| Serial Number | 79177982 |
| Word Mark | KAPTEN & SON |
| Filing Date | Monday, August 10, 2015 |
| Status | 708 - PARTIAL SECTION 71 & 15 ACCEPTED AND ACKNOWLEDGED |
| Status Date | Tuesday, December 26, 2023 |
| Registration Number | 5066441 |
| Registration Date | Tuesday, October 25, 2016 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, August 9, 2016 |
| Description of Mark | The mark consists of the words "KAPTEN & SON" and an anchor above the wording. |
| Goods and Services | Spectacles optics; sunglasses; clip-on sunglasses; straps for sunglasses; lenses for sunglasses; optical lenses for use with sunglasses; frames for sunglasses; chains for sunglasses; parts for spectacles; cases for spectacles and sunglasses |
| Goods and Services | Leather and imitation leather; animal skins, hides; trunks and travelling bags; [ umbrellas and parasols; walking sticks; whips, harness and saddlery; ] luggage, bags, wallets and other carriers, namely, document carriers; purses; small purses; leather bags and wallets; leather pouches; leather purses; waist pouches; bags made of imitation leather; carrying cases; bags envelopes, pouches of leather, for packaging |
| Pseudo Mark | KAPTEN AND SON |
| Goods and Services | Alloys of precious metal; jewelry, [ precious stones; ] horological and chronometric instruments; wristwatches; watches; dress watches; bracelets; bracelets for watches; bracelets and watches combined; charms; [ stands for clocks; ] cases for horological and chronometric instruments; jewelry boxes and watch boxes; [ clock cases; ] cases for watches presentation; bracelets for watches; watchstraps made of leather; buckles for watchstraps; watch straps made of metal or leather or plastic; watch straps of nylon; watch straps of polyvinyl chloride; watch straps of synthetic material; watch pouches; non-leather watch straps; [ clocks and parts therefor; ] watchstraps [ ; parts for clockworks; cufflinks; tie bars ] |
| Goods and Services | [ Clothing, namely, shirts, t-shirts, sweatshirts, jerseys, jackets and socks, shorts, skirts, aprons, babies' pants, bath robes, bathing trunks, belts, beachwear, swimwear, bathing suits, swimsuits, bathing trunks, bibs, not of paper, boas, brassieres, leotards, pants, coats, dresses, dressing gowns, ear muffs, gloves, hosiery, jumper dresses, knit tops, knit skirts, knit socks, leggings, mittens, money belts, neckties, pullovers, overcoats, scarves, ties, vests, waistcoats, stockings, pants, pullovers, pajamas, clothing for sportswear in the nature of sport uniforms, sports shirts, sport coats, sport stockings, sports bras, sports jackets, sports jerseys and breeches for sports, sports over uniforms, tracksuits, sports pants, sports shirts with short sleeves, sports singlets, sports vests, jogging suits, warm up suits, rugby tops, rugby shorts, golf shirts, lingerie, nightwear in the nature of nightshirts, night gowns and nightdresses, jumpsuits, sleepwear, loungewear, sleep masks, sweaters, tights, trousers, underpants, underwear, vests, waterproof jackets and pants; footwear; headgear, namely, caps, baseball caps, sports caps, hats, bandanas, bathing caps, berets, headbands, paper hats for use as clothing items ] |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Advertising; business management; business administration; providing office functions; business management; commercial trading and consumer information services; auctioneering services; online advertising on a computer network; presentation of companies on the internet and other media, namely, developing promotional campains for business on the Internet; providing television home shopping services in the field of general consumer merchandise; Sales promotion for others provided through the distribution of and administration of privileged user cards; rental of advertising space on the internet; arranging of commercial transactions for others, including within the framework of e-commerce; providing of business and commercial contacts, including via the Internet; arranging of contracts, for others, for the buying and selling of goods; arranging of contracts, for others, for the providing of services; demonstration of goods; advertisement for others on the internet; retailing and wholesaling including online, namely, retail and wholesale and online retail and wholesale store services in relation to scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking supervision, life-saving and teaching apparatus and instruments; retailing and wholesaling including online, namely, retail and wholesale and online retail and wholesale store services in relation to optical devices and equipment, optical enhancers and correctors, optical goods, spectacles, sunglasses, clip-on sunglasses for spectacles, straps for sunglasses, lenses for sunglasses, optical lenses for sunglasses, frames for sunglasses, chains for sunglasses, parts for spectacles, cases for spectacles and sunglasses; retailing and wholesaling including online, namely, retail and wholesale and online retail and wholesale store services in relation to precious metals and their alloys, jewelry, jewelry, [ precious stones, ] horological and chronometric instruments, wristwatches, pocket watches, business watches; retailing and wholesaling including online, namely, retail and wholesale and online retail and wholesale store services in relation to bracelets, straps