| Serial Number | 79158445 |
| Word Mark | SHINETSU |
| Filing Date | Monday, December 2, 2013 |
| Status | 708 - PARTIAL SECTION 71 & 15 ACCEPTED AND ACKNOWLEDGED |
| Status Date | Thursday, May 18, 2023 |
| Registration Number | 5061347 |
| Registration Date | Tuesday, October 18, 2016 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, August 2, 2016 |
| Description of Mark | The mark consists of the term "SHINETSU", where "SHIN" is shown in deep blue and "ETSU", is shown in light green. The term is separated by light beams in a Greek cross shape, shown in white. |
| Goods and Services | Push button switch coverings, being parts for switches and keyboards for communications and/or electronic apparatus; electric connectors and contact devices; input devices for computers; input devices for mobile telephones, remote control devices for starting automobiles; electric switches and other switch components, namely, piezoelectric switch components; telecommunication transmitters, switches and base stations; view control film used for controlling light on screens to protect visibility from other angles; personal digital assistants and their parts; mobile telephones and their parts; parts for laser printers, namely, developing rollers, fusing rollers, transfer rollers, paper pressure rollers and feed rollers; switches used in automobiles for the control of audio components, climate control, remote keyless entry, mirrors, steering, and power windows, sun roofs, seat memory switch; toner cartridges, unfilled, for printers and photocopiers; plugs for use with laboratory containers; electronic connectors for connection inspection for semiconductors and high frequency electronic components; rare earth magnets; laboratory apparatus and instruments, namely, vent plugs for the culture of bacterium, yeast, and mold, UV lamp material made of silica glass, beakers made of silica glass, and flasks made of silica glass; optical machines and apparatus, namely, lenses made of silica glass, prisms made of silica glass; photographic cameras; cinematographic machines and apparatus; electromagnetic shielding material for telecommunication machines and apparatus; ear plugs for divers; processed glass for display of electronic devices; ozonisers and ozonators; electrolysers; egg-candlers; cash registers; coin counting or sorting machines; electric sign boards for displaying target figures, current outputs or the like; photo-copying machines; hand-operated calculators; time and date stamping machines; time clocks or time recording devices; punched card office machines; voting machines; automated billing machines for processing accounting information; electronic postage stamp checking apparatus; electronic mechanisms for coin-operated car parking gates; lifesaving apparatus and equipment; fire extinguishing apparatus; fire hose nozzles; sprinkler systems for fire protection; fire alarms; gas alarms; anti-theft warning apparatus, not for vehicles; protective helmets; railway signal apparatus, luminous or mechanical; vehicle breakdown warning triangles; road signs, luminous or mechanical; diving helmets; diving suits; weight belts for diving; compressed air bailout units for diving; simulators for the steering and control of vehicles; sports training simulators; measuring or testing machines and instruments, namely, connectors for inspecting semiconductors; electric power distribution or control machines and apparatus; rotary converters; optical phase modifiers; batteries and cells; electric or magnetic meters and testers; conductors, electric; magnetic cores; resistance wires; fuel cell electrodes; fire boats; satellites for scientific purposes; fire engines; gloves for protection against accidents; dust masks; gas masks; welding masks; fireproof garments; eyeglasses; spectacles; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; weight belts for scuba diving; wet suits for scuba diving; protective helmets for sports; air tanks for scuba diving; regulators for scuba diving; phonograph records featuring music; metronomes; electronic circuits and CD-ROMs recorded with automatic performance programs for electronic musical instruments; slide-rules; exposed cinematographic films; transparencies photography; slides photography; slide film mounts; recorded video discs and video tapes featuring musical performances; downloadable electronic publications, namely, books and pamphlets in the field of chemicals, adhesives, and resins used in the manufacture of products; fire hose; carrier cases specially adapted for electronic equipment, namely, semiconductor wafers, semiconductor photomasks, pellicle in semiconductor patterning, semiconductor reticles and IC tray |
| Amendment to a Registration/Renewal Certificate | In the statement, Page 3, line 32, "rock wool" is deleted, line 38 "soundproofing materials" is deleted and in line 39 "of rock wool not for building purposes" is deleted. |
| Goods and Services | Ethylene propylene rubber; acrylonitrile-butadiene rubber, acrylic rubber; isobutyleneisoprene rubber; styrene-butadiene rubber; natural rubber and other rubber, raw or semi-worked; electrical thermal insulators; semi-processed plastic substances, for use in semi-processed plastic substances, for use in the attachment, sealing, and potting of electric-electronic parts, for the sealing and protection of power modules, for optical path fillers, for sealing and protection of hybrid integrated circuits of electronic parts for automobiles, for vibration controls, for heat radiation in computer central processing units, for heat dissipation of semiconductors and transistors, for computer housings, mobile phone housings, cordless phone housings, radio machines, medical instruments and broadcast satellite signal converters, for building gaskets, for electromagnetic wave shielding around windows of computer rooms, polarization electrodes of ceramic vibrators and electrodes of medical instruments, for a heat conductive medium for holding and cooling compound semiconductor wafers, for making spring contacts and soldering, for making sensor components using variation of electric resistance, and for making conductive and semiconductive rolls for office automation equipment; silicone rubbers; silicone rubber sheets; silicone rubber compounds; heat-shrinkable silicone rubber tubing; liquid silicone molding rubber compounds; heat cured silicone rubbers and rubber compounds; one component RTV silicone rubbers and rubber compounds; two component RTV silicone rubbers and rubber compounds; one component LTV silicone rubbers and rubber compounds; two component LTV silicone rubbers and rubber compounds; fluorosilicone rubber compounds; liquid type silicone rubber for injection molding; thermal conductive silicone rubber sheets; electric conductive silicone rubbers; silicone boards, sheets and films applied for substrates to assemble electronic devices including LED; plastic film other than for wrapping; reflective silicone sheets for use as material in manufacture of electronic devices including LED; laminated silicone sheets for use as materials for circuit boards assembled with encapsulant and reflector; laminated rubber sheets for use as materials for circuit boards assembled with encapsulant and reflector; laminated plastic sheets for use as materials for circuit boards assembled with encapsulant and reflector; semi-finished molded plastic substances; electromagnetic shielding material; mica raw or partly processed; valves of india-rubber or vulcanized fiber; automobile engine gaskets; junctions for pipes not of metal; packing cushioning, stuffing materials of rubber or plastics; asbestos safety curtains; floating anti-pollution barriers; washers of rubber or vulcanized fiber; chemical fiber not for textile use; asbestos; [ rock wool; ] slag wool for use as a building insulator; rubber thread and covered rubber yarn not for textile use. chemical fiber yarn and thread not for textile use; asbestos fabrics; asbestos felt; insulating gloves; rubber cords and laces; asbestos cords and strings; asbestos nets; industrial packaging containers of rubber; rubber bottle stoppers; rubber lids and caps for industrial packaging containers; plastic sheeting for agricultural purposes; electrical condenser paper; asbestos paper; vulcanized fiber; plastic material in extruded form for use in impact protection; [ soundproofing materials of rock wool not for building purposes; ] asbestos mill boards; asbestos powder |
| Goods and Services | [ Cotton swabs for medical use ] |
| Indication of Colors claimed | The color(s) deep blue, light green and white is/are claimed as a feature of the mark. |
| Translation of Words in Mark | The wording "SHINETSU" has no meaning in a foreign language. |
| Goods and Services | Unprocessed synthetic molding resin compounds, namely, vinyl chloride-based resin, olefin-based resin, styrene-based resin, acrylic-based resin, acrylonitrile-butadiene-styrene (ABS) resin, polyphenylene ether resin, urethane-based resin, epoxy resin, polyimide resin, polycarbonate resin, polyethylene terephthalate (PET) resin, olefinic thermoelastomer resin, styrene-based thermoplastic elastomer resin, vinyl chloride thermoplastic elastomer resin, polyester-based thermoplastic elastomer resin; other unprocessed plastics in powder, liquid or paste form; organosilanes; organopolysiloxanes; aqueous emulsions, namely, insoluble silicones evenly dispersed in water with the aid of a surfactant, used: for release agents to prevent other materials from bonding on surfaces, to make lubricants, smoothing agents for making seals, release paper such as labels, release film, process release paper, and offset printing paper, to make textile softeners, water repellents, water absorption processing agents, and binders for paints, pigment-coatings, inks, solid preparations, namely, tablets and granules, to make capsules, condensers, integrated circuit substrates, extrusion molding ceramics, and glass laminated plates, to make gloss enhancers for fibers, auto body waxes, rubber products, products made with resins, foods, surface treatment of die-casting, and synthetic fibers, to make wax additives, anti-slip agents, and anti-blocking agents for paints and synthetic resins, and to make resin modifiers and paints; unprocessed silicone compounds, dielectic silicone compounds and modified silicone compounds, all for use in the manufacture of automotive engine and drive train systems, automotive electrical systems, automotive suspension systems, automotive interiors, automotive paints, and oil products, namely, greases and oil compounds, room temperature vulcanized rubbers and adhesives; anti-foaming agents; foaming control agents; mold release agents and paper release agents for use in the plastics industry; unprocessed silicone resins; textile treating agents; paint additives; chemical additives for plastics; additives for cosmetics and toiletries; chemical-based water repellents and water repellent coatings; silicone coatings for optical fibers; silanes; silane coupling agents; junction coating silicone resins for semiconductors; silicone adhesives; catalyst; curing agents; silicone, unprocessed silicone and modified epoxy resin for industrial use; artificial resins, unprocessed; chemicals for use in industry and science; pharmaceutical additives; chemicals; adhesives (not for stationery or household purposes); plant growth regulating preparations; unprocessed plastics in primary form; paper pulp; wood pulp; alcohols; aldehydes; esters for industrial purposes; other industrial chemicals for use as pheromone against pest and vermin; rare earths; rare earth metals; rare earth compounds; rare earth alloys; chemical compositions for developing, printing and enlarging photographs; photoresists; fertilizing preparations; reagent paper, other than for medical or veterinary purposes; artificial sweeteners chemical preparations; flour and starch for industrial purposes; silicone fluids |
| Goods and Services | [ Medical apparatus and instruments, namely, injection buttons, O-rings, caps, tubes and indwelling needle tubes used in connection with dialysis equipment, wound edge protectors made of silicone and balloons used in infusors for surgical and anesthesia purposes; silicone lenses for use in ultrasound machines probes for medical purposes, Foley and renal catheters, nasoenteric feeding tubes, PEG feeding tubes, PEG-J feeding tubes, Blake-type drainage tubes used for medical purposes; teething rings; ice bag pillows for medical purposes; triangular bandages; supportive bandages; catgut for surgical use; feeding cups for medical purposes; dropping pipettes for medical purposes; teats; medical ice bags; medical ice bag holders; baby bottles; finger guards for medical purposes; non-chemical contraceptives apparatus; artificial tympanic membranes; prosthetics or fillings materials not for dental use; esthetic massage apparatus for medical purposes; electric massage apparatus for household purposes; gloves for medical purposes; urinals for medical purposes; bed pans; ear picks ] |
| Goods and Services | Plastic packing containers, especially plastic embossed carrier tapes for surface mounting; meerschaum; yellow amber; loading pallets, not of metal; handling pallets, not of metal; beehives hive boxes or honeycombs; hairdresser's chairs; barbers' chairs; valves of plastics not including machine elements; reservoirs, not of metal nor of masonry; containers for transport not of metal; curtain fittings, not of metal; metal-substitute plastic fasteners; nails, wedges, nuts, screws, tacks, bolts, rivets and casters not of metal; washers not of metal, not of rubber or vulcanized fiber; locks non-electric, not of metal; cushions; Japanese floor cushions zabuton; pillows; mattresses; straw plaits; industrial packaging containers of wood, bamboo or plastics; trays, not of metal; embroidery frames; nameplates and door nameplates not of metal; flagpoles; fans for personal use, non-electric; stakes for plants or trees; beds for household pets; dog kennels; nesting boxes for small birds; step ladders and ladders not of metal; letter boxes, not of metal or masonry; hat hooks not of metal; shopping baskets; water tanks for household purposes not of metal or masonry; nonmetal fixtures using positional hooks to hang household goods; tool boxes not of metal; towel dispensers not of metal; furniture; indoor window blinds shade furniture; blinds of reed, rattan or bamboo; bead curtains for decoration; screens as furniture; oriental folding partition screens; benches; inflatable publicity objects; upright signboards of wood or plastics; man-made garden ponds structures; cradles; infant walkers; mannequins; costume display stands; sleeping bags for camping; picture frames; plaster sculptures; plastic sculptures; wooden sculptures; Japanese food wrapping sheets of wood; unworked or partly worked bamboo; bamboo skins unworked or partly worked material; unworked or partly worked rattan; raw or partly worked tree bark, rushes, hay, sedge, tusks and reeds; whalebones; sea shells and crusts; artificial horns; ivory unworked or partly worked material; animal horns; animal teeth; unworked or partly worked tortoiseshell; animal bone and coral |
| International Class | 001 - Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. |
| US Class Codes | 001, 005, 006, 010, 026, 046 |
| Class Status Code | 6 - Active |
| Class Status Date | Tuesday, January 13, 2015 |
| Primary Code | 001 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 005 - Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. |
| US Class Codes | 005, 006, 018, 044, 046, 051, 052 |
| Class Status Code | G - NOT AVAILABLE |
| Class Status Date | Thursday, May 18, 2023 |
| Primary Code | 005 |
| 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 | Tuesday, January 13, 2015 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 010 - Surgical, medical, dental, and veterinary apparatus and instruments, artificial limbs, eyes, and teeth; orthopedic articles; suture materials. |
| US Class Codes | 026, 039, 044 |
| Class Status Code | G - NOT AVAILABLE |
| Class Status Date | Thursday, May 18, 2023 |
| Primary Code | 010 |
| 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 | Tuesday, January 13, 2015 |
| Primary Code | 017 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 020 - Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics. |
| US Class Codes | 002, 013, 022, 025, 032, 050 |
| Class Status Code | 6 - Active |
| Class Status Date | Tuesday, January 13, 2015 |
| Primary Code | 020 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Shin-Etsu Chemical Co., Ltd. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Tokyo 100-0004 JP |
| Party Name | Shin-Etsu Chemical Co., Ltd. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | Tokyo 1000004 JP |
| Party Name | Shin-Etsu Chemical Co., Ltd. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | Tokyo 1000004 JP |
| Event Date | Event Description |
| Tuesday, January 13, 2015 | ASSIGNED TO EXAMINER |
| Thursday, January 8, 2015 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Monday, January 12, 2015 | LIMITATION FROM ORIGINAL APPLICATION ENTERED |
| Tuesday, January 13, 2015 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Wednesday, January 14, 2015 | NON-FINAL ACTION WRITTEN |
| Thursday, January 15, 2015 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Thursday, January 15, 2015 | REFUSAL PROCESSED BY MPU |
| Thursday, January 15, 2015 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Monday, July 13, 2015 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Saturday, January 17, 2015 | APPLICATION FILING RECEIPT MAILED |
| Saturday, January 31, 2015 | REFUSAL PROCESSED BY IB |
| Monday, July 13, 2015 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Monday, July 13, 2015 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, July 13, 2015 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, July 21, 2015 | ASSIGNED TO LIE |
| Tuesday, July 28, 2015 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, July 28, 2015 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Monday, August 3, 2015 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, August 5, 2015 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, August 18, 2015 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Tuesday, August 25, 2015 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Wednesday, September 2, 2015 | EXAMINERS AMENDMENT -WRITTEN |
| Wednesday, September 2, 2015 | EXAMINERS AMENDMENT E-MAILED |
| Wednesday, September 2, 2015 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Wednesday, September 2, 2015 | EXAMINER'S AMENDMENT ENTERED |
| Wednesday, September 2, 2015 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, September 8, 2015 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, September 22, 2015 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Friday, October 2, 2015 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Friday, October 2, 2015 | NON-FINAL ACTION WRITTEN |
| Friday, October 2, 2015 | NON-FINAL ACTION E-MAILED |
| Friday, October 2, 2015 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, May 3, 2016 | ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE |
| Tuesday, May 3, 2016 | ABANDONMENT NOTICE MAILED - FAILURE TO RESPOND |
| Wednesday, June 8, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Wednesday, June 8, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, June 15, 2016 | TEAS PETITION TO REVIVE RECEIVED |
| Wednesday, June 15, 2016 | PETITION TO REVIVE-GRANTED |
| Wednesday, June 15, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, June 15, 2016 | NOTICE OF REVIVAL - E-MAILED |
| Thursday, June 16, 2016 | ASSIGNED TO LIE |
| Saturday, June 18, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, June 18, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, June 20, 2016 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, June 23, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Monday, June 27, 2016 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, July 13, 2016 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, July 13, 2016 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, July 13, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Thursday, July 28, 2016 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, August 2, 2016 | PUBLISHED FOR OPPOSITION |
| Tuesday, August 2, 2016 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Thursday, February 23, 2017 | FINAL DISPOSITION NOTICE SENT TO IB |
| Tuesday, October 18, 2016 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, January 18, 2017 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Thursday, February 23, 2017 | FINAL DISPOSITION PROCESSED |
| Friday, March 17, 2017 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, October 18, 2021 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Saturday, November 6, 2021 | NEW REPRESENTATIVE AT IB RECEIVED |
| Thursday, August 4, 2022 | TEAS SECTION 7 REQUEST RECEIVED |
| Wednesday, October 12, 2022 | TEAS SECTION 71 & 15 RECEIVED |
| Monday, May 1, 2023 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Monday, May 8, 2023 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Thursday, May 18, 2023 | AMENDMENT UNDER SECTION 7 - PROCESSED |
| Thursday, May 18, 2023 | REGISTERED - PARTIAL SEC. 71 ACCEPTED & SEC. 15 ACK. |
| Thursday, May 18, 2023 | NOTICE OF ACCEPTANCE OF SEC. 71 & 15 - E-MAILED |
| Tuesday, June 20, 2023 | NOTICE OF UPDATED REGISTRATION CONFIRMATION EMAILED |
| Thursday, October 26, 2023 | INTERNATIONAL REGISTRATION RENEWED |
| Monday, January 29, 2024 | PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB |
| Monday, January 29, 2024 | INVALIDATION PROCESSED |
| Saturday, September 7, 2024 | NEW REPRESENTATIVE AT IB RECEIVED |
| Sunday, March 3, 2024 | PARTIAL INVALIDATION PROCESSED BY THE IB |
| Thursday, January 18, 2024 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |