| Serial Number | 77488361 |
| Word Mark | STO |
| Filing Date | Monday, June 2, 2008 |
| Status | 800 - REGISTERED AND RENEWED |
| Status Date | Saturday, March 2, 2019 |
| Registration Number | 3741604 |
| Registration Date | Tuesday, January 26, 2010 |
| Mark Drawing | 4000 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, August 4, 2009 |
| Amendment to a Registration/Renewal Certificate | In the Statement, Page 2, lines 33 and 34, "NATURAL AND ARTIFICIAL BUILDING STONES;" is deleted. |
| Goods and Services | High performance polymer additive for use with a ready-mixed finish coating for concrete, masonry or plaster walls; high performance polymer additive for use with finish coating for concrete, masonry or plaster walls |
| Goods and Services | Finishes, namely, finishes for stucco; air and moisture barrier coating in the nature of a paint to be applied onto exterior wall sheathing with a roller, trowel or a spray pump; waterproofing air barrier, namely, a seamless air and moisture protection coating beneath exterior wall surfaces; paint primers; high performance polymer additive sold as a component of a ready-mixed finish coating for concrete, masonry or plaster walls; paints; colorings, namely, color pigments used to enhance the aesthetic appearance of structures; decorative interior and exterior coatings in the nature of fine variegated aggregate encased in a pure acrylic binder; protective coatings in the nature of paints, water sealants and barriers, water based coating for priming and sealing cementitious building substrates, namely, primers and sealants in the nature of paints; acrylic coating for use over cementitious substrates, concrete, masonry, stucco finishes, EIFS finishes, fiber cement board, wood and drywall; waterproofing undercoat for exterior coating applications for structures, namely, undercoats in the nature of paints; sealer coatings used in an air protection and/or moisture protection system; acrylic-based interior and exterior wall finish designed to look and feel like natural stone that can be applied over concrete, masonry, exterior insulation and finish systems or gypsum wall boards |
| Goods and Services | Direct applied high impact, moisture resistant exterior wall finish systems that provide resistance to abuse and weather, comprised of waterproof sealants, cement or glass fiber mat based gypsum sheeting, reinforced base coat and polymer based exterior finish; exterior insulation and finish system to provide decoration and protection to buildings consisting of adhesive attachment of insulation board, base coat embedded with coated glass fiber mesh and an acrylic polymer-based wall finish coating; an exterior insulation and finish system to provide decoration and protection to buildings consisting of adhesive attachment of insulation board, base coat embedded with coated glass fiber mesh and an acrylic polymer-based wall finish coating in combination with a liquid-applied air and moisture barrier installed on the substrate; adhesives and base coats used in an exterior insulation and finish system (EIFS) for exterior walls, in the nature of polymer-modified, cement based material; mesh used for impact resistance in an exterior insulation and finish systems (EIFS) in the nature of a coated glass fiber fabric; moisture barrier joint compound to be applied onto exterior wall sheathing board joints and rough openings in wall construction with a trowel; acrylic-based interior and exterior wall finish designed to look and feel like natural stone that can be applied over concrete, masonry, exterior insulation and finish systems or gypsum wall boards; waterproofing air barrier, namely, a seamless air and moisture protection system consisting of either a non-woven cloth reinforcement, a spunbond polyester fabric laminated to rubberized asphalt adhesive or a glass fiber self-adhesive mesh combined with an acrylic-based latex coating, each of which is then treated with a water-based latex coating, all beneath exterior wall surfaces; moisture barrier joint compound to be applied onto exterior wall sheathing board joints and rough openings in wall construction with a trowel, insulated plastic exterior siding |
| Goods and Services | Finish for walls, namely, interior and external surface finish for commercial and residential applications, namely, synthetic resin wall covering in the nature of plaster; cement stucco in the nature of a blend of Portland cement, fibers and chemical additives; cementitious materials, namely, bonding cement, plaster, and stucco; non-metal water repellant wall cladding for use on residential or commercial wall construction including a drainage cavity and a secondary weather resistive barrier wall assembly; [ natural and artificial building stones; ] building materials, namely, cement mixes, non-agricultural lime for use in construction, plaster, gravel, indoor and outdoor casting mixes composed of artificial material for making jointless wall-coating by spreading, smoothing, scraping and rough plastering; cement mixes, namely, a one component polymer modified cement based material used as an adhesive and base coat; ready-mixed silicone emulsions plaster; silicone emulsion plaster type coatings for concrete, masonary or stucco; mortars |
| 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 | Monday, August 18, 2008 |
| Primary Code | 001 |
| First Use Anywhere Date | Friday, June 30, 2000 |
| First Use In Commerce Date | Friday, June 30, 2000 |
| International Class | 002 - Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. |
| US Class Codes | 006, 011, 016 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, June 5, 2008 |
| Primary Code | 002 |
| First Use Anywhere Date | Saturday, December 31, 1977 |
| First Use In Commerce Date | Saturday, December 31, 1977 |
| 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 | Monday, August 18, 2008 |
| Primary Code | 017 |
| First Use Anywhere Date | Tuesday, December 31, 1985 |
| First Use In Commerce Date | Tuesday, December 31, 1985 |
| 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 | Monday, August 18, 2008 |
| Primary Code | 019 |
| First Use Anywhere Date | Saturday, December 31, 1977 |
| First Use In Commerce Date | Saturday, December 31, 1977 |
| Party Name | STO SE & CO. KGAA |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 13 - Limited Partnership |
| Address | STUEHLINGEN D-79780 DE |
| Party Name | Sto AG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Stuehlingen D-79780 DE |
| Party Name | Sto AG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Stuehlingen D-79780 DE |
| Party Name | Sto AG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Stuehlingen D-79780 DE |
| Event Date | Event Description |
| Thursday, June 24, 2021 | NOTICE OF SUIT |
| Wednesday, April 7, 2021 | NOTICE OF SUIT |
| Thursday, January 28, 2021 | NOTICE OF SUIT |
| Tuesday, November 17, 2020 | NOTICE OF SUIT |
| Saturday, March 2, 2019 | NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED |
| Saturday, March 2, 2019 | REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) |
| Saturday, March 2, 2019 | REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED |
| Saturday, March 2, 2019 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Tuesday, January 29, 2019 | TEAS SECTION 8 & 9 RECEIVED |
| Saturday, January 26, 2019 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |
| Wednesday, March 29, 2017 | AMENDMENT UNDER SECTION 7 ¿ PROCESSED |
| Thursday, January 5, 2017 | PAPER RECEIVED |
| Saturday, March 19, 2016 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED |
| Saturday, March 19, 2016 | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Saturday, March 19, 2016 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Tuesday, January 19, 2016 | TEAS SECTION 8 & 15 RECEIVED |
| Thursday, June 4, 2015 | COUNTERCLAIM OPP. NO. 999999 |
| Wednesday, May 28, 2014 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Tuesday, January 26, 2010 | REGISTERED-PRINCIPAL REGISTER |
| Friday, December 18, 2009 | EXTENSION OF TIME TO OPPOSE PROCESS - TERMINATED |
| Monday, August 10, 2009 | EXTENSION OF TIME TO OPPOSE RECEIVED |
| Tuesday, August 4, 2009 | PUBLISHED FOR OPPOSITION |
| Wednesday, July 15, 2009 | NOTICE OF PUBLICATION |
| Tuesday, June 30, 2009 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, June 23, 2009 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, June 23, 2009 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, June 23, 2009 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Tuesday, June 23, 2009 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, June 23, 2009 | EXAMINERS AMENDMENT -WRITTEN |
| Friday, March 13, 2009 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Friday, March 13, 2009 | NON-FINAL ACTION E-MAILED |
| Friday, March 13, 2009 | NON-FINAL ACTION WRITTEN |
| Friday, March 6, 2009 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Friday, February 13, 2009 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Wednesday, February 4, 2009 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Sunday, February 1, 2009 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Saturday, January 10, 2009 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, January 9, 2009 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, January 9, 2009 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, December 10, 2008 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, December 10, 2008 | NON-FINAL ACTION E-MAILED |
| Wednesday, December 10, 2008 | NON-FINAL ACTION WRITTEN |
| Wednesday, December 3, 2008 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Wednesday, December 3, 2008 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Friday, November 21, 2008 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Monday, November 10, 2008 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Friday, November 7, 2008 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Thursday, October 16, 2008 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, October 16, 2008 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, October 16, 2008 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Monday, August 25, 2008 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Monday, August 25, 2008 | NON-FINAL ACTION E-MAILED |
| Monday, August 25, 2008 | NON-FINAL ACTION WRITTEN |
| Monday, August 18, 2008 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, August 18, 2008 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, August 18, 2008 | ASSIGNED TO LIE |
| Thursday, August 14, 2008 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, July 22, 2008 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Tuesday, July 22, 2008 | NON-FINAL ACTION E-MAILED |
| Tuesday, July 22, 2008 | NON-FINAL ACTION WRITTEN |
| Tuesday, July 15, 2008 | ASSIGNED TO EXAMINER |
| Thursday, June 5, 2008 | NEW APPLICATION ENTERED IN TRAM |