| Serial Number | 86916644 |
| Word Mark | JAMESHARDIE |
| Filing Date | Tuesday, February 23, 2016 |
| Status | 702 - SECTION 8 & 15 - ACCEPTED AND ACKNOWLEDGED |
| Status Date | Monday, June 5, 2023 |
| Registration Number | 5089776 |
| Registration Date | Tuesday, November 29, 2016 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, September 13, 2016 |
| Goods and Services | Non-metal construction materials, namely, boards, panels, soffits, fascia, planks, siding, cladding; non-metal construction materials, namely, boards, panels, soffits, fascia, planks, siding, cladding having pre-applied finish coatings, paint coatings, or stain coatings; non-metal construction materials, namely, flooring underlayment; non-metal underlayment and cement composite boards for countertops, walls and ceilings; building and construction material composed primarily of nonmetal materials, namely, engineered cement composite trim, fascia, panels, planks, soffits, cladding, siding and boards; building and construction material composed primarily of nonmetal materials, namely, fiber-reinforced cement composite trim, fascia, panels, planks, soffits, cladding, siding and boards; building and construction material composed primarily of nonmetal materials, namely, [ polymer composite trim, ] fascia, panels, planks, soffits, cladding, siding and boards; non-metal architectural mouldings and finish trim; non-metal building flashing; non-metal roof flashing; seam tape for building; tape, namely, seam tape, which is made out of polypropylene coated with an adhesive and used to join barrier materials and cover wall, attic, and other areas of outside building structures; environmental control barriers, namely, fabric wall systems used for environmental separation and containment in industrial and commercial applications |
| Goods and Services | Blades for power tools; power saw blades; dry cutting power saw blades for engineered cement composite building materials |
| Name/Portrait Description and/or Consent Statement | The name "JAMES HARDIE" does not identify a living individual. |
| Goods and Services | Metal building flashing; metal fasteners, namely, [ bolts, ] nails, [ nuts, rivets, ] screws, and ballistic fasteners; metal trim for buildings; metal building materials, namely, metal tab fasteners for attaching trim, belly boards and frieze boards |
| Goods and Services | Non-woven, non-perforated polyolefin barriers used in the construction industry as a water vapor barrier, moisture barrier, and air infiltration barrier to protect and cover building structures; weatherizing membranes and vapor barrier; plastic sheeting used in the construction industry as a vapor barrier; laminated vapor barrier; Sheets of plastic fabric used as an insulating infiltration barrier in building construction |
| Goods and Services | Building construction, remodeling and repair; painting services; construction planning services; general building contractor services; installation services for wallboards, siding, roofing, walls, windows, and doors; construction project management services; consultation in the field of construction, maintenance and renovation of property; consultation in the field of installation, maintenance, and repair of wallboards, siding, roofing, walls, windows, and doors; construction planning; maintenance and renovation of property; website providing information on building construction, construction planning, and renovation; Building construction information provided online; construction information provided via the Internet; information provided to member businesses in a membership club in the field of construction, namely, regarding installation best practices for home and commercial contracting and construction services; customer support services for dealers, distributors, builders and other trade professionals for answering questions related to product information, product installation, and providing installation guidance and support services in the field of building and construction; customer support services for dealers, distributors, builders and other trade professionals in the nature of information provision in the field of installation of building and construction materials; customer support services in the nature of help desk services related to the installation of products in the field of building and construction; customer support services and help desk services, namely, providing information about the installation of construction materials; providing information to customers regarding the installation of building and construction products; technical support services, namely, troubleshooting and technical consultation regarding the installation of building and construction products |
| Pseudo Mark | JAMES HARDIE |
| Goods and Services | Paints; coatings, namely, stains, primers, sealers, [ varnishes, ] clear finishes, and colored stains for exterior and interior use on a variety of substrates; paints, primers, sealers, stains, clear finishes and colored stains for non-metal building materials, [ polymer composite materials, ] fiber cement materials [, and fiberglass materials ] |
| Goods and Services | Advertising, marketing and promotion services; promoting the sale of building and construction products through the distribution of printed promotional materials of others, by providing hypertext links to the websites of dealers, suppliers and distributors of building and construction products, by preparation of custom advertisements and custom promotional products in the nature of branded apparel of others, and by providing sales promotion consultation; advertising, marketing, and promotional services in the nature of an online web portal that connects customers to the products and services of others; electronic commerce services, namely, providing information online about products and services for advertising and sales purposes; business advisory services and consultancy related to the selection and purchase of goods; cost-price analysis; administrative processing of purchase orders; online retail store services featuring building and construction materials, apparel, banners, signage, and custom-made marketing and promotional goods for businesses; marketing services to promote the sale of building and construction materials; marketing services to promote the sale of services of others; providing cooperative advertising and marketing services for suppliers and distributors of building and construction products, for contractor services, and for home and commercial construction services; promotional services for dealers, suppliers, distributors, and contractors by preparation of custom advertisements and custom promotional products; providing a website and online directory consisting of advertisements and marketing information for use by dealers, suppliers, distributors and installers of building and construction products; consumer information concerning building and construction provided online; online ordering services, namely, providing a website for builders, contractors and construction sales professionals for placing orders and tracking the status of orders in the field of building and construction products and materials and tools; conducting incentive award program to promote excellent service and performance in the fields of contracting, home and commercial construction; conducting incentive award programs to promote the sale of building and construction materials; incentive award programs to promote the services of others; incentive awards services for commercial, promotional, and/or advertising purposes in the nature of recognition of preferred customers and member businesses through affiliation with a preferred program; information provided to member businesses of a membership club in the field of advertising and marketing, business growth, sales generation, and providing advertising for member businesses on distribution lists and websites; consumer product information services provided via customer support services and help desk services regarding the selection and purchase of building and construction materials; business consulting services, namely, one-on-one business support services provided via telephone or online; providing information to customers regarding selection, purchase and installation of building and construction products; business support services in the nature of business consulting services related to building and construction products and services |
| Goods and Services | Platform as a service (PAAS) featuring computer software platforms for users to manage products and online purchases for their customers, to compare costs, to prepare budgets and to prepare cost reports; platform as a service (PAAS) services featuring computer software platforms for users to access information about fiber cement products, to create cost estimates for product purchases, to manage online product sales on a project-by-project basis, to manage inventory of goods on a project-by-project basis, and to provide users with software for billing purposes; software as a service (SAAS) services featuring software for creating 3D images, artwork and designs; software as a service (SAAS) services featuring software that connects customers to product distributors; software as a service (SAAS) services featuring software that allows users to track product purchases and to calculate cost estimates for product purchases; advisory and consultancy services, specifically, color analysis for the purpose of interior and exterior design, providing a means of color coordinating building and construction materials, and providing color analysis for the design of cladding, siding, trim, panels and boards for building and construction; online portal that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, access instructional videos and materials in the fields of building and construction, and contact customer service representatives; providing a website featuring information in the field of home and building design, interior and exterior design, and architecture; providing a website featuring technology for placing and tracking orders for builders, contractors and construction sales professionals; online portal featuring technology that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, access instructional videos and materials in the fields of building and construction, and contact customer service representatives |
| 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 | 6 - Active |
| Class Status Date | Saturday, February 27, 2016 |
| Primary Code | 002 |
| First Use Anywhere Date | Wednesday, February 28, 2001 |
| First Use In Commerce Date | Wednesday, February 28, 2001 |
| 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 | Saturday, February 27, 2016 |
| Primary Code | 006 |
| First Use Anywhere Date | Friday, February 1, 2008 |
| First Use In Commerce Date | Friday, February 1, 2008 |
| 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 | Saturday, February 27, 2016 |
| Primary Code | 007 |
| First Use Anywhere Date | Wednesday, September 1, 1999 |
| First Use In Commerce Date | Wednesday, September 1, 1999 |
| International Class | 017 - Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal. |
| US Class Codes | 001, 005, 012, 013, 035, 050 |
| Class Status Code | 6 - Active |
| Class Status Date | Saturday, February 27, 2016 |
| Primary Code | 017 |
| First Use Anywhere Date | Friday, February 1, 2008 |
| First Use In Commerce Date | Friday, February 1, 2008 |
| 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 | Saturday, February 27, 2016 |
| Primary Code | 019 |
| First Use Anywhere Date | Wednesday, April 30, 1986 |
| First Use In Commerce Date | Wednesday, April 30, 1986 |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Saturday, February 27, 2016 |
| Primary Code | 035 |
| First Use Anywhere Date | Wednesday, April 30, 1986 |
| First Use In Commerce Date | Wednesday, April 30, 1986 |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Saturday, February 27, 2016 |
| Primary Code | 037 |
| First Use Anywhere Date | Wednesday, April 30, 1986 |
| First Use In Commerce Date | Wednesday, April 30, 1986 |
| 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 | Saturday, February 27, 2016 |
| Primary Code | 042 |
| First Use Anywhere Date | Saturday, November 30, 1996 |
| First Use In Commerce Date | Saturday, November 30, 1996 |
| Party Name | James Hardie Technology Limited |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Dublin 2 D02FD79 IE |
| Party Name | James Hardie Technology Limited |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Dublin 2 IE |
| Party Name | James Hardie Technology Limited |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Dublin 2 IE |
| Event Date | Event Description |
| Wednesday, June 28, 2023 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Wednesday, June 28, 2023 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Wednesday, June 28, 2023 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Wednesday, June 28, 2023 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, June 28, 2023 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Wednesday, June 28, 2023 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Monday, June 5, 2023 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED |
| Monday, June 5, 2023 | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Monday, June 5, 2023 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Tuesday, November 29, 2022 | TEAS SECTION 8 & 15 RECEIVED |
| Monday, November 29, 2021 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Tuesday, November 29, 2016 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, September 13, 2016 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, September 13, 2016 | PUBLISHED FOR OPPOSITION |
| Wednesday, August 24, 2016 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Monday, August 8, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, July 27, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, July 27, 2016 | EXAMINER'S AMENDMENT ENTERED |
| Wednesday, July 27, 2016 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Wednesday, July 27, 2016 | EXAMINERS AMENDMENT E-MAILED |
| Wednesday, July 27, 2016 | EXAMINERS AMENDMENT -WRITTEN |
| Thursday, March 24, 2016 | COMBINED EXAMINER'S AMENDMENT/PRIORITY ACTION ENTERED |
| Thursday, March 24, 2016 | ASSIGNED TO LIE |
| Thursday, March 24, 2016 | NOTIFICATION OF EXAMINER'S AMENDMENT/PRIORITY ACTION E-MAILED |
| Thursday, March 24, 2016 | EXAMINER'S AMENDMENT/PRIORITY ACTION E-MAILED |
| Thursday, March 24, 2016 | EXAMINERS AMENDMENT AND/OR PRIORITY ACTION - COMPLETED |
| Monday, March 21, 2016 | ASSIGNED TO EXAMINER |
| Tuesday, March 1, 2016 | NOTICE OF PSEUDO MARK E-MAILED |
| Saturday, February 27, 2016 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, February 26, 2016 | NEW APPLICATION ENTERED |