| Serial Number | 79144783 |
| Word Mark | SO |
| Filing Date | Wednesday, September 4, 2013 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, July 9, 2021 |
| Registration Number | 4658188 |
| Registration Date | Tuesday, December 23, 2014 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, October 7, 2014 |
| Goods and Services | Medical training and teaching; medical training and teaching relating to procedure, techniques and instruments used for endoscopic surgery; organisation of educational conferences and symposia in the field of medical science; providing online non-downloadable electronic publications in the nature of books, journals, magazines, newsletters and newspapers in the field of medical industry; production of videos in the field of medical education and medical information, not for movies or television programs and not for advertising or publicity; publication of books, namely, training materials for medical professionals; publishing and issuing scientific papers in relation to medical technology |
| Description of Mark | The mark consists of the stylized letters "SO" appearing overlapping one another. The letter "S" appears in the color blue at the top left, light blue in the upper middle potion, and dark blue in the bottom right portion of the letter. The letter "O" appears in the color dark blue near the top left, and then blue and light blue in the bottom left of the letter. There is a slight vertical gap between the middle of the letter "O". The right side of the letter "O" is blue on the upper right portion, and dark blue on the lower right portion. The color white appearing in the mark represents background area and is not claimed as a feature of the mark. |
| Goods and Services | DNA chips; chromatography apparatus for laboratory use; optical fiber scopes for industrial use; bore scopes; endoscopes for industrial use; light source apparatus for use in photographic apparatus and instruments, namely, flash bulbs, camera flashes and flash lamps for cameras; light source apparatus for use in optical machines and apparatus, namely, LED lamps, laser lamps, arc lamps, discharge lamps and metallic-filament lamps, all afore-mentioned being optical lamps; photographic apparatus and instruments, namely, photographic cameras and lenses for photographic apparatus; cameras; magnifying glasses; biological microscopes; polarizing microscopes; microscopes; video microscopes; Ultrasound probes, not for medical use; automatic combustion control machines and instruments; automatic fluid-composition control machines and instruments; automatic liquid-flow control machines and instruments; automatic pressure control machines and instruments; flow meters; water meters; digital cameras for microscopes; light source apparatus for use in optical communications, namely, LED lamps, laser lamps, arc lamps, discharge lamps and metallic-filament lamps, all afore-mentioned being optical lamps for use with video cameras; liquid crystal display panels; video monitors; computer monitors; optical disc players; optical disc recorders; digital audio players; digital audio recorders; digital video players; digital video recorders; television receivers; portable digital audio players; smart phones; mobile phones; navigation apparatus for vehicles in the nature of on-board computers; head-mounted video displays; video microscopes for medical use; video monitors for medical use; video recorders for medical use; printers for medical use; digital cameras; video cameras; electron microscopes; video processors for use with medical and surgical apparatus and instruments; video processors for medical endoscopes; blank optical recording media, namely, digital video discs, digital versatile discs, CDs, DVDs, and high definition digital disks, which are blank; blank magnetic recording media, namely, magnetic discs; personal digital assistants for electronic books; electronic book reader; electronic downloadable publications, namely, magazines, books, manuals and newspapers for use by medical professionals in the field of science and medicine; tablet computers; notebook computers; computers; computer peripheral devices; printers; downloadable computer software for storing, managing, processing, browsing and transmitting image data; microscopic software to control microscopes, capture images, and process and analyze images captured by digital imaging devices for medical use; software for the operation of medical apparatus and instruments, namely, medical and surgical endoscopes, a video endoscope, a video printer, a system controller, a monitor, a display panel, an operating panel, a remote controller; image analysis processing software for microscopes or endoscopes; computer software for use in recording endoscopic procedures; software for controlling and operating technical endoscopes; computer software for use in database management and computer graphics software for use in medical applications in hospital operating rooms; computer hardware and software for medical imaging apparatus; software for medical imaging equipment, namely, for interpreting the results of endoscopes; charge-coupled devices (CCD); spectacles, eyeglasses and goggles, namely, dust protective goggles, safety goggles |
| Goods and Services | Installation of medical machines and apparatus; repair of fiber scopes for medical purpose; repair or maintenance of endoscopes for industrial purpose; repair or maintenance of fluid management system, consisting of a medical pump device, tubes, adaptors, remote control, video monitors and power operated medical tools used in endoscopic surgery; repair or maintenance of apparatus for cleaning or sanitizing of endoscopes; repair or maintenance of digital video scopes for medical use; maintenance of apparatus for recording and playing images for medical purposes; maintenance of apparatus for recording and playing videos for medical purposes; repair or maintenance of medical machines and apparatus; repair or maintenance of endoscopes for medical use; repair or maintenance of thoracoscopes; repair or maintenance of microscopes for medical use; repair or maintenance of microscopes; repair or maintenance of optical machines and instruments; repair or maintenance of photographic machines and apparatus; repair or maintenance of electronic machines; repair or maintenance of head-mounted video displays; repair or maintenance of telecommunication machines and apparatus; repair or maintenance of measuring and testing machines and instruments; sanitization or sterilization of digital video scopes for medical use; sanitization or sterilization of medical apparatus and instruments; providing information about sanitization or sterilization of digital video scopes for medical use and other medical apparatus and instruments |
| Pseudo Mark | SONY OLYMPUS |
| Indication of Colors claimed | The color(s) blue, dark blue and light blue is/are claimed as a feature of the mark. |
| Goods and Services | Probes for medical purposes; portable light source for use with rigid and flexible medical endoscopes, namely, light emitting diode (LED) lamps, laser lamps, arc lamps, discharge lamps and metallic-filament lamps, all afore-mentioned lamps being structural parts of medical endoscopes; medical operating lamps; quartz lamps for medical purposes; electric scalpels for surgical purposes; biopsy forceps; surgical clip; lasers for medical purposes; polypectomy snares; high frequency snares for endoscopic membranectomy; rigid and flexible medical endoscopes; fluid management system, consisting of a medical pump device, tubes, adaptors, remote control, video monitors and power operated medical tools used in endoscopic surgery; structural parts of medical apparatus, namely, control apparatus of gas supply and emission for medical apparatus; apparatus and instruments for use in the sanitization and sterilization of endoscopes; capsule endoscope that is swallowed, which moves through the digestive tract and is excreted for use in diagnosis and treating diseases of the gastrointestinal tract; digital video scopes for medical use; endoscopes for medical use; surgical endoscopes; surgical microscopes; microscopes for medical use; gastro scopes; apparatus for blood analysis; blood pressure monitors; cannulae; cannulae for anaesthetics with receptacles; catheters; cerclage wires; clinical thermometers; defibrillators; devices for measuring blood sugar; devices for measuring intracranial pressure; disposable syringes; dressing forceps for surgical use; electrocardiographs; electrodes for medical use; endoprostheses; endoscopic equipment; endoscopy cameras; high frequency electromagnetic therapy apparatus; hydrophilic guide wire to track catheters; intra-ocular lenses; irrigators for medical use; knives for medical use; lasers for surgical and medical use; medical and surgical catheters; medical and surgical knives for cutting human or animal tissue and organs; medical and surgical laparoscopes; medical cutting devices; medical devices for dosimetry purposes in the field of radiotherapy; medical diagnostic apparatus, analytical apparatus for medical purposes and blood pressure measuring apparatus; medical hearing instruments and parts of such devices; medical instruments for cutting tissue; medical operating lamps; medical radiation apparatus; medical scissors; medical stents; medical ultrasound apparatus; medicinal catheters; needles for medical purposes; patient monitoring sensors and alarms; pulse meters; sphygmomanometers; stents; stethoscopes and sphygmomanometers; surgical amputaters; surgical devices and instruments; surgical instruments for use in orthopedic and spinal surgery; surgical perforators; telemetry devices for medical applications; thoracoscopes; ultrasonic medical diagnostic apparatus; steam sterilizers for medical and surgical apparatus and instruments; medical and surgical endoscopic systems, comprising medical and surgical endoscopes, video processors, light sources, digital image filing units, and washing machines for medical endoscopes sold as a unit; medical apparatus, namely, workstations comprising a computer terminal, a display screen and a central data processor for controlling video processors, light sources, and electrosurgical operating instruments for use with endoscopes; medical and surgical laparoscopes |
