| Serial Number | 85754151 |
| Word Mark | NORTH STAR PROVEN PERFORMANCE |
| Filing Date | Monday, October 15, 2012 |
| Status | 800 - REGISTERED AND RENEWED |
| Status Date | Monday, August 5, 2024 |
| Registration Number | 4506537 |
| Registration Date | Tuesday, April 1, 2014 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, May 28, 2013 |
| Description of Mark | The mark consists of the word "NORTH" over the word "STAR", with a star over the "A" in the word "STAR", over a black rectangle with the words "PROVEN PERFORMANCE" inside it. |
| Goods and Services | Gasoline, diesel and motor-powered power tools and power operated equipment, namely, air compressors, wheel kits comprising steel axle rods for machines, fasteners for machines, plastic or rubble handle grips and lifting handles, pneumatic or solid rubber tires and steel support feet, [ portability kits comprising a mechanism to elevate one or more sides of a product such that the product becomes mobile and towing kits comprised primarily of steel axles for power operated equipment and also including automotive style wheels and tires, brake lights, trailer tongues and hitch coupler/safety chains as well as an assortment of nuts and bolts sold as a unit, the aforementioned kits being for generators for power operated equipment; stump grinders and power-operated asphalt sprayers, multi-purpose high-pressure washers, steam cleaning machines not for medical applications, power-operated sprayers, water pumps for water displacement, earth moving machines in the nature of backhoes, power-operated post hole diggers, trench cutters, power-operated lawn edgers, machines for splitting logs and for processing firewood, power-operated splitting wedges, engine mufflers, windmills, wind turbines, ] stump grinders for removal of tree stumps, [ asphalt repair equipment, namely, machines for seal coat application, machines for melting raw materials for crack repair; press brakes; power-operated chippers used for processing trees into wood chips, ] ;gasoline and diesel powered generators [ , and structural component parts for all of the foregoing ] |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Wheel kits for power operated equipment comprising pneumatic or solid rubber tires, steel support feet in the nature of foot pegs, steel axle rods for wheels, fasteners for wheels and plastic or rubber handle grips and lifting handles [ ; towing kits for power operated equipment comprising automotive style wheels and tires, steel axles for trailers, brake lights, trailer tongues and hitch coupler/safety chains as well as an assortment of nuts and bolts sold as a unit ] |
| 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, 031, 034, 035 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, March 28, 2013 |
| Primary Code | 007 |
| First Use Anywhere Date | Sunday, March 31, 2013 |
| First Use In Commerce Date | Sunday, March 31, 2013 |
| International Class | 012 - Vehicles; apparatus for locomotion by land, air, or water. |
| US Class Codes | 019, 021, 023, 031, 035, 044 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, March 28, 2013 |
| Primary Code | 012 |
| First Use Anywhere Date | Sunday, March 31, 2013 |
| First Use In Commerce Date | Sunday, March 31, 2013 |
| Party Name | Northern Tool & Equipment Company, Inc. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Burnsville, MN 55306 |
| Party Name | Northern Tool & Equipment Company, Inc. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Burnsville, MN 55306 |
| Party Name | Northern Tool & Equipment Company, Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Burnsville, MN 55306 |
| Event Date | Event Description |
| Thursday, October 18, 2012 | NEW APPLICATION ENTERED |
| Thursday, October 18, 2012 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, October 19, 2012 | NOTICE OF DESIGN SEARCH CODE MAILED |
| Wednesday, January 2, 2013 | ASSIGNED TO EXAMINER |
| Wednesday, January 2, 2013 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Friday, January 4, 2013 | PRIORITY ACTION WRITTEN |
| Friday, January 4, 2013 | PRIORITY ACTION E-MAILED |
| Friday, January 4, 2013 | NOTIFICATION OF PRIORITY ACTION E-MAILED |
| Wednesday, February 27, 2013 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, February 27, 2013 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, February 28, 2013 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, March 1, 2013 | FINAL REFUSAL WRITTEN |
| Friday, March 1, 2013 | FINAL REFUSAL E-MAILED |
| Friday, March 1, 2013 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Thursday, March 28, 2013 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Thursday, March 28, 2013 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, March 28, 2013 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, April 1, 2013 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Saturday, April 20, 2013 | ASSIGNED TO LIE |
| Saturday, April 20, 2013 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, May 8, 2013 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, May 28, 2013 | PUBLISHED FOR OPPOSITION |
| Tuesday, May 28, 2013 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, July 23, 2013 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Friday, December 6, 2013 | SOU TEAS EXTENSION RECEIVED |
| Friday, December 6, 2013 | SOU EXTENSION 1 FILED |
| Friday, December 6, 2013 | SOU EXTENSION 1 GRANTED |
| Tuesday, December 10, 2013 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Saturday, December 21, 2013 | TEAS STATEMENT OF USE RECEIVED |
| Saturday, December 21, 2013 | USE AMENDMENT FILED |
| Wednesday, January 22, 2014 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Friday, January 31, 2014 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Tuesday, February 18, 2014 | STATEMENT OF USE PROCESSING COMPLETE |
| Monday, February 24, 2014 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Tuesday, February 25, 2014 | LAW OFFICE REGISTRATION REVIEW COMPLETED |
| Wednesday, February 26, 2014 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Tuesday, April 1, 2014 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, April 22, 2015 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Monday, April 1, 2019 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Wednesday, April 1, 2020 | TEAS SECTION 8 & 15 RECEIVED |
| Thursday, May 28, 2020 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Thursday, May 28, 2020 | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Thursday, May 28, 2020 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED |
| Friday, February 26, 2021 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Friday, February 26, 2021 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Friday, February 26, 2021 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Friday, February 26, 2021 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Friday, February 26, 2021 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Saturday, April 1, 2023 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |
| Wednesday, September 6, 2023 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, September 6, 2023 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Wednesday, September 6, 2023 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Wednesday, September 6, 2023 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Wednesday, September 6, 2023 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, May 2, 2024 | TEAS SECTION 8 & 9 RECEIVED |
| Friday, July 26, 2024 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Monday, August 5, 2024 | REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) |
| Monday, August 5, 2024 | NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED |
| Wednesday, January 31, 2024 | ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY |
| Monday, August 5, 2024 | REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED |