| Serial Number | 79160834 |
| Word Mark | MOTORWORLD MOBILE LEIDENSCHAFT GRENZENLO OLD- & NEWTIMER LIEBHAVER- & LUXUSMOBILE ZU LANDE - ZU WASSER - UND IN DER LUFT GRENZENLOSE FAHRKULTUR |
| Filing Date | Thursday, November 20, 2014 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, June 3, 2022 |
| Registration Number | 4853317 |
| Registration Date | Tuesday, November 17, 2015 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, September 1, 2015 |
| Description of Mark | The mark consists of a shield-shaped logo with a red background, bounded by a black border and brown stripe showing a gold seam. One gold button appears in each of the three corners of the shield. The top outer portion of the shield contains three gold stars on each side of the stylized wording "MOBILE LEIDENSCHAFT" in silver. The left outer portion of the shield contains the stylized wording "OLD- & NEWTIMER" in silver to the left of a gold star. To the right of the gold star is the stylized wording "LIEBHAVER- & LUXUSMOBILE" in silver. The right outer portion of the shield contains the stylized wording "ZU LANDE - ZU WASSER - UND IN DER LUFT" in silver in between two gold stars. The inner portion of the shield contains the stylized wording "MOTORWORLD" in silver above a race flag in black and white. Under the race flag is the stylized wording "GRENZENLOSE FAHRKULTUR" in black with a gold shield with a black steering wheel inside the shield lying on the ends of two silver laurel branches. |
| Goods and Services | Motorcycle helmets; helmets for motorcyclists; specially shaped pockets as an integral component of helmets; protection devices for personal use against accidents, in particular protective reinforcements in the nature of protective padded clothing for shoulders and elbows, knees and other parts of the body except protection devices as sporting goods for protection against bodily harm and blunt force trauma |
| Goods and Services | Leather and imitations of leather; tins of leather or leather board; leather boxes; leather straps; customized luggage tags made of leather; purses; travel baggage; valises; suitcases for travel purposes; toiletry bags sold empty; trunks and traveling suitcases; traveling bags; backpacks; bags of leather; bags of imitations of leather; haversacks; tool bags sold empty for motorcycles |
| Pseudo Mark | MOTORWORLD MOBILE LEIDENSCHAFT GRENZENLOSE FAHRKULTUR OLD- AND NEWTIMER LIEBHABER- AND LUXUSMOBILE ZU LANDE - ZU WASSER - UND IN DER LUFT |
| Goods and Services | Clothing, namely, bandanas, bath robes, bathing suits, bathing trunks, belts, coats, dressing gowns, gloves, jackets, jerseys, mantillas, neckties, pants, parkas, pelerines, pullovers, scarves, shawls, shirts, socks, suits, sweaters, track suits, trousers, t-shirts, uniforms, vests, waistcoats; footwear, headgear, namely, berets, caps, hats; motorcycle rain suits; motorcycle jackets; motorcycle boots; motorcycle gloves; waterproof suits for motorcyclists and convertible drivers; clothing for motorcyclists and convertible drivers, namely, clothing made of leather or imitation of leather; leather coats; leather jackets; leather clothing, namely, gloves, pants, trousers; leather belts clothing; vests of leather |
| Indication of Colors claimed | The color(s) red, brown, silver, white, black, and gold is/are claimed as a feature of the mark. |
| Translation of Words in Mark | The English translation of "LEIDENSCHAFT", GRENZENLOSE FAHRKULTUR", "LIEBHABER & LUXUSMOBILE" and "ZU LANDE - ZU WASSER - UND IN DER LUFT" in the mark is "passion", "boundless driving culture" and "enthusiasts mobiles and luxury mobiles ashore afloat and in the air". |
| 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, June 3, 2022 |
| Primary Code | 009 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, June 3, 2022 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, June 3, 2022 |
| Primary Code | 025 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Motorworld Trademark Management AG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 98 - Unknown |
| Address | CH |
| Party Name | Motorworld Trademark Management AG |
| Party Type | 21 - New Owner After Publication |
| Legal Entity Type | 98 - Unknown |
| Address | CH |
| Party Name | CASALA 1 GmbH & Co. KG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 13 - Limited Partnership |
| Address | DE |
| Party Name | CASALA 1 GmbH & Co. KG |
| Party Type | 11 - New Owner Before Publication |
| Legal Entity Type | 13 - Limited Partnership |
| Address | DE |
| Party Name | Activ Motor Company GmbH & Co. KG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Event Date | Event Description |
| Sunday, April 23, 2023 | TOTAL INVALIDATION PROCESSED BY THE IB |
| Friday, March 24, 2023 | GENERIC MADRID TRANSACTION SENT TO IB |
| Friday, March 24, 2023 | GENERIC MADRID TRANSACTION CREATED |
| Friday, February 3, 2023 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Friday, June 3, 2022 | CANCELLED SECTION 71 |
| Thursday, February 6, 2020 | NEW REPRESENTATIVE AT IB RECEIVED |
| Thursday, February 23, 2017 | NEW REPRESENTATIVE AT IB RECEIVED |
| Friday, August 19, 2016 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, April 25, 2016 | GENERIC MADRID TRANSACTION SENT TO IB |
| Monday, April 25, 2016 | GENERIC MADRID TRANSACTION CREATED |
| Wednesday, February 17, 2016 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, November 17, 2015 | REGISTERED-PRINCIPAL REGISTER |
| Friday, September 4, 2015 | NOTIFICATION PROCESSED BY IB |
| Thursday, September 3, 2015 | CHANGE OF OWNER RECEIVED FROM IB |
| Tuesday, September 1, 2015 | PUBLISHED FOR OPPOSITION |
| Wednesday, August 12, 2015 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, August 12, 2015 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, August 12, 2015 | NOTICE OF PUBLICATION |
| Friday, July 24, 2015 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Thursday, July 23, 2015 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, July 2, 2015 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, July 2, 2015 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, June 25, 2015 | ASSIGNED TO LIE |
| Wednesday, June 24, 2015 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, June 5, 2015 | CHANGE OF OWNER RECEIVED FROM IB |
| Friday, May 22, 2015 | REFUSAL PROCESSED BY IB |
| Friday, May 8, 2015 | CORRECTION FROM IB ENTERED - NO REVIEW REQUIRED |
| Saturday, May 2, 2015 | CORRECTION TRANSACTION RECEIVED FROM IB |
| Thursday, March 19, 2015 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Thursday, March 19, 2015 | REFUSAL PROCESSED BY MPU |
| Thursday, March 19, 2015 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Wednesday, March 18, 2015 | NON-FINAL ACTION WRITTEN |
| Wednesday, March 11, 2015 | ASSIGNED TO EXAMINER |
| Tuesday, March 3, 2015 | APPLICATION FILING RECEIPT MAILED |
| Friday, February 27, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, February 26, 2015 | SN ASSIGNED FOR SECT 66A APPL FROM IB |