| Serial Number | 97088427 |
| Word Mark | JH JAMESHARDIE |
| Filing Date | Friday, October 22, 2021 |
| Status | 731 - SECOND EXTENSION - GRANTED |
| Status Date | Thursday, August 1, 2024 |
| Registration Number | 0000000 |
| Registration Date | NOT AVAILABLE |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, June 13, 2023 |
| Goods and Services | Membership club services, namely, providing training to member businesses in the fields of marketing, business growth, sales generation, installation best practices for home and commercial contracting and construction services, and job-site safety |
| Description of Mark | The mark consists of the capital letters "J" and "H" in a diagonal position within a circle. The phrase "JAMESHARDIE" appears next to the circle. |
| Goods and Services | Hand-operated tools for building material and products, namely, trim cutters for cutting fiber-cement backer boards, fiber cement boards, fiber-cement columns, fiber-cement flooring, fiber-cement pipes, fiber-cement planks, fiber-cement shakes, fiber-cement shingles, fiber-cement sheets, fiber-cement tiles, fiber-cement trim; hand operated marking tools, namely, marking knives and scribers; score and snap knives; scorers in the nature of scoring knives for fiber cement material; scoring knives; working knives used for construction and building purposes; hand-operated cutting tools; cement and backerboard scoring knives |
| Goods and Services | Non-metal construction materials, namely, exterior boards, interior fiber cement boards, interior wall boards, floor boards, panels, soffits, fascia, planks, siding, trim, and cladding, for interior and exterior use; non-metal construction materials in the nature of underlayment for flooring, countertops, walls, ceilings, siding and roofing for interior use; non metal construction materials, namely, exterior boards, interior fiber cement boards, interior wall boards, panels, soffits, fascia, planks, siding, cladding having preapplied finish coatings, paint coatings, or stain coatings; construction materials, namely, non-metal flooring materials; non-metal damage, moisture and mold resistant boards and panels for construction; non-metal construction materials, namely, flooring underlayment and roofing underlayment; non-metal underlayment and boards for countertops, walls and ceilings; non-metal building and construction materials, namely, fiber cement composite trim, fascia, panels, planks, soffits, cladding, siding exterior boards, interior fiber cement boards, and interior wall boards; non-metal building and construction materials, namely, fiber cement underlayment for flooring, countertops, walls, ceilings, siding and roofing; nonmetal architectural mouldings, framework, and finish trim; non-metal building flashing; non-metal roof flashing; building seam tape; 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 |
| Goods and Services | Metal building flashing; metal fasteners, namely, bolts, nails, nuts, rivets, and screws; metal fasteners, namely, ballistic fasteners being collated metal nails to be used with nail guns; metal trim for buildings; metal building materials, namely, metal tab fasteners in the nature of metal sheets or tabs used for attaching building and construction products to a variety of substrates; metal building materials, namely, steel furrings, furring channels and furring strips |
| Goods and Services | Non-woven, non-perforated polyolefin vapor 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; building insulation; waterproofing membranes for foundations of buildings; non-metal weather strips for buildings; caulking materials; waterproof sealants; sealants for buildings; adhesive waterproof tape, other than stationery and not for medical or household purposes; waterproof duct tape and waterproof wallboard joint tape; adhesive tape for industrial and commercial use |
| Pseudo Mark | JH JAMES HARDIE |
| 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; providing construction information 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, all being technical advice related to the installation and repair of building and construction products; 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; technical customer support services in the nature of help desk services, namely providing technical advice 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 |
| Goods and Services | Paints |
| 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; providing consumer information in the field of 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; 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 advertising purposes in the nature of recognition of preferred customers and member businesses through affiliation with a preferred program; membership club services, namely, providing on-line information to member businesses of a membership club in the fields of advertising and marketing and business development in the nature of business growth and sales generation, and providing advertising services for member businesses on distribution lists and websites; verifying the credentials of contractors, construction companies, and installers for business purposes; customer support services for dealers, distributors, builders and other trade professionals, namely, providing consumer information related to construction and building products; customer support services in the nature of help desk services related to the selection of and purchase of construction and building products; business consulting services for contractors and builders, namely, one-on-one business support services provided via telephone or online; providing consumer information to customers regarding selection and purchase of building and construction products; business support services in the nature of business operation consulting services related to building and construction products and services; providing business information to businesses within a membership club in the field of advertising and marketing, business growth, sales generation, and providing advertising for member businesses on distribution lists, websites and social media; event planning and management for marketing, branding, promoting or advertising the goods and services of others; providing a website featuring consumer information on colors, paints, color analysis, color coordination, and color selection; providing business consulting services to professionals in the building and construction industry relating to color analysis, color coordination and color selection for paints and for building and construction products; conducting customer incentive award program to promote excellent service and performance in the fields of home and commercial construction; promotional program that provides customers with benefits and warranties for the purchase of building and construction products; home warranty services, namely, arranging for repairs and replacement of home building products and home exteriors |
| 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; architectural design, interior design, exterior home design, and exterior color design 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 all of the aforementioned services not for landscape or gardening; providing an online interactive website 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; 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; platform as a service (PAAS) featuring computer software platforms for users to view products, review products, and compare different products; platform as a service (PAAS) services featuring computer software platforms for users to access information, videos, photographs, and other multimedia about building and construction; providing a website featuring technology that enables users to create 2D and 3D images, drawings, and designs from downloaded or existing files; providing a website featuring technology that enables users to view, bookmark, save and share photographs, images, information, videos, text, and multimedia content; platform as a service (PAAS) services featuring computer software platforms for providing technical support services, information, technical documents, product specifications, resources, tools, guidance, advice and consultation in the field of building construction, maintenance and renovation; software as a service (SAAS) featuring software for use in construction takeoff; software as a service (SAAS) featuring software for quantifying the volume of construction materials required from construction project measurements and from blueprints; software as a service (SAAS) featuring software for the construction industry for preparing bids; software as a service (SAAS) services featuring software for construction project management; software as a service (SAAS) services featuring software for provides digital estimations of measurements from blueprints; software as a service (SAAS) services featuring software for creating digital plans and allowing users to view and share digital plans |
| 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 | Monday, November 8, 2021 |
| Primary Code | 002 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Monday, November 8, 2021 |
| Primary Code | 006 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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, 024, 031, 034, 035 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, November 8, 2021 |
| Primary Code | 007 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 008 - Hand tools and implements (hand-operated); cutlery; side arms; razors. |
| US Class Codes | 023, 028, 044 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, November 8, 2021 |
| Primary Code | 008 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Monday, November 8, 2021 |
| Primary Code | 017 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Monday, November 8, 2021 |
| Primary Code | 019 |
| 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, November 8, 2021 |
| 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, November 8, 2021 |
| Primary Code | 037 |
| 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 | 6 - Active |
| Class Status Date | Friday, October 28, 2022 |
| Primary Code | 041 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Monday, November 8, 2021 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | James Hardie Technology Limited |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Dublin 2 D02FD79 IE |
| Party Name | James Hardie Technology Limited |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Dublin 2 D02 WR20 IE |
| Event Date | Event Description |
| Tuesday, October 26, 2021 | NEW APPLICATION ENTERED |
| Monday, November 8, 2021 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, November 9, 2021 | NOTICE OF DESIGN SEARCH CODE E-MAILED |
| Tuesday, April 19, 2022 | ASSIGNED TO EXAMINER |
| Thursday, May 5, 2022 | NON-FINAL ACTION WRITTEN |
| Thursday, May 5, 2022 | NON-FINAL ACTION E-MAILED |
| Thursday, May 5, 2022 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, October 27, 2022 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, October 27, 2022 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, October 28, 2022 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, January 3, 2023 | NON-FINAL ACTION WRITTEN |
| Tuesday, January 3, 2023 | NON-FINAL ACTION E-MAILED |
| Tuesday, January 3, 2023 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Monday, April 3, 2023 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Monday, April 3, 2023 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, April 3, 2023 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, May 10, 2023 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, May 24, 2023 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, June 13, 2023 | PUBLISHED FOR OPPOSITION |
| Tuesday, June 13, 2023 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Wednesday, June 28, 2023 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Wednesday, June 28, 2023 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Wednesday, June 28, 2023 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, June 28, 2023 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Wednesday, June 28, 2023 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Wednesday, June 28, 2023 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, August 8, 2023 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Friday, January 26, 2024 | SOU TEAS EXTENSION RECEIVED |
| Friday, January 26, 2024 | SOU EXTENSION 1 FILED |
| Friday, January 26, 2024 | SOU EXTENSION 1 GRANTED |
| Thursday, August 1, 2024 | SOU TEAS EXTENSION RECEIVED |
| Thursday, August 1, 2024 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Thursday, August 1, 2024 | SOU EXTENSION 2 GRANTED |
| Thursday, August 1, 2024 | SOU EXTENSION 2 FILED |
| Tuesday, January 30, 2024 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |