| Serial Number | 79181716 |
| Word Mark | RACE CHIP |
| Filing Date | Wednesday, May 13, 2015 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, March 10, 2023 |
| Registration Number | 5029333 |
| Registration Date | Tuesday, August 30, 2016 |
| Mark Drawing | 5000 - Drawing with word(s) / letter(s) / number(s) in Stylized form |
| Published for Opposition Date | Tuesday, June 14, 2016 |
| Description of Mark | The mark consists of the wording "RACE CHIP" in stylized font. |
| Goods and Services | * Solid-state circuits being integrated circuits used as a nonvolatile storage medium, monolithic integrated circuits; * prerecorded magnetic data carriers featuring engine control software; * data processing equipment and computers; * fire-extinguishing apparatus; * connected electronic semiconductor power elements, * transistors, and diodes; computers and computer hardware and peripherals for connecting to the Internet and accessing Internet websites and databases; * electronic apparatus for tuning land and marine vehicle engines, comprising an electronic control unit that monitors engine performance and delivers re-calculated sensor values to the original engine control unit to increase engine performance; electronic apparatus for improving throttle performance in land and marine vehicles, comprising an electronic control unit that monitors throttle performance and response and delivers re-calculated sensor values to the original throttle control unit to increase throttle performance; parts and fittings for the aforesaid goods, including electrical cables; * electrical cables for data communications; * electrical cables for engine tuning; * wiring looms and wiring harnesses in the nature of electrical cables or wires for engine tuning apparatus; * electrical terminator plugs for engine tuning apparatus; electrical connector plugs for engine tuning apparatus; motor vehicle accessories, namely, microchips for improving engine performance in motor vehicles; electronic apparatus for controlling the injection process in motor vehicles; rotor and armature assemblies; * commutators; electronic speed sensors; testing, monitoring, and measuring apparatus for electric motors, namely, electric motor testing apparatus for measuring motor torque, for measuring motor performance, for measuring motor speed, for measuring motor life/endurance, and for measuring motor end play, armature balancing apparatus, electrical monitoring apparatus, and noise and vibration measurement apparatus; motor electronics, namely, * brushless motor controllers, stepper motor controllers, motor controllers, * noise suppression circuits, motor protection relays, over current and over voltage protection circuits, and speed controllers; thermostats for vehicles, temperature and pressure indicating, measuring, signalling and control apparatus, namely, temperature and pressure gauges and controls and central processing units therefore; * electric motor mounting brackets for vehicles and their parts; * digital camera lens modules; camera apparatus, namely, camera lenses, stationary and moveable lenses for zoom and focus, lens frames, electric motor assembly for moving moveable lenses, sensors for detecting movement of moveable lenses, Charge-coupled devices (CCD) and Complementary Metal Oxide Semiconductor (CMOS) devices for recording/capturing images, iris meters and lens shutters; video cameras and camcorders; portable telephones with camera and/or video camera function; * parts and fittings for all the aforesaid goods, all included in this class; * encoded key cards; electric cables and wires; connection cables; data transmission cables; odometers, distance recording apparatus; sensors and detectors for determining the technical performance in vehicles and for controlling the injection process in motor vehicles as well as torque transducers, voltage regulators and fuel consumption meters; electronic global positioning systems; global positioning system GPS apparatus; GPS navigation device; computerized vehicle engine analyzers; automatic vehicle speed control apparatus; automatic indicators of low pressure in vehicle tires; detecting and monitoring instruments, indicators and controllers, namely, heat detectors for vehicles |
| Transformation Information | 76720797 |
| Certificate of Correction for Registration | In the Statement, classes 9, 12, 37 and 42 have been corrected per the Restriction dated 4/30/2020, and per the Fnote dated 7/8/2020. |
| Goods and Services | Automotive * conversion * services, namely, installing specialty automotive equipment, repair, maintenance, cleaning and painting of vehicles, vehicle motors, wheels for vehicles and parts therefor; vehicle and vehicle wheel repair; finishing in the nature of body repair and tuning of * motor vehicles and * wheels for vehicles, included in this class; custom adaptation of automobiles and wheels for vehicles, included in this class; wheel balancing, alignment and repair; * installation services for vehicles and vehicle accessories, namely, installation of electronic modules for improving technical performance in vehicles and apparatus for controlling the injection process in motor vehicles; motor vehicle engine setting and adjustment services; vehicle engine maintenance services in the nature of adjustments and tuning of engine modification apparatus; * installation of vehicle handsfree communications accessories; installation of vehicle wireless handsfree communication accessories; installation of vehicle short-range handsfree communications accessories; * installation of vehicle engine setting and adjustment apparatus; * refurbishment and installation services to enhance the performance of * motors and engines for motor vehicles, * exhaust systems for motor vehicles and silencer systems for motor vehicles |
