| Serial Number | 79265459 |
| Word Mark | NAKAO FOUNDATION FOR WORLDWIDE ORAL HEALTH |
| Filing Date | Thursday, February 28, 2019 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, January 26, 2021 |
| Registration Number | 6253392 |
| Registration Date | Tuesday, January 26, 2021 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, November 10, 2020 |
| Description of Mark | The mark consists of stacked wording "NAKAO FOUNDATION" in gray letters with the smaller wording "FOR WORLDWIDE ORAL HEALTH" in gray letters underneath. Above the wording are two curved arc designs, one in blue and one in green. |
| Goods and Services | Instruction services in the field of dentistry; provision of educational courses in the field of dentistry; teaching and training services in the field of dentistry; educational services, namely, arranging and conducting of seminars, conferences, and symposiums, in the medical and dental field, none of the foregoing related to exercise, nutrition or fitness; providing non-downloadable electronic publications in the nature of books, magazines, journals, periodicals, newsletters and newspaper in the medical and dental field, none of the foregoing related to exercise, nutrition or fitness; reference libraries for literature and documentary records in the medical and dental field; libraries, namely, reference library services in the medical and dental field; on-line publication of electronic books and journals; research library services; publication of journals; publication of books; organization of educational and cultural events in the medical and dental field, excluding movies, shows, plays, musical performances, sports, horse races, bicycle races, boat races and auto races, none of the foregoing related to exercise, nutrition or fitness; organization of exhibitions for educational purposes, none of the foregoing related to exercise, nutrition or fitness; providing a website featuring online non-downloadable videos in the medical and dental field, none of the foregoing related to exercise, nutrition or fitness; providing a website featuring online non-downloadable images in the nature of graphics, photographs, charts, tables, pictures, all in the medical and dental field, none of the foregoing related to exercise, nutrition or fitness; movie theatre presentations and movie film production and distribution; providing online non-downloadable music; providing online non-downloadable sound; writing of educational text books and journal articles for educational purposes in the medical and dental field, other than for advertising or publicity; educational video production; providing facilities for educational conventions in the medical and dental field; providing facilities for educational training in the medical and dental field; libraries, namely, library services for scientific and cultural resources in the medical and dental field |
| Indication of Colors claimed | The color(s) gray, blue and green is/are claimed as a feature of the mark. |
| Goods and Services | Provision of medical information; providing news in the field of dentistry; providing information relating to rental of medical apparatus and instruments; providing information relating to rental of dental apparatus and instruments |
| Goods and Services | Downloadable electronic publications in the nature of books, magazines, journals, periodicals, newsletters, and newspapers in the medical and dental field; downloadable application software for editing websites, uploading and downloading texts, graphics, photographs, image files, video files, articles in journals and websites, retrieving, managing, storing, editing electric data in the medical and dental field; downloadable computer programs for editing websites, uploading and downloading texts, graphics, photographs, image files, video files, articles in journals and websites, retrieving, managing, storing, editing electric data in the medical and dental field; electronic machines, apparatus and their parts, namely, computers, laptop computers, and tablet computers for editing websites, uploading and downloading texts, graphics, photographs, image files, video files, articles in journals and websites, retrieving, managing, storing, editing electric data and their component parts; downloadable sound files containing lectures in the medical and dental field; downloadable sound files containing explanations and introductions of products in the medical and dental field; downloadable image files containing graphics, photographs, charts, tables, and pictures in the medical and dental field; downloadable multimedia video files relating to medical treatment and dentistry |
| Goods and Services | Medical research; dental research; providing information in relation to medical research and dental research; testing the functionality of machines, apparatus and instruments and research on medical and dental machines, apparatus and instruments; providing information in relation to testing the functionality of machines, apparatus and instruments and research on medical treatment and dentistry machines, apparatus and instruments; scientific research, and testing and analysis services of dental materials, dental medicines, dental instruments, dental apparatus, medical apparatus, medical and dental treatment to assure compliance with industry standards; providing information in relation to scientific research, testing and analysis services; technological research in the medical and dental field; providing information in relation to technological