| Serial Number | 79176533 |
| Word Mark | DLS SCHMIERSYSTEME DIRECT LUBRICATION SYSTEMSSTEMS |
| Filing Date | Friday, June 5, 2015 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, September 8, 2023 |
| Registration Number | 5143818 |
| Registration Date | Tuesday, February 21, 2017 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, December 6, 2016 |
| Description of Mark | The mark consists of the stylized letters and wordings "DLS SCHMIERSYSTEME DIRECT LUBRICATION SYSTEMS" and design. The letters and wording "DLS SCHMIERSYSTEME" appear in turquoise. The letters "DLS" appear in a large font above the term "SCHMIERSYSTEME". A turquoise horizontal line appears below the term "SCHMIERSYSTEME". Below the line is the wording "DIRECT LUBRICATION SYSTEMS" in black. |
| Goods and Services | Pumps, namely, lubricating pumps, electric pumps, diffusion pumps; machines and machine tools for treatment of materials and for manufacturing, namely, pumps being parts of manufacturing machines, and grease boxes being parts of manufacturing machines; parts and fittings of all the aforesaid goods, included in this class; lubricating pumps; grease boxes being parts of machines; grease rings being parts of machines |
| Goods and Services | Technical oils and greases, namely, lubricating oils and greases; lubricants and industrial greases, waxes and fluids; additives in connection with the aforesaid, namely, non-chemical additives for lubricants and greases |
| Indication of Colors claimed | The color(s) turquoise and black is/are claimed as a feature of the mark. |
| Goods and Services | Advertising, marketing and promotional services; commercial trading services, namely, retail and wholesale store services featuring technical oils and greases, lubricants and industrial greases, waxes and fluids, additives for technical oils and greases, lubricants and industrial greases, waxes and fluids; commercial trading services, namely, retail and wholesale store services featuring pumps, machines and machine tools for treatment of materials and for manufacturing, generic machine parts, lubricating pumps, grease boxes being parts of machines, grease rings being parts of machines parts and fittings of all the aforesaid goods; collective buying club services; commercial evaluation services, namely, business appraisals and evaluations in business matters; import and export agencies services |
| Translation of Words in Mark | The English translation of "SCHMIERSYSTEME" in the mark is "lubrication equipment". The wording "DLS" has no meaning in a foreign language. |
| NOT AVAILABLE | "SCHMIERSYSTEME" AND "LUBRICATION SYSTEMS" |
| Goods and Services | Engineering services; engineering consultancy services; engineering services for others; conducting engineering surveys |
| 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, September 8, 2023 |
| Primary Code | 004 |
| 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, September 8, 2023 |
| Primary Code | 007 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, September 8, 2023 |
| Primary Code | 035 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, September 8, 2023 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | DLS Schmiersysteme GmbH |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | DLS Schmiersysteme GmbH |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | DLS Schmiersysteme GmbH |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Event Date | Event Description |
| Tuesday, December 1, 2015 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Thursday, November 19, 2015 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Saturday, November 21, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Saturday, November 21, 2015 | ASSIGNED TO EXAMINER |
| Wednesday, November 25, 2015 | APPLICATION FILING RECEIPT MAILED |
| Monday, November 30, 2015 | NON-FINAL ACTION WRITTEN |
| Thursday, December 3, 2015 | REFUSAL PROCESSED BY MPU |
| Thursday, December 3, 2015 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Tuesday, December 8, 2015 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Saturday, December 19, 2015 | REFUSAL PROCESSED BY IB |
| Tuesday, March 29, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, April 8, 2016 | ASSIGNED TO LIE |
| Monday, April 18, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, April 18, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, May 10, 2016 | NOTIFICATION OF NOTICE OF UNRESPONSIVE AMENDMENT - E-MAILED |
| Tuesday, May 10, 2016 | NOTICE OF UNRESPONSIVE AMENDMENT - E-MAILED |
| Tuesday, May 10, 2016 | REPORT UNRESPONSIVE AMENDMENT - COMPLETED |
| Wednesday, May 18, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, May 26, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, May 26, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, June 16, 2016 | NON-FINAL ACTION WRITTEN |
| Thursday, June 16, 2016 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, June 16, 2016 | NON-FINAL ACTION E-MAILED |
| Wednesday, June 22, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, June 23, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, June 23, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, July 15, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, July 21, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, August 2, 2016 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Wednesday, September 28, 2016 | FINAL REFUSAL WRITTEN |
| Wednesday, August 3, 2016 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Friday, August 5, 2016 | NON-FINAL ACTION WRITTEN |
| Friday, August 5, 2016 | NON-FINAL ACTION E-MAILED |
| Friday, August 5, 2016 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, September 7, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, September 7, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, September 7, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, November 30, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, September 28, 2016 | FINAL REFUSAL E-MAILED |
| Wednesday, September 28, 2016 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Thursday, September 29, 2016 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Thursday, September 29, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, September 29, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Saturday, October 22, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, October 28, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, November 16, 2016 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, November 30, 2016 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Tuesday, February 21, 2017 | REGISTERED-PRINCIPAL REGISTER |
| Sunday, May 21, 2017 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Monday, February 21, 2022 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Friday, September 8, 2023 | CANCELLED SECTION 71 |
| Tuesday, December 6, 2016 | PUBLISHED FOR OPPOSITION |
| Tuesday, December 6, 2016 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Friday, December 16, 2016 | NOTIFICATION PROCESSED BY IB |
| Tuesday, June 13, 2017 | GENERIC MADRID TRANSACTION CREATED |
| Tuesday, June 13, 2017 | GENERIC MADRID TRANSACTION SENT TO IB |
| Friday, September 15, 2017 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Wednesday, May 8, 2024 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |