| Serial Number | 79205490 |
| Word Mark | SCHAEFFLER REPXPERT |
| Filing Date | Friday, December 16, 2016 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, July 3, 2018 |
| Registration Number | 5505335 |
| Registration Date | Tuesday, July 3, 2018 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, April 17, 2018 |
| Goods and Services | Educational services, namely, planning and conducting of courses and seminars in the field of motor vehicles, in particular, in connection with the maintenance and repair of motor vehicles, the fitting and removal of motor vehicle parts, and the recycling and exploitation of used motor vehicle parts |
| Goods and Services | Recorded data carriers, namely, prerecorded CDs and software featuring audio and video information on the subject of motor vehicle products |
| Goods and Services | Hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, over-running alternator pulley tool kits comprising multipoint adapters, bits for hand drills, and socket sets; hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, special tools for timing chain repair, comprising mounting tools, locking pins and rods, bolts and pullers; hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, double clutch basic, supplementary and reset tool kits, each comprising pullers, bolts, plugs, and wrenches; hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, clutch centering pins; hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, centering sleeves; hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, dual-mass flywheel special tools, comprising dial test indicator stand, gear locking spacers, and gauges; hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, dry double clutch special tools, comprising gauges, hooks, pliers, spindle, screws, bolts, and micrometers; hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, self-adjusting clutch mounting tools, comprising tapered bushings, centering pin, pressure piece and spindle, studs, nuts, releasing tool; hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, rear axle repair tool kits, comprising spindles, coupling sleeves, thrust tube, axial bearings, nuts and lubrication; hand-operated assembly tools for motor vehicles parts and elements, in particular for the assembly and disassembly of clutches, namely, drive shaft cv joint repair kits, comprising a hydraulic spindle, and pliers |
| Goods and Services | Instructional and teaching materials, except apparatus, for instruction and training in the field of motor vehicles, namely, pamphlets, catalogues, books, and diagrams; product catalogues in the field of motor vehicles |
| Goods and Services | Providing an Internet portal, namely, providing a globally accessible on-line forum for transmitting information on products and services of all kinds in the motor vehicle sector, in particular in the fields of spare parts, drive trains, engine elements, maintenance, repair, workshop management, and motor vehicle sales |
| Goods and Services | Services in connection with the cleaning, maintenance and repair of motor vehicles and motor vehicle parts |
| Pseudo Mark | SCHAEFFLER REP EXPERT |
| Goods and Services | Motor land vehicle parts, namely, drive trains and clutches, self-adjusting clutches, double clutches, clutch front power take-offs, clutch pressure plates, clutch discs, clutch dual-mass flywheels, clutch solid flywheels, damped flywheel clutches, continuously variable transmission dampers, clutch pilot bearings, clutch lines, clutch concentric slave cylinders, clutch master cylinders, clutch release bearings, torque converters; pulleys for use with land vehicles, namely, tensioner pulleys, idler pulleys, overrunning alternator belt pulleys, deflection belt pulleys, and tensioner idler arms; generator freewheels in the nature of overrunning alternator belt pulleys for land vehicles; wheel bearings for land vehicles; clutch repair kits for motor land vehicles comprising clutch discs, clutch pressure plates, clutch central releases, clutch actuators, clutch springs, clutch centering sleeves, clutch bearings, clutch retaining rings, and clutch bolts; transmission timing chain repair kits for motor land vehicles, except for motors or engines, comprising transmission guide rails, tensioning rails, timing chains, toothed gears for crankshafts, chain locks, tensioners; drive belt kits comprising drive belts and drive gears, sold as a unit for land vehicles; gearbox repair kits for land vehicles comprising axle bearings, transmission shaft seals and transmission shaft gaskets; torque converters for land vehicles; land vehicle clutch flywheels; clutch master cylinders and clutch slave cylinders for land vehicles; belt timing chains for land vehicle transmissions; camshaft drive belts for land vehicles, except for motors or engines; land vehicle axle parts, namely, control arms, ball joints, wheel bearings, and brake discs; central transmission valves for land vehicles, namely, for adjusting camshaft phasing unit control valves, except for motors or engines; tappets for land vehicles, except for motors or engines; transmission steering knuckle pins for use with land vehicles; supporting and guiding ball joints for land vehicles; stub shaft couplings for land vehicles; automobile suspension system components, namely, buffer suspension mounts, suspension dust caps protection kits, suspension strut bearings, suspension strut mounts and suspension strut mount kits; land vehicle steering parts, namely, axial joints, inner and outer tie rods and tie rod ends |
| Goods and Services | Creating of market analysis on-line computer programs for the motor vehicle sector for use in retail and workshop sales planning |
| International Class | 008 - Hand tools and implements (hand-operated); cutlery; side arms; razors. |
| US Class Codes | 023, 028, 044 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, April 27, 2017 |
| Primary Code | 008 |
| 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 | Thursday, April 27, 2017 |
| 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 | 6 - Active |
| Class Status Date | Thursday, April 27, 2017 |
| Primary Code | 012 |
| 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 | Thursday, April 27, 2017 |
| Primary Code | 016 |
| 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 | 6 - Active |
| Class Status Date | Thursday, April 27, 2017 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| 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 | Thursday, April 27, 2017 |
| Primary Code | 038 |
| 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 | Thursday, April 27, 2017 |
| 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 | Thursday, April 27, 2017 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Schaeffler Technologies AG & Co. KG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 13 - Limited Partnership |
| Address | DE |
| Party Name | Schaeffler Technologies AG & Co. KG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 13 - Limited Partnership |
| Address | DE |
| Party Name | Schaeffler Technologies AG & Co. KG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 13 - Limited Partnership |
| Address | DE |
| Event Date | Event Description |
| Monday, July 3, 2023 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Tuesday, June 2, 2020 | REVIEW OF CORRESPONDENCE COMPLETE - ADDRESS UPDATED |
| Thursday, April 2, 2020 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Thursday, April 2, 2020 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Thursday, April 2, 2020 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, April 2, 2020 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Friday, October 26, 2018 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Friday, October 5, 2018 | FINAL DISPOSITION NOTICE SENT TO IB |
| Friday, October 5, 2018 | FINAL DISPOSITION PROCESSED |
| Wednesday, October 3, 2018 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, July 3, 2018 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, April 17, 2018 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, April 17, 2018 | PUBLISHED FOR OPPOSITION |
| Friday, April 13, 2018 | NOTIFICATION PROCESSED BY IB |
| Wednesday, March 28, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, March 28, 2018 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, March 28, 2018 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Thursday, March 15, 2018 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, March 14, 2018 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, March 13, 2018 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, March 13, 2018 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Monday, December 11, 2017 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Monday, December 11, 2017 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Monday, November 6, 2017 | FINAL REFUSAL MAILED |
| Friday, November 3, 2017 | FINAL REFUSAL WRITTEN |
| Thursday, September 21, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, September 20, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, September 20, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Saturday, May 20, 2017 | REFUSAL PROCESSED BY IB |
| Wednesday, May 3, 2017 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Wednesday, May 3, 2017 | REFUSAL PROCESSED BY MPU |
| Tuesday, May 2, 2017 | APPLICATION FILING RECEIPT MAILED |
| Sunday, April 30, 2017 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Saturday, April 29, 2017 | NON-FINAL ACTION WRITTEN |
| Thursday, April 27, 2017 | ASSIGNED TO EXAMINER |
| Thursday, April 27, 2017 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, April 20, 2017 | SN ASSIGNED FOR SECT 66A APPL FROM IB |