale of products and services of others; organization, operation and supervision of an incentive scheme to promote the sale of products and services of others; organization, operation and supervision of customer loyalty schemes to promote the sale of products and services of others; organization, operation and supervision of sales and promotional incentive schemes to promote the sale of products and services of others; arranging of product demonstrations for advertising purposes; arranging of product displays for advertising purposes; business merchandising display services; demonstration of goods; demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and homeshopping services; demonstration of goods for promotional purposes; display services for merchandise; organization and conducting of product presentations; presentation of goods on communication media, for retail purposes; provision of space on websites for advertising goods and services; arranging and conducting of fairs and exhibitions for business ad advertising purposes; arranging and conducting of fairs and exhibitions for business and advertising purposes; arranging of displays for commercial purposes; arranging of exhibitions for advertising purposes; arranging of exhibitions for business purposes; arranging of trade fairs; conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; conducting exhibitions for advertising purposes; conducting exhibitions for business purposes; exhibitions for commercial or advertising purposes; organization of events for commercial and advertising purposes; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; planning and conducting of trade fairs, exhibitions and presentations for economic or advertising purposes; promotion of fairs for trade purposes; advertisement via mobile phone networks; advertising and marketing; advertising in periodicals, brochures and newspapers; advertising in the popular and professional press; advertising particularly services for the promotion of goods; advertising, including on-line advertising on a computer network; advertising services provided via the internet; advertising services for the promotion of e-commerce; brand positioning services; business marketing services, namely, arranging of product launches; arranging of presentations for advertising purposes; arranging of competitions for advertising purposes; arranging and placing of advertisements; arranging and conducting marketing promotional events for others; arrangement of advertising; advertising via electronic media and specifically the internet; advertising through all public communication means; direct marketing; computerized business promotion; compilation of advertisements for use on the internet; compilation of advertisements for use as web pages on the internet; compilation of advertisements; business promotion; online advertising via a computer communications network; online advertisements, namely, providing on-line business information of others; on-line advertising on a computer network; market campaigns, namely, marketing services; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; preparation and realization of media and advertising plans and concepts; preparation of advertisements; preparation of marketing plans; preparation of publicity publications; preparation of trade publicity texts; product launch services, namely, business consultation and management regarding launching of new products; product marketing services; production of advertising films; production of advertising material; production of advertising matter and commercials; production of visual advertising matter; promotion of business opportunities; sales promotion services; promotion, advertising and marketing of on-line websites; publicity and sales promotion services; radio and television advertising; business administration relating to marketing; business administration relating to sales methods; business management services; administrative processing of purchase orders; administrative processing and business organization of mail order services; advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; retail store services in the field of goods made of wood that is building materials of wood, building components of wood, floor board of wood, floors of wood, floor boards, planks, shaped timber, sawn timber, wood, floor coverings of wood and furniture of wood; retail store services connected with the sale of goods made of wood that is building materials of wood, building components of wood, floor board of wood, floors of wood, floor boards, planks, shaped timber, sawn timber, wood, floor coverings of wood and furniture of wood; mail order retail services connected with building materials of wood, building components of wood, floor board of wood, floors of wood, floor boards, planks, shaped timber, sawn timber, wood, floor coverings of wood and furniture of wood; advertising, marketing and promotional services; business assistance, management and administrative services; retail store services in relation to furniture; retail store services in relation to furnishings; administration of the business affairs of retail stores; retail store services in relation to floor coverings |
| Goods and Services | Furniture [ ; mirrors; picture frames ] |
| International Class | 019 - Building materials (non-metallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal. |
| US Class Codes | 001, 012, 033, 050 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, September 18, 2015 |
| Primary Code | 019 |
| 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 | 6 - Active |
| Class Status Date | Friday, September 18, 2015 |
| Primary Code | 020 |
| 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 | 6 - Active |
| Class Status Date | Friday, September 18, 2015 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, September 18, 2015 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Dinesen Legacy A/S |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | DK |
| Party Name | Dinesen Floors A/S |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | DK |
| Party Name | Dinesen Floors A/S |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | DK |
| Party Name | Dinesen Floors A/S |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | DK |
| Event Date | Event Description |
| Friday, September 18, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, September 17, 2015 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Thursday, September 24, 2015 | REFUSAL PROCESSED BY MPU |
| Friday, October 9, 2015 | REFUSAL PROCESSED BY IB |
| Thursday, February 4, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, September 18, 2015 | ASSIGNED TO EXAMINER |
| Tuesday, September 22, 2015 | APPLICATION FILING RECEIPT MAILED |
| Wednesday, September 23, 2015 | NON-FINAL ACTION WRITTEN |
| Thursday, September 24, 2015 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Thursday, September 24, 2015 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Tuesday, January 26, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, February 4, 2016 | ASSIGNED TO LIE |
| Thursday, February 4, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, April 18, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, February 25, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, March 1, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, March 15, 2016 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Monday, April 4, 2016 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Monday, April 4, 2016 | NON-FINAL ACTION WRITTEN |
| Tuesday, April 5, 2016 | NON-FINAL ACTION MAILED |
| Monday, April 18, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Monday, April 18, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, January 30, 2017 | FINAL DISPOSITION PROCESSED |
| Friday, May 6, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, May 13, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, June 1, 2016 | NOTICE OF PUBLICATION |
| Wednesday, June 1, 2016 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, June 1, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Tuesday, June 21, 2016 | PUBLISHED FOR OPPOSITION |
| Friday, August 26, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, September 6, 2016 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, December 6, 2016 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, May 11, 2021 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Monday, January 30, 2017 | FINAL DISPOSITION NOTICE SENT TO IB |
| Friday, February 17, 2017 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Thursday, May 4, 2017 | NEW REPRESENTATIVE AT IB RECEIVED |
| Thursday, May 31, 2018 | NEW REPRESENTATIVE AT IB RECEIVED |
| Tuesday, May 11, 2021 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Tuesday, May 11, 2021 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Tuesday, May 11, 2021 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Tuesday, May 11, 2021 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, May 11, 2021 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Monday, September 6, 2021 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Wednesday, October 27, 2021 | CHANGE OF OWNER RECEIVED FROM IB |
| Thursday, February 2, 2023 | TEAS SECTION 71 & 15 RECEIVED |
| Monday, August 28, 2023 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Wednesday, February 21, 2024 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Thursday, September 7, 2023 | POST REGISTRATION ACTION MAILED - SEC. 71 & 15 |
| Tuesday, May 7, 2024 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Tuesday, July 23, 2024 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Friday, May 10, 2024 | INVALIDATION REVIEWED - NO ACTION REQUIRED BY OFFICE |