| Serial Number | 79260032 |
| Word Mark | ID.8 |
| Filing Date | Friday, December 21, 2018 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, November 17, 2020 |
| Registration Number | 6197435 |
| Registration Date | Tuesday, November 17, 2020 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, June 2, 2020 |
| Goods and Services | Recorded content, namely, video recordings featuring automobiles; information technology equipment, namely, telephones; audiovisual equipment, namely, receivers; magnets; magnetizers and demagnetizers for magnetic tapes; apparatus for electricity, namely, transistors; instruments for electricity, namely, electric voltage transformers; cables for electricity; optical devices, enhancers and correctors, namely, optical condensers, binoculars, optical corrector lenses; safety, security, protection and signaling devices, namely, vehicle safety devices, namely, back-up sensors and cameras, LCD monitors for security purposes, eye covers for protective purposes, emergency warning lights; diving equipment, namely, scuba diving masks, weight belts for scuba diving, scuba snorkels, scuba goggles, regulators for use in scuba diving; navigation, guidance, tracking, targeting and map making devices, namely, navigation apparatus for vehicles, GPS navigation device; measuring, detecting and monitoring instruments, indicators and controllers, namely, instruments for detecting, monitoring and measuring two-dimensional distribution of force and pressure; measuring apparatus, namely, sizers for automobile parts; scientific research and laboratory apparatus, namely, centrifuges, homogenizers; laboratory equipment, namely, cupels; educational simulators, namely, simulators for driving or control of vehicles; scientific, nautical, surveying, photographic, cinematographic, electric weighing, measuring, signaling, checking and supervising, lifesaving apparatus and instruments, namely, spectrometers and parts and fittings therefor, navigation apparatus for boats, photographic flashbulbs, cinematographic projectors, weighing scales, rain gauges, electrical annunciators, apparatus for checking flight parameters, life-saving rafts; contact lenses; spectacles; spectacle cases; magnifying glasses; sunglasses; vehicle breakdown warning triangles; vehicle breakdown warning lamps other than parts of vehicles; electric batteries and replacement parts therefor; electric accumulators and replacement parts therefor; fuel cells and replacement parts therefor; solar batteries; electric batteries for vehicles; electric accumulators for vehicles; chargers for electric batteries; burglar alarms; fire alarms; smoke alarms; gas alarms; theft alarms; fire extinguishing apparatus; scales; spirit levels; compasses, namely, directional compasses; fuel gauges; measuring instruments in the nature of rulers; acid hydrometers; electronic controllers and power and voltage stabilizing supply units for vehicle headlights; light emitting diodes (LEDs); electronic power controllers; electrical and electronic controllers and instruments for controlling automobiles; simulators for the steering and control of vehicles; voltage regulators for vehicles; speed indicators; revolution counters, namely, tachometers; measuring apparatus and instruments, namely, distance measuring apparatus; life-saving apparatus and equipment, namely, life-saving rafts, fire escape ladders, safety nets, safety tarpaulins, life belts, life buoys and life jackets; electrical fuses; fuses for automobiles; electric relays; lasers not for medical purposes; laser pointers; electronic key fobs being remote control apparatus; aerials; navigation apparatus for vehicles, namely, onboard computers; mobile telephones; telephone apparatus; television apparatus, namely, television apparatus for projection purposes; video telephones; radios; satellite navigation systems, namely, global positioning systems (GPS) and satellite-aided navigation systems; electric navigational instruments; telematic apparatus, namely, GPS tracking devices for vehicles; telematics terminal apparatus, namely, wireless Internet devices for tracking vehicles; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity, namely, semiconductor wafers, electric circuit switches, electrical transformers, electric accumulators, voltage regulators for electric power, electrical controllers; apparatus for recording, transmission and/or reproduction of sound and images; magnetic, electronic and optical data carriers, namely, hard disk drives, blank USB flash drives, blank optical data carriers and optical disks featuring music; phonograph records featuring music; blank audio video compact discs; audio-video compact discs featuring music; blank recordable DVDs; DVDs featuring vehicle safety information; digital recording apparatus, namely, digital voice recorders; sound carriers, namely, audio speakers; coin operated jukeboxes; compact discs, namely, CD-ROMs featuring music; blank recordable compact discs; downloadable music files; audio headphones; loudspeakers and cabinets for loudspeakers; illuminated signs, namely, illuminated exit signs; compact disc players; DVD players; phototelegraphy apparatus; slide and photograph projection apparatus; exposed camera films; cinematographic cameras; photocopiers; computer-based electronic translation apparatus, namely, electronic pocket translators; encoded magnetic cards for use as electronic tickets; integrated circuit cards, namely, encoded smart cards containing programming used for controlling and operating vehicles; encoded telephone cards, namely, pre-paid telephone calling cards, magnetically encoded; mechanisms for coin-operated apparatus; automatic banking machines, namely, automated teller machines; cash registers; calculators; data processing apparatus; computers; electronic agendas, namely, calendars and organizers; facsimile apparatus; computer monitors; computer peripheral devices; recorded and downloadable computer software for use in database management and for use in the autonomous navigation of vehicles; computer application software for operating vehicles, namely, software for use in database management and for use in the autonomous navigation of vehicles; * all the above goods are not related to video games; * pocket calculators; downloadable electronic publications in the nature of magazines in the field of automobiles; downloadable image files containing images of automobiles; crash test dummies; microscopes; electric sockets, plugs and contacts; electric igniting apparatus for igniting at a distance, namely, keyless ignition switch system for automotive vehicles comprised of a microprocessor, electronic signal receiver, and key fob with electronic signal transponder; radioactivity measuring apparatus for industrial purposes; protective helmets; electric locks; electronic controllers and electronic control systems for controlling automobiles, engines and machines; none of the aforesaid goods in connection with rail vehicles or the discrete manufacturing and process industry * ; none of the aforesaid goods in connection with model vehicle batteries, model vehicle battery chargers, or electrical adapter/connector components for model vehicles * |
| Certificate of Correction for Registration | In the statement, Class 9 and 28, has been updated in accordance with the F-note dated 12/14/2023. |
| Goods and Services | Scale model vehicles, namely, scale model cars * ; excluding powered or motorized model vehicles, parts or accessories * [ ; toy vehicles; scooters (toys for children); scale model automobiles, namely, scale model cars, excluding powered or motorized model vehicles, parts or accessories * ] * ; all the above goods are not related to electronic games or video games * |
| Pseudo Mark | ID.EIGHT |
| Goods and Services | Modification, repair, dismantling, maintenance and care of vehicles; vehicle breakdown repair services; vehicle maintenance; vehicle cleaning; rubber and synthetic tire repair; none of the aforesaid goods in connection with rail vehicles |
| Certificate of Correction for Registration | In the statement, Class 28, has been updated per the F-note dated 4/15/2024. |
| Goods and Services | Retail store services and wholesale store services featuring motor vehicles; retail store services and wholesale store services, and mail order services featuring motor vehicles; arranging, for others, for the buying and selling of motor vehicles |
| Goods and Services | Cars; motors, engines and drive motors for land vehicles |
| 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 | Monday, June 17, 2019 |
| 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 | 6 - Active |
| Class Status Date | Monday, June 17, 2019 |
| Primary Code | 012 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 028 - Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees. |
| US Class Codes | 022, 023, 038, 050 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, June 17, 2019 |
| Primary Code | 028 |
| 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 | Monday, June 17, 2019 |
| 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 | Monday, June 17, 2019 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Volkswagen Aktiengesellschaft |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 09 - Joint Stock Company |
| Address | Wolfsburg 38440 DE |
| Party Name | Volkswagen Aktiengesellschaft |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 09 - Joint Stock Company |
| Address | Wolfsburg 38440 DE |
| Party Name | Volkswagen Aktiengesellschaft |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 09 - Joint Stock Company |
| Address | Wolfsburg 38440 DE |
| Event Date | Event Description |
| Thursday, June 6, 2019 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Friday, June 14, 2019 | LIMITATION FROM ORIGINAL APPLICATION ENTERED |
| Monday, June 17, 2019 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, June 17, 2019 | ASSIGNED TO EXAMINER |
| Tuesday, June 18, 2019 | NON-FINAL ACTION WRITTEN |
| Wednesday, June 19, 2019 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Friday, June 21, 2019 | APPLICATION FILING RECEIPT MAILED |
| Monday, July 1, 2019 | REFUSAL PROCESSED BY MPU |
| Monday, July 1, 2019 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Friday, July 19, 2019 | REFUSAL PROCESSED BY IB |
| Friday, July 26, 2019 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, July 31, 2019 | ASSIGNED TO LIE |
| Monday, August 5, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, August 5, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, October 17, 2019 | FINAL REFUSAL WRITTEN |
| Thursday, October 17, 2019 | FINAL REFUSAL E-MAILED |
| Thursday, October 17, 2019 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Tuesday, March 24, 2020 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Tuesday, March 24, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, March 25, 2020 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, April 27, 2020 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, May 13, 2020 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, May 13, 2020 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, May 13, 2020 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, May 29, 2020 | NOTIFICATION PROCESSED BY IB |
| Tuesday, June 2, 2020 | PUBLISHED FOR OPPOSITION |
| Tuesday, June 2, 2020 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, June 30, 2020 | EXTENSION OF TIME TO OPPOSE RECEIVED |
| Sunday, October 11, 2020 | EXTENSION OF TIME TO OPPOSE PROCESS - TERMINATED |
| Wednesday, November 11, 2020 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Wednesday, November 11, 2020 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Tuesday, November 17, 2020 | REGISTERED-PRINCIPAL REGISTER |
| Saturday, November 28, 2020 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Wednesday, February 17, 2021 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Friday, February 26, 2021 | FINAL DISPOSITION PROCESSED |
| Friday, February 26, 2021 | FINAL DISPOSITION NOTICE SENT TO IB |
| Sunday, April 4, 2021 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Sunday, October 22, 2023 | LIMITATION OF GOODS RECEIVED FROM IB |
| Thursday, December 14, 2023 | CORRECTION UNDER SECTION 7 - PROCESSED |
| Thursday, December 14, 2023 | LIMITATION FROM THE IB EXAMINED AND ENTERED |
| Saturday, January 6, 2024 | LIMITATION OF GOODS RECEIVED FROM IB |
| Tuesday, January 16, 2024 | NOTICE OF UPDATED REGISTRATION CONFIRMATION EMAILED |
| Tuesday, January 16, 2024 | NOTICE OF UPDATED REGISTRATION CONFIRMATION EMAILED |
| Monday, January 22, 2024 | NOTICE OF UPDATED REGISTRATION CONFIRMATION EMAILED |
| Thursday, April 18, 2024 | LIMITATION FROM THE IB EXAMINED AND ENTERED |
| Thursday, April 18, 2024 | CORRECTION UNDER SECTION 7 - PROCESSED |
| Tuesday, May 21, 2024 | NOTICE OF UPDATED REGISTRATION CONFIRMATION EMAILED |
| Thursday, August 15, 2024 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Wednesday, August 28, 2024 | INVALIDATION REVIEWED - NO ACTION REQUIRED BY OFFICE |