for wristwatches, watch bands, bracelet and watch combinations, straps for wristwatches, straps of leather for wristwatches, clasps for wristwatches, straps of metal for wristwatches, leather or plastic, straps of nylon for wristwatches, straps of polyvinyl chloride for wristwatches, straps of synthetic materials for wristwatches, straps, not of leather, for wristwatches; retailing and wholesaling including online, namely, retail and wholesale and online retail and wholesale store services in relation to jewelry charms, watch stands, cases for timepieces, boxes for jewelry, clocks and watches, watch boxes, cases for watches, cases for watches presentation, pouches for watches, [ clocks and parts thereof, clock parts, cuff-links, tie-clips; ] retailing and wholesaling including online, namely, retail and wholesale and online retail and wholesale store services in relation to leather and imitations of leather, animal skins, hides, trunks and travelling bags, [ umbrellas and parasols, walking sticks, whips, harness and saddlery; ] retailing and wholesaling including online, namely, retail and wholesale and online retail and wholesale store services in relation to luggage, bags, pocket wallets and other carry cases, purses, coin purses, leather bags and wallets, cases of leather, pouches of leather, small bags, bags of leather, bags of imitations of leather, carry cases, bags, envelopes, pouches of leather, for packaging, footwear and headgear |
| NOT AVAILABLE | "& SON" |
| 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 | 6 - Active |
| Class Status Date | Friday, December 11, 2015 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 014 - Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments. |
| US Class Codes | 002, 027, 028, 050 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, December 11, 2015 |
| Primary Code | 014 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 018 - Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. |
| US Class Codes | 001, 002, 003, 022, 041 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, December 11, 2015 |
| Primary Code | 018 |
| 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 | G - NOT AVAILABLE |
| Class Status Date | Tuesday, December 26, 2023 |
| Primary Code | 025 |
| 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 | Friday, December 11, 2015 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Kapten & Son GmbH |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | Kapten & Son UG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | Kapten & Son UG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Event Date | Event Description |
| Friday, December 11, 2015 | ASSIGNED TO EXAMINER |
| Thursday, December 10, 2015 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Friday, December 11, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Sunday, December 13, 2015 | NON-FINAL ACTION WRITTEN |
| Monday, December 14, 2015 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Tuesday, December 15, 2015 | APPLICATION FILING RECEIPT MAILED |
| Wednesday, December 16, 2015 | REFUSAL PROCESSED BY MPU |
| Wednesday, December 16, 2015 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Tuesday, January 5, 2016 | REFUSAL PROCESSED BY IB |
| Thursday, June 16, 2016 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Thursday, June 16, 2016 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, June 16, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, June 16, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, June 16, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, July 1, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, July 20, 2016 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, July 20, 2016 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, July 20, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Tuesday, August 9, 2016 | PUBLISHED FOR OPPOSITION |
| Tuesday, August 9, 2016 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Thursday, September 8, 2016 | LIMITATION OF GOODS RECEIVED FROM IB |
| Friday, October 21, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, October 25, 2016 | REGISTERED-PRINCIPAL REGISTER |
| Monday, November 21, 2016 | LIMITATION FROM THE IB EXAMINED, NO ACTION IS NEEDED |
| Wednesday, January 25, 2017 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Wednesday, February 1, 2017 | FINAL DISPOSITION PROCESSED |
| Wednesday, February 1, 2017 | FINAL DISPOSITION NOTICE SENT TO IB |
| Friday, February 17, 2017 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Thursday, February 15, 2018 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Thursday, September 27, 2018 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Monday, October 25, 2021 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Tuesday, April 25, 2023 | TEAS SECTION 71 & 15 RECEIVED |
| Tuesday, December 19, 2023 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Tuesday, December 26, 2023 | REGISTERED - PARTIAL SEC. 71 ACCEPTED & SEC. 15 ACK. |
| Tuesday, December 26, 2023 | NOTICE OF ACCEPTANCE OF SEC. 71 & 15 - E-MAILED |
| Thursday, September 5, 2024 | GENERIC MADRID TRANSACTION CREATED |
| Tuesday, August 27, 2024 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Friday, October 25, 2024 | NEW REPRESENTATIVE AT IB RECEIVED |
| Thursday, September 5, 2024 | GENERIC MADRID TRANSACTION SENT TO IB |