| Serial Number | 79179970 |
| Word Mark | INSTITUTO ESPAÑOL DESDE 1903 |
| Filing Date | Friday, October 30, 2015 |
| Status | 706 - SECTION 71 ACCEPTED |
| Status Date | Thursday, January 19, 2023 |
| Registration Number | 5088882 |
| Registration Date | Tuesday, November 29, 2016 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, September 13, 2016 |
| Description of Mark | The mark consists of the wording "INSTITUTO" above the wording "ESPAÑOL", above the smaller wording "DESDE 1903", all appearing on a shaded background with a shaded wavy border along the bottom. |
| Pseudo Mark | INSTITUTO ESPAÑOL DESDE NINETEEN HUNDRED THREE |
| Goods and Services | [ Essential oils and aromatic extracts in the nature of oils; ] non-medicated toiletries; cleansing and aromatic preparations, namely, [ cleansing milk, aromatic creams, ] aromatic body lotions [, aromatic body sprays, aromatic shower gels, aromatic cuticle creams, aromatic shampoo, aromatic conditioner, aromatic non-medicated soap, aromatic body polish, aromatic body and foot scrub, cleansing creams, cleansing milk, feminine hygiene cleansing towelettes; skin abrasive preparations; essential oils; oils for perfumes and scents; aromatic oils; distilled oils for beauty care; mixed essential oils ] ; non-medicated oils, namely, [ essential oils, perfume oils, ] cosmetic oils, body oils, bath oils, massage oils; non-medicated skin care oils; scented oils; [ perfumed oils for the manufacture of cosmetic preparations; aromatherapy preparations, namely, essential oils for aromatherapy use; perfumery and fragrances; ] preparations for cleaning and care of the body, namely, [ cleansing milk, body lotion, ] body cream, body oil [, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, non-medicated salves, soap, body polish, body and foot scrub and non-medicated foot cream; mouth wash products; eau de parfum; toilet water; scented linen water; aromatics, namely, aromatic oils; bases for flower perfumes, namely, oils for perfumes and scents, flower essences, perfume extracts for perfumes, essential oils; eau de cologne; perfume extracts for tissues and perfumes; body deodorants in the nature of perfumery; perfumed creams; aromatherapy creams, namely, non-medicated skin creams with essential oils for use in aromatherapy; fragrances; perfumes; perfumery; ] deodorants [ and antiperspirants; bath soaps and gels; bath preparations, not for medical purposes; cosmetic preparations for skin care; non-medicated hair preparations and treatments for cosmetic purposes; make-up; products for hair removal and shaving, namely, hair removing creams, shaving preparations, shaving balms, shaving creams, shaving foams, shaving gels, shaving lotions, shaving mousse, shaving soaps, shaving spritz in the nature of a moisturizing solution for shaving; make-up ] ; non-medicated beauty preparations [ ; cleaning preparations for personal use, namely, all-purpose cleaners; cosmetics ] |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Translation of Words in Mark | The English translation of "INSTITUTO ESPAÑOL DESDE 1903" is "Spanish institute from 1903". |
| Disclaimer with Predetermined Text | "INSTITUTO ESPAÑOL DESDE 1903" |
| International Class | 003 - Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. |
| US Class Codes | 001, 004, 006, 050, 051, 052 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, January 6, 2016 |
| Primary Code | 003 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Instituto Español, S.A. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Hinojos (Huelva) E-21740 ES |
| Party Name | Instituto Español, S.A. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | ES |
| Party Name | Instituto Español, S.A. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | ES |
| Event Date | Event Description |
| Monday, October 23, 2023 | PARTIAL INVALIDATION PROCESSED BY THE IB |
| Tuesday, September 26, 2023 | PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Tuesday, September 26, 2023 | INVALIDATION PROCESSED |
| Tuesday, September 19, 2023 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Thursday, January 19, 2023 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Thursday, January 19, 2023 | REGISTERED-SEC.71 ACCEPTED |
| Wednesday, January 18, 2023 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Wednesday, January 18, 2023 | PROOF OF USE INTERIM ACTION ISSUED |
| Tuesday, January 17, 2023 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Tuesday, October 4, 2022 | INVALIDATION REVIEWED - NO ACTION REQUIRED BY OFFICE |
| Sunday, September 18, 2022 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Tuesday, July 19, 2022 | OFFICE ACTION ISSUED POU2 |
| Friday, July 15, 2022 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Tuesday, January 18, 2022 | OFFICE ACTION ISSUED POU1 |
| Monday, January 17, 2022 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Wednesday, December 1, 2021 | TEAS SECTION 71 RECEIVED |
| Friday, August 4, 2017 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, March 6, 2017 | GENERIC MADRID TRANSACTION SENT TO IB |
| Monday, March 6, 2017 | GENERIC MADRID TRANSACTION CREATED |
| Tuesday, February 28, 2017 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, November 29, 2016 | REGISTERED-PRINCIPAL REGISTER |
| Friday, October 28, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, September 13, 2016 | PUBLISHED FOR OPPOSITION |
| Wednesday, August 24, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, August 24, 2016 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, August 24, 2016 | NOTICE OF PUBLICATION |
| Tuesday, August 9, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, August 3, 2016 | ASSIGNED TO LIE |
| Sunday, July 24, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, July 20, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, July 20, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, July 20, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Saturday, March 19, 2016 | REFUSAL PROCESSED BY IB |
| Monday, February 29, 2016 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Monday, February 29, 2016 | REFUSAL PROCESSED BY MPU |
| Monday, February 29, 2016 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Sunday, February 28, 2016 | NON-FINAL ACTION WRITTEN |
| Tuesday, February 23, 2016 | ASSIGNED TO EXAMINER |
| Tuesday, January 12, 2016 | APPLICATION FILING RECEIPT MAILED |
| Wednesday, January 6, 2016 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Sunday, January 3, 2016 | SN ASSIGNED FOR SECT 66A APPL FROM IB |