research; providing information in relation to design and development of medical apparatus and instruments; providing information in relation to design and development of dental apparatus and instruments; consultancy relating to design and development of medical apparatus and instruments; consultancy relating to design and development of dental apparatus and instruments; computer software design; computer programming and maintenance of computer software; providing temporary use of online non-downloadable application software for editing websites, uploading and downloading texts, graphics, photographs, image files, video files, articles in journals and websites, retrieving, managing, storing, editing electric data; providing temporary use of online non-downloadable computer programs for editing websites, uploading and downloading texts, graphics, photographs, image files, video files, articles in journals and websites, retrieving, managing, storing, editing electric data; rental of electronic server memory storage space on the Internet; rental of a database server to third parties; all of the foregoing services being limited to the medical and dental field |
| NOT AVAILABLE | "FOUNDATION" AND "FOR WORLDWIDE ORAL HEALTH" |
| Goods and Services | Printed books in the medical and dental field; magazines featuring medical treatments and dentistry topics; printed matter, namely, books, magazines, journals, periodicals, newsletters, and newspapers in the medical and dental field; printed periodicals in the medical and dental field; newsletters in the medical and dental field; printed publications, namely, books, magazines, journals, periodicals, newsletters, and newspapers in the field of medical treatment and dentistry |
| Goods and Services | Charitable fundraising; accepting monetary charitable contributions; providing research grants in the field of medical care and dentistry; providing educational scholarships; financial management of scholarship programs; business finance procurement services; financial and insurance consultancy |
| 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, August 30, 2019 |
| 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 | 6 - Active |
| Class Status Date | Friday, August 30, 2019 |
| Primary Code | 016 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 036 - Insurance; financial affairs; monetary affairs; real estate affairs. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, August 30, 2019 |
| Primary Code | 036 |
| 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, August 30, 2019 |
| 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 | Friday, August 30, 2019 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 044 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, August 30, 2019 |
| Primary Code | 044 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | GC Corporation |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | JP |
| Party Name | GC Corporation |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | JP |
| Party Name | GC Corporation |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | JP |
| Event Date | Event Description |
| Thursday, August 15, 2019 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Friday, August 30, 2019 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, August 30, 2019 | ASSIGNED TO EXAMINER |
| Saturday, August 31, 2019 | NON-FINAL ACTION WRITTEN |
| Sunday, September 1, 2019 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Tuesday, September 3, 2019 | APPLICATION FILING RECEIPT MAILED |
| Wednesday, September 11, 2019 | REFUSAL PROCESSED BY MPU |
| Wednesday, September 11, 2019 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Saturday, September 28, 2019 | REFUSAL PROCESSED BY IB |
| Monday, March 9, 2020 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, March 13, 2020 | ASSIGNED TO LIE |
| Friday, March 13, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, March 13, 2020 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Saturday, April 4, 2020 | NON-FINAL ACTION WRITTEN |
| Saturday, April 4, 2020 | NON-FINAL ACTION E-MAILED |
| Saturday, April 4, 2020 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Friday, October 2, 2020 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, October 2, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, October 2, 2020 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, October 5, 2020 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, October 21, 2020 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, October 21, 2020 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, October 21, 2020 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Sunday, November 8, 2020 | NOTIFICATION PROCESSED BY IB |
| Tuesday, November 10, 2020 | PUBLISHED FOR OPPOSITION |
| Tuesday, November 10, 2020 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Wednesday, January 20, 2021 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Wednesday, January 20, 2021 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Tuesday, January 26, 2021 | REGISTERED-PRINCIPAL REGISTER |
| Saturday, February 6, 2021 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Monday, April 26, 2021 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Thursday, April 29, 2021 | GENERIC MADRID TRANSACTION CREATED |
| Thursday, April 29, 2021 | GENERIC MADRID TRANSACTION SENT TO IB |
| Sunday, May 23, 2021 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, January 26, 2026 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |