| Serial Number | 98004460 |
| Word Mark | STO |
| Filing Date | Friday, May 19, 2023 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, December 5, 2023 |
| Registration Number | 7236609 |
| Registration Date | Tuesday, December 5, 2023 |
| Mark Drawing | 5000 - Drawing with word(s) / letter(s) / number(s) in Stylized form |
| Published for Opposition Date | Tuesday, September 19, 2023 |
| Goods and Services | Providing training courses in the field of building construction; Preparing, arranging and conducting of workshops in the field of building construction |
| Description of Mark | The mark consists of the word "STO" with interconnecting letters in a lowercase stylized font. |
| In Another Form Statement | The mark was first used anywhere in a different form other than that sought to be registered at least as early as 12/31/1977 |
| Goods and Services | Non-metallic building materials, namely, wall panels not of metal; Non-metal facade panels and cladding for building and construction purposes; facade panels made from ceramic, stone, granite, marble, building glass and clinker in the nature of pre-cast concrete; non-metal tiles; 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; 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, masonry or stucco; mortars for building; Exterior wall assembly system primarily composed of non-metal, non-insulating components to provide decoration and protection to buildings consisting of exterior cladding panel, non-insulating sealer coating or sheet material for use as an air and moisture barrier, thermal insulating materials, and adjustable steel or aluminum sub-construction framework used to create a ventilation cavity; Reinforcing mesh made of nonwoven textile fiber for construction purposes |
| In Another Form Statement | The mark was first used in commerce in a different form other than that sought to be registered at least as early as 12/31/1977 |
| Goods and Services | Direct applied high impact, moisture resistant exterior wall decorative finish systems that provide resistance to abuse and weather for forming as an exterior surface of a building, 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; cement-based adhesives and base coats being sealants 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 in the nature of sealant compounds for joints 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 in the nature of sealant compounds for joints to be applied onto exterior wall sheathing board joints and rough openings in wall construction with a trowel, insulated plastic exterior siding |
| In Another Form Statement | The mark was first used anywhere in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used in commerce in a different form other than that sought to be registered at least as early as 12/31/1977 |
| Goods and Services | Building construction services, namely, installation and maintenance of paints and coatings, metal building materials, thermal insulation, and non-metal building materials; providing of information relating to building construction, namely, installation and maintenance of paints and coatings, metal building materials, thermal insulation, and non-metal building materials; consulting in the field of building construction, namely, technical consulting in the field of exterior wall systems; technical consulting in the field of installation of exterior wall systems; providing technical information in the fields of maintenance and repair of existing buildings and structures, installation of building insulation to improve energy efficiency, and the use of appropriate products in those fields |
| In Another Form Statement | The mark was first used in commerce in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used anywhere in a different form other than that sought to be registered at least as early as 12/31/1977 |
| Goods and Services | Wholesale and retail store services featuring building and construction materials, namely, paints, coatings, insulated building materials, non-insulated building materials; Online wholesale and retail store services featuring building and construction materials, namely, paints, coatings, insulated building materials |
| 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; adhesives for use in the construction industry |
| In Another Form Statement | The mark was first used in commerce in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used anywhere in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used anywhere in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used in commerce in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used in commerce in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used anywhere in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used anywhere in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used in commerce in a different form other than that sought to be registered at least as early as 12/31/1977 |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Varnishes, lacquers, glazes; paint compounds in the nature of paints for interior and exterior surface coatings; finishes, namely, acrylic 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 |
| In Another Form Statement | The mark was first used in commerce in a different form other than that sought to be registered at least as early as 12/31/1977 |
| In Another Form Statement | The mark was first used anywhere in a different form other than that sought to be registered at least as early as 12/31/1977 |
| Goods and Services | Consulting in the fields of engineering and architecture; color analysis for the purposes of interior and exterior building design; interior and exterior building design consulting services; design consulting in the field of exterior wall systems; consulting in the field of building design; technical consulting in the field of design of exterior wall systems; Providing temporary use of non-downloadable cloud-based software for distributors of building and construction products, to view and purchase goods, view product claims and warranties, and register for continuing education courses in the field of building construction; Providing temporary use of online non-downloadable computer software for color schemes, color plans and cityscape designs in the field of building construction |
| 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 | Wednesday, June 21, 2023 |
| Primary Code | 001 |
| First Use Anywhere Date | Wednesday, December 31, 2003 |
| First Use In Commerce Date | Wednesday, December 31, 2003 |
| 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 | Wednesday, June 21, 2023 |
| Primary Code | 002 |
| First Use Anywhere Date | Wednesday, December 31, 2003 |
| First Use In Commerce Date | Wednesday, December 31, 2003 |
| 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 | Wednesday, June 21, 2023 |
| Primary Code | 017 |
| First Use Anywhere Date | Wednesday, December 31, 2003 |
| First Use In Commerce Date | Wednesday, December 31, 2003 |
| 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 | Wednesday, June 21, 2023 |
| Primary Code | 019 |
| First Use Anywhere Date | Wednesday, December 31, 2003 |
| First Use In Commerce Date | Wednesday, December 31, 2003 |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, June 21, 2023 |
| Primary Code | 035 |
| First Use Anywhere Date | Wednesday, December 31, 2008 |
| First Use In Commerce Date | Wednesday, December 31, 2008 |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, June 21, 2023 |
| Primary Code | 037 |
| First Use Anywhere Date | Tuesday, July 1, 2014 |
| First Use In Commerce Date | Tuesday, July 1, 2014 |
| 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 | Wednesday, June 21, 2023 |
| Primary Code | 041 |
| First Use Anywhere Date | Wednesday, December 31, 2003 |
| First Use In Commerce Date | Wednesday, December 31, 2003 |
| 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 | Wednesday, June 21, 2023 |
| Primary Code | 042 |
| First Use Anywhere Date | Monday, November 15, 2021 |
| First Use In Commerce Date | Monday, November 15, 2021 |
| Party Name | STO SE & CO. KGAA |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 13 - Limited Partnership |
| Address | STUEHLINGEN D-79780 DE |
| Party Name | STO SE & CO. KGAA |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 13 - Limited Partnership |
| Address | STUEHLINGEN D-79780 DE |
| Party Name | STO SE & CO. KGAA |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 13 - Limited Partnership |
| Address | STUEHLINGEN D-79780 DE |
| Event Date | Event Description |
| Tuesday, December 5, 2023 | NOTICE OF REGISTRATION CONFIRMATION EMAILED |
| Tuesday, December 5, 2023 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, September 19, 2023 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, September 19, 2023 | PUBLISHED FOR OPPOSITION |
| Wednesday, August 30, 2023 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, August 16, 2023 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, August 15, 2023 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, August 14, 2023 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, August 14, 2023 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, August 10, 2023 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Thursday, August 10, 2023 | NON-FINAL ACTION E-MAILED |
| Thursday, August 10, 2023 | NON-FINAL ACTION WRITTEN |
| Wednesday, August 9, 2023 | ASSIGNED TO EXAMINER |
| Wednesday, June 21, 2023 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Tuesday, May 23, 2023 | NEW APPLICATION ENTERED |