| Goods and Services | Design of fluid management system, consisting of a medical pump device, tubes, adaptors, remote control, video monitors and power operated medical tools used in endoscopic surgery; maintenance of computer software for fluid management system, consisting of a medical pump device, tubes, adaptors, remote control, video monitors and power operated medical tools used in endoscopic surgery; design of apparatus for recording and playing images for medical purposes; design of apparatus for recording and playing videos for medical purposes; planning and layout design services for integrated layouts of medical apparatus and video equipment in operating rooms; design and development of integration of computer systems with medical apparatus and video equipment; computer programming; computer software design, computer programming, and maintenance of computer software; computer programming in the medical field; providing non-downloadable computer software for storing, managing, processing, browsing and transmitting image data via the Internet; rental of image data storage area, namely, rental of space on database server to third parties; Technical advice relating to the performance and operation of computers, onboard automobile computers, and other machines, namely, computer peripherals and computer hardware that require high levels of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them; providing temporary use of online non-downloadable computer program for use in database management and computer graphics software for use in medical applications in hospital operating rooms; providing temporary use of non-downloadable computer software for storing, managing, processing, browsing and transmitting image data; providing temporary use of non-downloadable microscopic software to control microscopes, capture images, and process and analyze images captured by digital imaging devices for medical use; providing temporary use of non-downloadable software for the operation of medical apparatus and instruments, namely, medical and surgical endoscopes, a video endoscope, a video printer, a system controller, a monitor, a display panel, an operating panel, a remote controller; providing temporary use of non-downloadable image analysis processing software for microscopes or endoscopes; providing temporary use of non-downloadable computer software for use in recording endoscopic procedures; providing temporary use of non-downloadable software for controlling and operating technical endoscopes; providing temporary use of non-downloadable computer software for use in database management and computer graphics software for use in medical applications in hospital operating rooms; providing temporary use of non-downloadable computer software for medical imaging apparatus; providing temporary use of non-downloadable software for medical imaging equipment, namely, for interpreting the results of endoscopes |
| 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, July 9, 2021 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, July 9, 2021 |
| Primary Code | 010 |
| 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, July 9, 2021 |
| Primary Code | 037 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, July 9, 2021 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, July 9, 2021 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Sony Olympus Medical Solutions Inc. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Tokyo 192-0904 JP |
| Party Name | Sony Olympus Medical Solutions Inc. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | Tokyo 192-0904 JP |
| Party Name | Sony Olympus Medical Solutions Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | Tokyo 192-0904 JP |
| Event Date | Event Description |
| Saturday, July 8, 2023 | INTERNATIONAL REGISTRATION RENEWED |
| Wednesday, January 25, 2023 | GENERIC MADRID TRANSACTION SENT TO IB |
| Wednesday, January 25, 2023 | INVALIDATION REVIEWED - NO ACTION REQUIRED BY OFFICE |
| Wednesday, January 25, 2023 | GENERIC MADRID TRANSACTION CREATED |
| Sunday, June 12, 2022 | REFUSAL PROCESSED BY IB |
| Wednesday, March 9, 2022 | TOTAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Friday, July 9, 2021 | CANCELLED SECTION 71 |
| Monday, December 23, 2019 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Monday, June 1, 2015 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, May 11, 2015 | FINAL DISPOSITION NOTICE SENT TO IB |
| Monday, May 11, 2015 | FINAL DISPOSITION PROCESSED |
| Monday, March 23, 2015 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, December 23, 2014 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, October 7, 2014 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, October 7, 2014 | PUBLISHED FOR OPPOSITION |
| Wednesday, September 17, 2014 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, September 2, 2014 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Wednesday, August 27, 2014 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, August 12, 2014 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, August 12, 2014 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, August 12, 2014 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Monday, July 21, 2014 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Monday, July 21, 2014 | FINAL REFUSAL E-MAILED |
| Monday, July 21, 2014 | FINAL REFUSAL WRITTEN |
| Tuesday, June 24, 2014 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, June 24, 2014 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, June 21, 2014 | ASSIGNED TO LIE |
| Wednesday, June 11, 2014 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, May 15, 2014 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Thursday, May 15, 2014 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Thursday, May 1, 2014 | REFUSAL PROCESSED BY IB |
| Wednesday, April 16, 2014 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Wednesday, April 16, 2014 | REFUSAL PROCESSED BY MPU |
| Wednesday, April 16, 2014 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Tuesday, April 15, 2014 | NON-FINAL ACTION WRITTEN |
| Friday, April 11, 2014 | APPLICATION FILING RECEIPT MAILED |
| Monday, April 7, 2014 | ASSIGNED TO EXAMINER |
| Monday, April 7, 2014 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, April 3, 2014 | SN ASSIGNED FOR SECT 66A APPL FROM IB |