| Serial Number | 79244766 |
| Word Mark | PERFORMANCE ON TRACK |
| Filing Date | Thursday, June 28, 2018 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, November 12, 2019 |
| Registration Number | 5905727 |
| Registration Date | Tuesday, November 12, 2019 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, August 27, 2019 |
| Goods and Services | Education services, namely, providing classes, seminars and workshops in the field of railway design and construction; training in the field of railway design and construction; continuous training in the field of railway design and construction; advanced training services in the field of railway design and construction; providing of further training courses in the field of railway design and construction |
| Goods and Services | Measuring, signalling and checking apparatus and instruments, namely, computers, speed indicators, railway signals; railway traffic safety appliances, namely, railway signals; devices for monitoring the condition of railway switches in the nature of temperature sensors, humidity sensors; infrared sensors, proximity sensors, electronic wheel detection switches; electro-dynamic remote control apparatus for railway points; computer programs for monitoring and controlling of railway traffic safety appliances, for monitoring and controlling of switch diagnosis devices and switch drive or setting devices, and for monitoring the condition of railway switches; signal transmission apparatus, namely, transmitters of electronic signals; electronic apparatus for the remote control of signals, namely, remote control for railway signals; data processing apparatus; radio-frequency identification (RFID) tags, radio-frequency identification (RFID) readers |
| Goods and Services | Building materials, not of metal, namely, concrete poles, concrete slabs; railway sleepers, not of metal, concrete railway sleepers for fixed tracks for railway track systems; parts of concrete, namely, concrete beams, concrete floors, concrete blocks for fixed tracks for railway track systems; fixed tracks for railway track systems, namely, railway sleepers, not of metal; railway materials, not of metal, namely, railroad ties |
| Goods and Services | Motors, other than for land vehicles; machine coupling and transmission components, except for land vehicles; electric, pneumatic and hydraulic drives for railway track superstructure parts, in particular for changing the position of switches; hydraulic transmissions, other than for land vehicles; cranes, elevating apparatus, namely, elevators; track machining trains movable on rails in the nature of power-operated grinders for railway construction |
| Goods and Services | Packaging and storage of goods |
| Goods and Services | Common metals and their alloys; cast iron, unwrought or semi-wrought; irons and steels, cast, rolled and hardened; bronze; metallic materials for railway tracks, namely, steel rails for rails of railway tracks, metal railway turntables, metal railway crossovers; railway steel, track superstructure parts, namely, metal tracks for rail vehicles, metal railway crossovers; rails of metal, bainitic rails of metal, switches in the nature of metal railway crossovers, metal railway turntables; and railway crossings in the nature of metal railway crossovers, metal railway turntables as well as structural parts thereof, metal slide chairs being parts of railway tracks; metal fasteners for railway tracks in the nature of metal switch clips and metal clips for fastening rails to railway tracks; metal check rails; rolling apparatus for tongue rails in the nature of rolled metal rails; frog points of metal being railway points; fish plates of metal for connecting railway tracks; expansion joints of metal for railway tracks, railway sleepers of metal, metal tracks for rail vehicles, switch drive in the nature of metal rods for railway tracks; setting devices in the nature of metal rods for railway tracks; devices for locking the position of switches in the nature of metal bolts; switch-lock devices, namely, metal locks for railway switches; metal hardware, namely, bolts, nails, springs, washers, nuts, screws; rail fastenings of metal, in particular metal sleeper screws, metal coach screws, metal springs, metal washers, metal shims; bolts of metal; pipes of metal |
| Goods and Services | Rail support plates, namely, insulators for railway tracks |
| Goods and Services | Telecommunication services, namely, electronic transmission of messages, providing electronic message alerts via the internet, ISDN services; data communication services, namely, electronic data transmission |
| Goods and Services | Import-export agency services; sales promotion for others; the aforesaid services in particular in the field of foundry raw materials, iron, steel and their derivatives, foundry machineries, foundry furnaces and foundry products |
| Goods and Services | Scientific and technological services, namely, scientific research, analysis, and testing in the field of railway materials and railway design; industrial analysis in the nature of machine engineering analysis, and research services in the field of railway materials and railway design; technical testing of railway materials; design and development of computer hardware and software; engineering services; material testing; development and testing of rail parts, particularly switches, crossings, extension joints and parts thereof as well as actuators therefor, by order of a third party; realisation or accomplishment of technical tests, namely, material testing services of rail parts, particularly switches, crossings, extension joints and parts thereof as well as actuators therefor; software development for controlling of rail parts, particularly switches, crossings, extension joints and parts thereof as well as actuators therefor |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, November 9, 2018 |
| Primary Code | 038 |
| 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 | Friday, November 9, 2018 |
| 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, 031, 034, 035 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, November 9, 2018 |
| Primary Code | 007 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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, November 9, 2018 |
| Primary Code | 009 |
| 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 | Friday, November 9, 2018 |
| 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 | Friday, November 9, 2018 |
| 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 | Friday, November 9, 2018 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, November 9, 2018 |
| Primary Code | 039 |
| 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, November 9, 2018 |
| 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, November 9, 2018 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | voestalpine Railway Systems GmbH |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | AT |
| Party Name | voestalpine Rail Technology GmbH |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | AT |
| Party Name | voestalpine Schienen GmbH |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 27 - NOT AVAILABLE |
| Address | AT |
| Party Name | voestalpine VAE GmbH |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 27 - NOT AVAILABLE |
| Address | AT |
| Party Name | voestalpine Schienen GmbH |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 27 - NOT AVAILABLE |
| Address | AT |
| Party Name | voestalpine VAE GmbH |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 27 - NOT AVAILABLE |
| Address | AT |
| Party Name | voestalpine Schienen GmbH |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 27 - NOT AVAILABLE |
| Address | AT |
| Party Name | voestalpine VAE GmbH |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 27 - NOT AVAILABLE |
| Address | AT |
| Event Date | Event Description |
| Saturday, November 17, 2018 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Thursday, November 8, 2018 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Friday, November 9, 2018 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, November 9, 2018 | ASSIGNED TO EXAMINER |
| Tuesday, November 13, 2018 | APPLICATION FILING RECEIPT MAILED |
| Friday, November 16, 2018 | NON-FINAL ACTION WRITTEN |
| Saturday, December 15, 2018 | REFUSAL PROCESSED BY MPU |
| Saturday, December 15, 2018 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Saturday, January 5, 2019 | REFUSAL PROCESSED BY IB |
| Friday, February 22, 2019 | CORRECTION TRANSACTION RECEIVED FROM IB |
| Thursday, March 7, 2019 | CORRECTION FROM IB ENTERED - NO REVIEW REQUIRED |
| Friday, March 29, 2019 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, March 29, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, March 29, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, April 18, 2019 | FINAL REFUSAL WRITTEN |
| Thursday, April 18, 2019 | FINAL REFUSAL E-MAILED |
| Thursday, April 18, 2019 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Friday, June 21, 2019 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Friday, June 21, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, August 7, 2019 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Friday, June 21, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, July 12, 2019 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Sunday, July 21, 2019 | ASSIGNED TO LIE |
| Wednesday, August 7, 2019 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, August 7, 2019 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, August 23, 2019 | NOTIFICATION PROCESSED BY IB |
| Tuesday, August 27, 2019 | PUBLISHED FOR OPPOSITION |
| Tuesday, August 27, 2019 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, November 12, 2019 | REGISTERED-PRINCIPAL REGISTER |
| Thursday, March 5, 2020 | GENERIC MADRID TRANSACTION CREATED |
| Friday, October 9, 2020 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Wednesday, February 12, 2020 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Thursday, March 5, 2020 | GENERIC MADRID TRANSACTION SENT TO IB |
| Friday, April 24, 2020 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Sunday, July 7, 2024 | NEW REPRESENTATIVE AT IB RECEIVED |