| Serial Number | 79173698 |
| Word Mark | JAPANESE TRADITIONAL SAMURAI MARTIAL ARTS HEY-HOW RAKUSHINKAI HEY - HOW |
| Filing Date | Thursday, April 30, 2015 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, March 10, 2023 |
| Registration Number | 5029145 |
| Registration Date | Tuesday, August 30, 2016 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, June 14, 2016 |
| Goods and Services | Martial arts instruction; educational services in the nature of courses, workshops, seminars, classes and instruction services relating to arts; educational services in the nature of courses, workshops, seminars, classes and instruction services relating to crafts; educational services in the nature of courses, workshops, seminars, classes and instruction services relating to sports; educational services in the nature of courses, workshops, seminars, classes and instruction services relating to martial arts; arranging, conducting and organization of seminars in martial arts; entertainment services, namely, arranging, conducting and organization of martial art events; organization of sports events and competitions, namely, martial arts competition; providing non-downloadable electronic publications in the nature of books, magazines, journals in the field of martial arts; services of reference libraries of literature and documentary records, namely, lending libraries; publication of books; production of videotape films in the field of education, culture, entertainment and sports which is not for movies or television programs and not for advertising or publicity; rental of sports equipment except vehicles; educational services in the nature of courses, workshops, seminars, classes and instruction services relating to healthy foods and healthy drinks knowledge; educational services in the nature of courses, workshops, seminars, classes and instruction services relating to religious doctrines and rituals |
| Transliteration Statement | The transliteration of the non-Latin characters in the mark is as follows: the center Chinese character transliterates to "raku" which means "the joy". The two Chinese characters written on the lower left part of the white ring transliterate to "hey-how" and this has no meaning in a foreign language. The three Chinese characters written on the lower right part of the white ring transliterates to "rakushinkai" and this has no meaning in a foreign language. |
| Translation of Words in Mark | The wording "Rakushinkai" has no meaning in a foreign language. |
| Description of Mark | The mark consists of a circle with the border having the words "JAPANESE TRADITIONAL SAMURAI MARTIAL ARTS" on the top half and the words "HEY-HOW RAKUSHINKAI" in the bottom half; the center of the circle contains an Asian character with eight circles around; outside the smaller circles is another circle having the word "HEY-HOW" at the top half and five Asian characters below. |
| Goods and Services | Computer programs for virtual reality training simulation in the field of martial arts; pre-recorded compact discs featuring martial arts; downloadable music files; downloadable image files featuring martial arts; downloadable moving images featuring martial arts; pre-recorded DVD featuring martial arts; pre-recorded video discs featuring martial arts; pre-recorded video tapes featuring martial arts; downloadable electronic publications in the nature of books, magazines, journals, newsletters in the field of martial arts |
| Certificate of Correction for Registration | In the Statement, class 35 have been corrected per the restriction dated 5/25/17, and per the Fnote dated 8/4/2017. |
| Goods and Services | Karate equipment, namely, karate gloves, karate kick pads; old martial art equipment, namely, martial arts training equipment, protective bras, boxing gloves; kendo equipment, namely, martial arts training equipment, protective bras, boxing gloves; boxing equipment, namely, martial arts training equipment, protective bras, boxing gloves; Japanese archery equipment, namely, arm guards, arrow fletching devices, bow cases, non-telescopic bow sights, quivers; fencing equipment, namely, foils, gauntlets, masks; body building equipment, namely, body-building apparatus, leg weights; apparatus for training of martial arts, namely, martial arts training equipment, protective bras, boxing gloves; martial arts training equipment, namely, lance for use as sports equipment; martial arts training equipment, namely, Japanese halberd for use as sporting equipment; throwing knife as the sports equipment, namely, toy knives; imitation sword as the sports equipment, namely, toy swords; sports apparatus, namely, training machine for gym in the nature of exercise machines |
| Goods and Services | Dietary supplement; dietary liquid supplement |
| Goods and Services | Magazines in the field of martial arts; books in the field of martial arts; newspapers; newsletters in the field of martial arts; textbooks in the field of martial arts; printed matter in the nature of books, magazines, journals in the field of martial arts; industrial packaging containers of paper; flags of paper; paper buntings; printed lottery tickets except toys; stationery; paintings and calligraphic works; photographs; photograph stands |
| Goods and Services | Clothing, namely, shirts, pants, socks, gloves, hats and caps; garters; sock suspenders; suspenders; waistbands; belts for clothing; shoes and boots; karate suits; kendo outfits; clothes for sports, namely, shirts, pants, socks, gloves, hats and caps; special footwear for sports |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Internet advertising; email advertising; advertising and publicity services; Internet advertising for goods and services; [ business management analysis; business consultancy; agency or mediation of business consulting services, namely, business consulting agencies; business consultancy and advisory services; marketing research or analysis; providing information concerning commercial sales; providing information concerning business management, business information, business consultancy, economics and commerce in the nature of business consultancy; commercial information and business advice for consumers; intermediation or mediation of the conclusion of the sales contract of the product through the Internet for others; corporate alliance intermediation or mediation services, namely, mediation of trade business for third parties through the Internet; intermediation of contracts about outsourcing, namely, mediation of trade business for third parties; providing information concerning arranging commercial trades and business alliances for self-employed workers and companies, namely, mediation of trade business for third parties; arranging contracts for the buying and selling of goods for third-parties; providing information concerning arranging contracts for the buying and selling of goods for third-parties; providing information concerning mediation of products sales contract; promoting the goods and services of others, providing information relating to promoting the goods and services of others; customer service management for promoting goods and services; information relating to promoting goods and services through the Internet; advertising for promoting goods and services for retailers or wholesalers and providing information relating thereto; business management and administration in membership organization; providing information concerning commercial sales in membership organization; business organization consultancy; business consulting and advice about construction and operation of retail, wholesale or service businesses handling goods and services through the Internet; business planning; business analysis; business management and business organization consultancy; promotion of goods sales and services for others; mediation of contracts for the buying and selling of goods; ] agency of receiving/ placing orders of goods, namely, wholesale ordering services and computerized on-line ordering services featuring martial arts goods; [ business assistance, advisory services and consultancy with regard to business management; market research; sales promotion for others; business consultancy in the field of computerized online retail, wholesale and franchise; agency of the mail order office work, namely, mail order services featuring martial arts goods; business management; procurement services for others, namely, purchasing of martial arts goods for others; ] compilation and systemization of information into computer databases in the field of martial arts; computerized file management; employment agencies; conducting of auction sales; import-export agencies [ ; providing information relating to commercial sales of healthy foods and healthy drinks ] |
| Disclaimer with Predetermined Text | "JAPANESE TRADITIONAL SAMURAI MARTIAL ARTS" |
| International Class | 005 - Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. |
| US Class Codes | 006, 018, 044, 046, 051, 052 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 10, 2023 |
| Primary Code | 005 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, March 10, 2023 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 016 - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks. |
| US Class Codes | 002, 005, 022, 023, 029, 037, 038, 050 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 10, 2023 |
| Primary Code | 016 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 025 - Clothing, footwear, headgear. |
| US Class Codes | 022, 039 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 10, 2023 |
| Primary Code | 025 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, March 10, 2023 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, March 10, 2023 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 041 - Education; providing of training; entertainment; sporting and cultural activities. |
| US Class Codes | 100, 101, 107 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 10, 2023 |
| Primary Code | 041 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | O2RM Co., Ltd. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | JP |
| Party Name | O2RM Co., Ltd. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | JP |
| Party Name | O2RM Co., Ltd. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | JP |
| Event Date | Event Description |
| Wednesday, November 15, 2023 | GENERIC MADRID TRANSACTION SENT TO IB |
| Wednesday, November 15, 2023 | GENERIC MADRID TRANSACTION CREATED |
| Friday, November 10, 2023 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Friday, March 10, 2023 | CANCELLED SECTION 71 |
| Monday, August 30, 2021 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Friday, August 18, 2017 | CORRECTION UNDER SECTION 7 ¿ PROCESSED |
| Friday, August 4, 2017 | LIMITATION FROM THE IB EXAMINED AND ENTERED |
| Friday, June 16, 2017 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Friday, May 26, 2017 | LIMITATION OF GOODS RECEIVED FROM IB |
| Monday, December 5, 2016 | GENERIC MADRID TRANSACTION SENT TO IB |
| Monday, December 5, 2016 | GENERIC MADRID TRANSACTION CREATED |
| Wednesday, November 30, 2016 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Friday, September 2, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, August 30, 2016 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, June 14, 2016 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, June 14, 2016 | PUBLISHED FOR OPPOSITION |
| Wednesday, June 1, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, June 1, 2016 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, May 25, 2016 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, May 10, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, May 10, 2016 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, May 10, 2016 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Tuesday, May 10, 2016 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, May 10, 2016 | EXAMINERS AMENDMENT -WRITTEN |
| Friday, April 15, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, April 15, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, April 15, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Sunday, November 8, 2015 | REFUSAL PROCESSED BY IB |
| Monday, October 19, 2015 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Monday, October 19, 2015 | REFUSAL PROCESSED BY MPU |
| Friday, October 16, 2015 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Thursday, October 15, 2015 | NON-FINAL ACTION WRITTEN |
| Tuesday, October 13, 2015 | APPLICATION FILING RECEIPT MAILED |
| Friday, October 9, 2015 | ASSIGNED TO EXAMINER |
| Friday, October 9, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, October 8, 2015 | SN ASSIGNED FOR SECT 66A APPL FROM IB |