| Serial Number | 85509286 |
| Word Mark | IT'S WHAT'S INSIDE THAT COUNTS |
| Filing Date | Thursday, January 5, 2012 |
| Status | 710 - CANCELLED - SECTION 8 |
| Status Date | Friday, March 15, 2024 |
| Registration Number | 4396947 |
| Registration Date | Tuesday, September 3, 2013 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, October 30, 2012 |
| Goods and Services | Chemical processing management services for others in the fields of chemical processing, metalworking and steelworking, namely, on-site observation and monitoring of chemical processing, consulting services in the field of waste reduction, management of the recycling of waste from such processing, and providing technical consultation in the field of chemical processing |
| Goods and Services | Industrial lubricants for metalworking and metal casting; lubricating compositions, namely, industrial lubricants for casting dies; lubricating oils and greases for use in the working, rolling, grinding, cutting, finishing, and coating of metals; lubricating oils and greases containing chemically transformed petroleum derived hydrocarbons and mixtures of hydrocarbons used in rolling of metals as lubricant, protector, and cleaning agent during manufacturing, processing, or fabricating of steel or metal; lubricants for rolling and forming of ferrous and non-ferrous metals; lubricants for use in the hot rolling of aluminum sheet and plate |
| Goods and Services | Cleaning preparations, namely, industrial cleaners for metals and metal surfaces |
| Pseudo Mark | IT IS WHAT IS INSIDE THAT COUNTS |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Rust preventatives in the nature of a coating; anti-rust greases and oils; all the foregoing for use in the primary metals industry, namely, by manufacturers of ferrous and non-ferrous metals, and by manufacturers of metal products; anti-corrosion thin-film coatings for application to metals and metal surfaces |
| Goods and Services | Chemical processing management services for others in the fields of chemical processing, metalworking and steelworking, namely, chemical procurement of industrial chemicals, inventory management and control, providing business consultation and advice in the fields of chemical processing and management thereof, and business consultation services in the field of chemical process optimization |
| Goods and Services | Industrial chemicals; hydraulic fluid; fire-resistant hydraulic fluid; mold release preparations; coolants for use in metalworking; coolants for use in drawing, forming, stamping and blankwashing operations on metal surfaces; chemical preparations in the nature of bonding agents for fibrous materials, pigments, cements, paper, leather, textiles, and metals; chemical dust suppressant preparations that are not petroleum, oil or grease-based, namely, dust suppressing chemicals in liquid form for use with or on unpaved roads, mineral stockpiles, conveyors, embankments and piles, and mine surfaces; hygroscopic chemicals and other chemical preparations, namely, dust suppressing chemicals that are not petroleum, oil, or grease-based for absorbing and suppressing dust and airborne soil particulates; chemical preparations for cleaning purposes for use in metalworking |
| Goods and Services | Chemical processing management services for others in the fields of chemical processing, metalworking and steelworking, namely, preparation of material safety data sheet and environmental and occupational and safety compliance reports |
| International Class | 001 - Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. |
| US Class Codes | 001, 005, 006, 010, 026, 046 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 001 |
| First Use Anywhere Date | Monday, June 25, 2012 |
| First Use In Commerce Date | Sunday, September 9, 2012 |
| International Class | 002 - Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. |
| US Class Codes | 006, 011, 016 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 002 |
| First Use Anywhere Date | Monday, June 25, 2012 |
| First Use In Commerce Date | Sunday, September 9, 2012 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 003 |
| First Use Anywhere Date | Monday, June 25, 2012 |
| First Use In Commerce Date | Sunday, September 9, 2012 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 004 |
| First Use Anywhere Date | Monday, June 25, 2012 |
| First Use In Commerce Date | Sunday, September 9, 2012 |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 035 |
| First Use Anywhere Date | Monday, June 25, 2012 |
| First Use In Commerce Date | Sunday, September 9, 2012 |
| International Class | 040 - Treatment of materials. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 040 |
| First Use Anywhere Date | Monday, June 25, 2012 |
| First Use In Commerce Date | Sunday, September 9, 2012 |
| 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 | 2 - Sec. 8 - Entire Registration |
| Class Status Date | Friday, March 15, 2024 |
| Primary Code | 045 |
| First Use Anywhere Date | Monday, June 25, 2012 |
| First Use In Commerce Date | Sunday, September 9, 2012 |
| Party Name | Quaker Chemical Corporation |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Wilmington, DE 198091374 |
| Party Name | Quaker Chemical Corporation |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Wilmington, DE 198091374 |
| Party Name | Quaker Chemical Corporation |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Wilmington, DE 198091374 |
| Event Date | Event Description |
| Friday, March 15, 2024 | CANCELLED SEC. 8 (10-YR)/EXPIRED SECTION 9 |
| Saturday, September 3, 2022 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |
| Wednesday, July 1, 2020 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED |
| Wednesday, July 1, 2020 | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Monday, January 6, 2020 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Monday, September 23, 2019 | POST REGISTRATION ACTION MAILED - SEC. 8 & 15 |
| Wednesday, September 18, 2019 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Monday, August 12, 2019 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Monday, August 12, 2019 | TEAS SECTION 8 & 15 RECEIVED |
| Monday, September 3, 2018 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Tuesday, January 7, 2014 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, January 7, 2014 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Tuesday, September 17, 2013 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, September 17, 2013 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Tuesday, September 3, 2013 | REGISTERED-PRINCIPAL REGISTER |
| Saturday, July 27, 2013 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Saturday, July 27, 2013 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Friday, July 26, 2013 | LAW OFFICE REGISTRATION REVIEW COMPLETED |
| Friday, July 26, 2013 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Friday, July 26, 2013 | STATEMENT OF USE PROCESSING COMPLETE |
| Tuesday, June 25, 2013 | USE AMENDMENT FILED |
| Friday, July 26, 2013 | SOU EXTENSION 1 GRANTED |
| Tuesday, June 25, 2013 | SOU EXTENSION 1 FILED |
| Wednesday, July 24, 2013 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Tuesday, June 25, 2013 | SOU TEAS EXTENSION RECEIVED |
| Tuesday, June 25, 2013 | TEAS STATEMENT OF USE RECEIVED |
| Tuesday, December 25, 2012 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Tuesday, October 30, 2012 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, October 30, 2012 | PUBLISHED FOR OPPOSITION |
| Wednesday, October 10, 2012 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, September 26, 2012 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, September 25, 2012 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, September 25, 2012 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, September 25, 2012 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, September 14, 2012 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, March 16, 2012 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Friday, March 16, 2012 | NON-FINAL ACTION E-MAILED |
| Friday, March 16, 2012 | NON-FINAL ACTION WRITTEN |
| Thursday, March 8, 2012 | ASSIGNED TO EXAMINER |
| Thursday, February 9, 2012 | PRELIMINARY/VOLUNTARY AMENDMENT - ENTERED |
| Tuesday, February 7, 2012 | ASSIGNED TO LIE |
| Friday, January 27, 2012 | TEAS VOLUNTARY AMENDMENT RECEIVED |
| Wednesday, January 11, 2012 | NOTICE OF PSEUDO MARK MAILED |
| Tuesday, January 10, 2012 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, January 9, 2012 | NEW APPLICATION ENTERED |