| Certificate of Correction for Registration | In the statement, classes 9, 12 and 37 have been corrected per the Restriction dated July 31, 2020, and per the Fnote dated October 8, 2020. |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Land vehicles; electric and combustion motors for land vehicles; electric motors for use in land vehicles; piezoelectric motor assemblies for use in land vehicles; electric motor assemblies for use in land vehicles; gear assemblies for electric motors for use in vehicles; * starter motors for internal combustion engines for land vehicles; * windscreen wiper assemblies for vehicles; head rests for vehicle seats, sun blinds for vehicles, caps for land vehicle petrol tanks, hub caps, vehicle hoods, fitted covers for vehicles, fitted seat covers for vehicles, steering wheel covers for vehicles, vehicle wheel rims, steering wheels for vehicles, knobs for vehicle gear sticks, safety belts for vehicle seats, bumpers for vehicles; anti-theft, security and safety devices and equipment for vehicles, namely, anti-theft devices, security alarms, and audible and visible notification appliances, and with the foregoing devices and equipment including those that feature biometric sensors; chassis parts for motor vehicles, namely, shock absorbers and springs for improving road holding and driving safety; wheels for vehicles; alloy wheels for vehicles; wheel trims for vehicles; wheel rims; hub caps for wheels; hub centre caps; wheel covers; wheel sprockets * ; parts and fittings for all the aforesaid goods * |
| Disclaimer with Predetermined Text | "CHIP" |
| Goods and Services | [ Software programming for electronic performance optimisation in vehicle engines; technical development of vehicle accessories, in particular electronic modules for improving technical performance in vehicles and apparatus for controlling the injection process in motor vehicles; engine control software maintenance and repair services, namely, reprogramming of engine control software for motor vehicles to improve engine performance ] |
| 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, March 10, 2023 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 012 - Vehicles; apparatus for locomotion by land, air, or water. |
| US Class Codes | 019, 021, 023, 031, 035, 044 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 10, 2023 |
| Primary Code | 012 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, March 10, 2023 |
| Primary Code | 037 |
| 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 | A - Sec. 7(d) - Class(es) in a Multiple Class Registration |
| Class Status Date | Thursday, July 9, 2020 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | RaceChip Chiptuning GmbH & CO. KG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | RaceChip Chiptuning GmbH & CO. KG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | RaceChip Chiptuning GmbH & CO. KG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Event Date | Event Description |
| Thursday, November 16, 2023 | TOTAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Wednesday, November 15, 2023 | INVALIDATION PROCESSED |
| Friday, November 10, 2023 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Friday, March 10, 2023 | CANCELLED SECTION 71 |
| Monday, August 30, 2021 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Wednesday, March 3, 2021 | ASSIGNED TO PETITION STAFF |
| Monday, October 12, 2020 | TEAS PETITION TO DIRECTOR RECEIVED |
| Friday, October 9, 2020 | REQUEST FOR TRANSFORMATION PROCESSED - PARTIAL |
| Thursday, October 8, 2020 | CORRECTION UNDER SECTION 7 ¿ PROCESSED |
| Monday, July 20, 2020 | REQUEST FOR TRANSFORMATION DENIED |
| Monday, July 13, 2020 | TEAS REQUEST FOR TRANSFORMATION RECEIVED |
| Thursday, July 9, 2020 | LIMITATION FROM THE IB EXAMINED AND ENTERED |
| Thursday, July 9, 2020 | CORRECTION UNDER SECTION 7 ¿ PROCESSED |
| Monday, June 29, 2020 | TEAS REQUEST FOR TRANSFORMATION RECEIVED |
| Friday, May 1, 2020 | LIMITATION OF GOODS RECEIVED FROM IB |
| Friday, February 10, 2017 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Friday, December 23, 2016 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Thursday, December 1, 2016 | FINAL DISPOSITION NOTICE SENT TO IB |
| Thursday, December 1, 2016 | FINAL DISPOSITION PROCESSED |
| Wednesday, November 30, 2016 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, August 30, 2016 | REGISTERED-PRINCIPAL REGISTER |
| Friday, August 19, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, June 14, 2016 | PUBLISHED FOR OPPOSITION |
| Wednesday, June 1, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, June 1, 2016 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, May 25, 2016 | NOTICE OF PUBLICATION |
| Thursday, May 12, 2016 | EXAMINERS AMENDMENT MAILED |
| Wednesday, May 11, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, May 11, 2016 | EXAMINER'S AMENDMENT ENTERED |
| Wednesday, May 11, 2016 | EXAMINERS AMENDMENT -WRITTEN |
| Friday, May 6, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, May 5, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, May 5, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, March 11, 2016 | REFUSAL PROCESSED BY IB |
| Friday, February 19, 2016 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Thursday, February 18, 2016 | REFUSAL PROCESSED BY MPU |
| Wednesday, February 17, 2016 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Tuesday, February 16, 2016 | NON-FINAL ACTION WRITTEN |
| Saturday, February 13, 2016 | APPLICATION FILING RECEIPT MAILED |
| Tuesday, February 9, 2016 | ASSIGNED TO EXAMINER |
| Tuesday, February 9, 2016 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, February 4, 2016 | SN ASSIGNED FOR SECT 66A APPL FROM IB |