| Serial Number | 79224390 |
| Word Mark | DORMAKABA |
| Filing Date | Tuesday, November 8, 2016 |
| Status | 708 - PARTIAL SECTION 71 & 15 ACCEPTED AND ACKNOWLEDGED |
| Status Date | Monday, May 6, 2024 |
| Registration Number | 5494768 |
| Registration Date | Tuesday, June 19, 2018 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, April 3, 2018 |
| Goods and Services | [ Key cutting services; reproduction of replacement keys ] |
| Translation of Words in Mark | The wording "DORMAKABA" has no meaning in a foreign language. |
| Description of Mark | The mark consists of the term "DORMAKABA" in lower case letters and a design element representing a crown consisting of three stacked triangles of various sizes immediately to the right of the wording. |
| Goods and Services | Apparatus and instruments for conducting, switching, transforming; accumulating, regulating or controlling electricity, namely, power supply, electronic switches, electronic door position sensors, electronic power transfer devices, electronic timers and relays, electronic motion sensors, and electronic strikes plates for monitoring of doors with respect to access and exits; apparatus for recording, transmission or reproduction of sound or images; blank magnetic recording media; blank sound recording disks; blank compact discs, DVDs and other digital recording media and data carriers; mechanisms for coin-operated apparatus; cash registers; calculating machines; equipment for data processing and computers; computer peripherals; computer accessories, namely, monitors, touchscreens, scanners, hard disk drives, headphones, microphones, keyboards, computer mice, remote controls for use with access systems, doors, partitions, physical access control apparatus and turnstiles; software for workforce management and access control; fire-extinguishers; identification systems, namely, installations for access control comprised of computer interface boards, embedded access control application software, access control and alarm monitoring systems comprised of electronic control panels, computer monitors, transmitters and data transmission receivers, electronic sensors, video cameras which transmit images through cable or wireless connection to monitors, and data transmission receivers, alarm pull stations, audible and visible notification appliances, strobes, sirens, bells, horns for loudspeaker and speakers, computer programs for the enabling of access and entrance control, data access port for use with electrical control panels for connecting multiple data and electrical devices, facilities management software, namely, software to control building environment, access and security systems, power access port for use with electrical control panels for connecting multiple data and electrical devices and equipment and apparatus for personal identification, namely, data readers for processing data, central processing units and time recording apparatus; security control apparatus, installations and equipment composed thereof, namely, computer monitors, transmitters and data transmission receivers, electronic sensors, chip cards, electronic, optical, smart card and RFTD readers, video systems comprising video cameras which transmit images through cable or wireless connection to monitors, and data transmission receivers, alarm pull stations, audible and visible notification appliances, strobes, sirens, bells, horns for loudspeakers and speakers, scanners, hard disk drives, headphones, keyboards, fingerprint scanners, personal security alarms, security control panels and motion detectors; video surveillance systems, comprised of video surveillance installations of video cameras which transmit images through cable or wireless connection to monitors, transmitters and data transmission receivers; apparatus, equipment and installations for access control, namely, safety installations for locking and access operating by means of electronic, electric, visual and acoustic systems, comprised of computer monitors, transmitters and data transmission receivers, electronic sensors, chip card, electronic, optical, smart card and RFID readers, video systems comprised of electronic control panels, computer monitors, transmitters and data transmission receivers, electronic sensors, video cameras which transmit images through cable or wireless connection to monitors, and cable or wireless connection to monitors, and data transmission receivers, alarm pull stations, audible and visible notification appliances, strobes, sirens, bells, horns for loudspeakers and speakers, scanners, hard disk drives, headphones, keyboards, fingerprint scanners, personal security alarms, security control panels and motion detectors; video surveillance systems, comprised of video surveillance installations of video cameras which transmit images through cable or wireless connection to monitors, transmitters and data transmission receivers; apparatus, equipment and installations for access control, namely, safety installations for locking and access operating by means of electronic, electric, visual and acoustic systems, comprised of computer monitors, transmitters and data transmission receivers, electronic sensors, chip card, electronic, optical, smart card and RFID readers, video systems comprised of electronic control panels, computer monitors, transmitters and data transmission receivers, electronic sensors, video cameras which transmit images through cable or wireless connection to monitors, and access control for automatic ticket dispensers made of electronic locks and software for operating locks; electric control and regulating apparatus for doors, gates and partitions; electronic apparatus for switching, controlling, monitoring and control of locks for windows and doors; electric locks; electric locks for vehicles; electronic and magnetic identity cards, namely, magnetic and encoded cards, encoded identification cards and magnetic identification cards; commutators; semi-conductors; transponders; intercoms; electricity distribution boxes; electricity junction boxes; alarms for smoke, fire and access control systems; smoke detectors; control devices for moving doors, gates and conveyors |
| Goods and Services | Rigid pipes for buildings, not of metal; transportable buildings not of metal; non-metallic doors, namely, sliding doors, revolving doors, folding doors, carousel doors; non-metal partitions for building |
| Goods and Services | Machines for operating doors, windows, partitions, physical access control apparatus; motors and engines other than for land vehicles; machine couplings and transmission components other than for land vehicles; conveyors; belts for conveyors; automatic distribution machines; electric, hydraulic and/or pneumatic door openers and door closers; electric, pneumatic and hydraulic engines other than for land vehicles; hydraulic pumps; elevators; compressed air pumps and compressed air engines other than for land vehicles; engines and gearboxes, other than for land vehicles, and control devices for moving doors, gates and conveyors; engine parts, gears and control devices for moving doors, gates and conveyor systems, namely, linkages, control levers machines and machine tools for operating doors, windows, partitions, physical access control apparatus, self-boarding gates; parts of engines, gears and control devices for moving doors, gates and conveyor systems, namely, linkages, control levers |
| Goods and Services | Building materials of metal, namely, architectural door pulls, handles and lock sets for glass doors; building materials of metal, namely, fittings for glass doors; transportable buildings of metal; ironmongery and small items of metal hardware, namely, hinges, handles and locks; pipes of metal; metal safes and containers, namely, safes and safety deposit boxes for valuables; fittings of metal for windows, doors, partitions, physical access control apparatus; non-electric metal locks, namely, locks; non-electric metal security locks for vehicles; metal keys, namely, keys and key rings for vehicles; doors, gates and building parts of metal doors, namely, sliding doors, revolving doors, folding doors, carousels; metal turnstiles being parts of revolving doors; non-electric door openers and non-electric door closers; door stops of metal; metal door fittings, namely, door hinges, handles, locks and strike plates, handle sets; metal fittings for windows and furniture; metal parts for all glass installations, namely, locks and lock cases, strike plates, handles, door knobs, grip bars, screw fasteners, clamp fittings, structural joint connectors of metal, protective fittings; metal fittings for windows and metal furniture; metal partitions for building, namely, mobile walls and partitions with fixed and mobile individual elements, horizontal sliding doors, position walls and folding partitions |
| Goods and Services | Building construction; installation and repair of doors, gates, windows and room partition system; installation, commissioning, maintenance and repairing of doors, gates, windows and partition systems; installation, commissioning, maintenance and repair of anti- theft or fire alarm systems; installation, commissioning, maintenance and repair of time recording devices and access control installations |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Advertising; business management; business administration; providing office functions; development of advertising concepts and marketing concepts; organizing and conducting of advertising events; business management and organization consultancy; retail and wholesale store services featuring doors, gates, products related to opening and closing and securing of doors as well as time recording and access authorization of people |
| Goods and Services | [ Anti-theft protection and anti-theft alarms for vehicles ] |
| Goods and Services | Security services for the protection of material assets and persons; security consultancy in the field of security, locking and access control installations |
| Goods and Services | [ Non metallic door fittings ] |
| Goods and Services | Technical research project studies, in the field of security, locking and access installations; technical planning of devices and access control installations, access control devices and access control installations, installations for recording time and access monitoring systems, and diagnostic apparatus; programming of microelectronic circuits for keys and other data carriers; programming of security systems for third parties; design and development of computers and software; design and development of computer software in the field of security, locking and access; design and development of computer software for controlling machines, terminals, access control systems and time recording systems; design and development of micro-computers, high-frequency circuits, optoelectronic, apparatus and systems for power supply |
| International Class | 040 - Treatment of materials. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | G - NOT AVAILABLE |
| Class Status Date | Monday, May 6, 2024 |
| Primary Code | 040 |
| 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 | Thursday, January 11, 2018 |
| 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 | Thursday, January 11, 2018 |
| Primary Code | 007 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 009 - Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus. |
| US Class Codes | 021, 023, 026, 036, 038 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, January 11, 2018 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 012 - Vehicles; apparatus for locomotion by land, air, or water. |
| US Class Codes | 019, 021, 023, 031, 035, 044 |
| Class Status Code | G - NOT AVAILABLE |
| Class Status Date | Monday, May 6, 2024 |
| Primary Code | 012 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Thursday, January 11, 2018 |
| 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 | G - NOT AVAILABLE |
| Class Status Date | Monday, May 6, 2024 |
| 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 | Thursday, January 11, 2018 |
| 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 | Thursday, January 11, 2018 |
| Primary Code | 037 |
| 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 | Thursday, January 11, 2018 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 045 - Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, January 11, 2018 |
| Primary Code | 045 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | dormakaba International Holding AG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 09 - Joint Stock Company |
| Address | Rümlang 8153 CH |
| Party Name | dormakaba International Holding AG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 09 - Joint Stock Company |
| Address | CH |
| Party Name | dormakaba International Holding AG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 09 - Joint Stock Company |
| Address | CH |
| Event Date | Event Description |
| Thursday, January 11, 2018 | ASSIGNED TO EXAMINER |
| Thursday, January 4, 2018 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Wednesday, January 10, 2018 | LIMITATION FROM ORIGINAL APPLICATION ENTERED |
| Thursday, January 11, 2018 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, January 16, 2018 | APPLICATION FILING RECEIPT MAILED |
| Saturday, January 20, 2018 | NON-FINAL ACTION WRITTEN |
| Sunday, January 21, 2018 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Saturday, January 27, 2018 | REFUSAL PROCESSED BY MPU |
| Saturday, January 27, 2018 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Wednesday, February 14, 2018 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, February 23, 2018 | ASSIGNED TO LIE |
| Friday, February 23, 2018 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, February 23, 2018 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, February 23, 2018 | EXAMINERS AMENDMENT -WRITTEN |
| Friday, February 23, 2018 | EXAMINERS AMENDMENT E-MAILED |
| Friday, February 23, 2018 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Friday, February 23, 2018 | EXAMINER'S AMENDMENT ENTERED |
| Saturday, February 24, 2018 | REFUSAL PROCESSED BY IB |
| Thursday, March 1, 2018 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, March 8, 2018 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Wednesday, March 14, 2018 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, April 3, 2018 | PUBLISHED FOR OPPOSITION |
| Tuesday, April 3, 2018 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Friday, May 11, 2018 | CORRECTION TRANSACTION RECEIVED FROM IB |
| Friday, June 1, 2018 | CORRECTION FROM THE IB EXAMINED, NO ACTION IS NEEDED |
| Tuesday, June 19, 2018 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, September 19, 2018 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Wednesday, September 26, 2018 | FINAL DISPOSITION PROCESSED |
| Wednesday, September 26, 2018 | FINAL DISPOSITION NOTICE SENT TO IB |
| Friday, October 12, 2018 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Wednesday, April 28, 2021 | NOTICE OF SUIT |
| Tuesday, May 4, 2021 | NOTICE OF SUIT |
| Monday, June 19, 2023 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Thursday, September 7, 2023 | NOTICE OF SUIT |
| Thursday, September 7, 2023 | TEAS SECTION 71 & 15 RECEIVED |
| Monday, May 6, 2024 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Monday, May 6, 2024 | REGISTERED - PARTIAL SEC. 71 ACCEPTED & SEC. 15 ACK. |
| Monday, May 6, 2024 | NOTICE OF ACCEPTANCE OF SEC. 71 & 15 - E-MAILED |
| Tuesday, June 4, 2024 | NOTICE OF SUIT |
| Wednesday, September 11, 2024 | NOTICE OF SUIT |
| Wednesday, September 11, 2024 | NOTICE OF SUIT |
| Wednesday, September 11, 2024 | NOTICE OF SUIT |
| Friday, September 20, 2024 | NOTICE OF SUIT |
| Friday, September 20, 2024 | NOTICE OF SUIT |
| Friday, September 20, 2024 | NOTICE OF SUIT |
| Friday, September 20, 2024 | NOTICE OF SUIT |
| Friday, September 20, 2024 | NOTICE OF SUIT |
| Friday, September 20, 2024 | NOTICE OF SUIT |
| Monday, September 30, 2024 | NOTICE OF SUIT |
| Monday, September 30, 2024 | NOTICE OF SUIT |
| Monday, September 30, 2024 | NOTICE OF SUIT |