| Serial Number | 79186373 |
| Word Mark | STORZ KARL STORZ-ENDOSKOPE THE DIAMOND STANDARD |
| Filing Date | Friday, November 20, 2015 |
| Status | 709 - CANCELLED - SECTION 71 |
| Status Date | Friday, December 20, 2024 |
| Registration Number | 5483024 |
| Registration Date | Tuesday, June 5, 2018 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, March 20, 2018 |
| Goods and Services | Providing translation services; video recording services; training services in the field of medical technology, medicine, veterinary medicine, dental medicine, medical and non-medical endoscopy and education services, namely, educational events, congresses and symposia in the field of medical technology, medicine, veterinary medicine, dental medicine, medical and non-medical endoscopy; electronic desktop publishing; provision of recreational and live events, namely, providing recognition and incentives by the way of awards to demonstrate excellence in the field of pioneering achievement in the advancement of medical science and technology; digital video, audio, and multimedia publishing services except printing; conducting guided tours of museums; Digital video, audio, and multimedia publishing services; ticket agency services for entertainment events; photographic reporting; photography; publication of texts, other than publicity texts; providing information about entertainment events; layout services except for advertising purposes; non-downloadable electronic publications in the nature of newsletters, brochures, and catalogues in the field of medical technology, medicine, veterinary medicine, dental medicine, medical and non-medical endoscopy; Electronic publishing services, namely, publication of electronic books and magazines of others on-line featuring medical technology, medicine, veterinary medicine, dental medicine, medical and non-medical endoscopy; organization of community cultural and sporting events; arranging and conducting educational congresses; providing on-line digital publications in the nature of newsletters, brochures, and catalogues in the field of medical technology, medicine, veterinary medicine, dental medicine, medical and non-medical endoscopy via the Internet, not for advertising purposes; training in the field of medical technology, medicine, veterinary medicine, dental medicine, medical and non-medical endoscopy; entertainment, namely, presenting live presentations and speakers and organizing symposia and educational conventions in the field of medical technology; organization of exhibitions for cultural or educational purposes; editing of written texts other than publicity texts; publication of books |
| Description of Mark | The mark consists of the stylized wording "STORZ KARL STORZ-ENDOSKOPE THE DIAMOND STANDARD". The letter "O" in "STORZ" is stylized with a dark blue dot inside. There is a dark blue horizontal line above "THE DIAMOND STANDARD" and a dark blue rectangle under "THE DIAMOND STANDARD". The white shown in the mark is for background purposes only and is not intended as a feature of the mark. |
| Goods and Services | Apertometers; batteries, electric; compact disc players; chips, namely, integrated circuits; chromatography apparatus for laboratory use; chronographs for use as specialized time recording apparatus; encoded identification bracelets, magnetic; pre-recorded compact discs featuring information in the field of medical technology; computers; computer operating programs, recorded; computer peripheral devices; recorded computer programs and software for operating medical devices; computer keyboards; data processing apparatus; electric light dimmers; pre-recorded floppy disks with software for operating medical devices; disk drives for computers; dosimeters; DVD players; television apparatus, namely, television apparatus for projection purposes, television apparatus in the nature of television remote controls, television monitors; remote control apparatus for surgical instruments; cinematographic cameras; editing machines for cinematographic films; filters for respiratory masks; filters for photography; fluorescent screens; cameras for photography; photovoltaic cells; photometers; printed circuit boards; printed circuits; global positioning system (GPS) apparatus; interfaces for computers; blank integrated circuit cards, namely, smart cards; cassette players; carrying cases especially adapted for carrying dark plates used in photography; electrical switchboxes; optical character readers; encoded magnetic cards for recording the sounds, data, and output of medical and endoscopic procedures; comparators; directional compasses; headphones; data processing equipment, namely, couplers; correcting optical lenses; laptop computers; bags adapted for laptops; loudspeakers; cabinets for loudspeakers; micrometer gauges; jigs for controlling movements of medical instruments; data processing equipment, namely, optical readers; light-emitting diodes (LED); signs, luminous; light-emitting electronic pointers; blank recordable magnetic tapes; magnetic tape units for computers; blank recordable magnetic discs; magnets; blank magnetic discs; solenoid valves; mathematical instruments, namely, calculators; computer mouses; mouse pads; microphones; micrometer gauges; micrometer screws for optical instruments; microprocessors; microscopes; microtomes; portable telephones; modems; computer monitors; navigation apparatus for vehicles, namely, on-board computers; electronic navigational instruments; notebook computers; objective for optical lenses; optical devices, namely, eye pieces for helmet mounted displays; optical inspection apparatus for industrial and scientific use; blank optical data carriers; fiber optic cables; light conducting filaments; optical condensers; optical lamps for cameras; optical lenses; blank optical discs; optical glass; oscillographs; radio pagers; apparatus and instruments for physics, namely, wave meters; prisms; video and image projectors; projection screens; cell phone straps; satellite navigational apparatus namely, a global positioning system; computer memory devices; cases especially made for photographic apparatus and instruments; furniture especially made for laboratories; stereoscopes; stereoscopic apparatus; pocket calculators; sound recording apparatus; tape recorders; blank sound recording carriers; sound transmitting apparatus; sound reproduction apparatus; portable media players; walkie-talkies; personal stereos; filters for ultraviolet rays, for photography; teaching apparatus namely, computer hardware, software, and peripherals for instruction in the use of medical technology; blank usb flash drives; blank videotapes; video screens; blank video cassettes; video recorders; video game cartridges; apparatus for transmission of communication; concentration meters; handheld devices for counting repetitions of laboratory processes; time recording apparatus; time switches, automatic; cellular telecommunication switches; computer processors; industrial endoscopes |
| Goods and Services | Transfers, namely, decals; address plates for addressing machines; addressing machines; folders for papers; document files; scrapbooks; almanacs; announcement cards; document laminators for office use; stickers; desktop cabinets for stationery; pictures; paintings, framed or unframed; printed materials in the nature of biological samples for use in microscopy; blueprints; bookbinding material; document holders; printed matter and publications, namely, pamphlets, books, information sheets, brochures, printed periodicals, magazines, journals, manuals, catalogs, prospectuses, newsletters, and flyers, all in the field of medical technology; blank or partially printed non-textile labels; plastic film for wrapping; sheets of reclaimed cellulose for wrapping; forms, printed; photographs; graphic representations; graphic art reproductions; histological sections for teaching purposes; calendars; printed instructional and teaching materials in the field of medical technology; loose-leaf binders; stationery; paper tapes and cards for the recordal of computer programs; bags of paper or plastics, for packaging; cardboard boxes; packaging containers made of starch-based materials in the nature of a paper substitute; wrapping paper; viscose sheets for wrapping; waxed paper |
| Pseudo Mark | STORES KARL STORES-ENDOSKOPE THE DIAMOND STANDARD |
| Indication of Colors claimed | The color(s) dark blue is/are claimed as a feature of the mark. |
| Goods and Services | Updating and maintenance of data in computer databases; cost price analysis; professional business consultancy; computerized file management; online information and data compiling and analyzing relating to business management; administrative services of developers, namely, organizational preparation of building projects in the nature of business organizational consultation services in the field of installations of surgical suites and medical, surgical and industrial endoscopic instrument storage; development of marketing strategies and concepts relating to real estate sales; compilation of statistics; providing organizational development consulting services; all the aforementioned services in the medical, dental, veterinary and endoscopic field and in the hospital sector |
| Translation of Words in Mark | The English translation of "ENDOSKOPE" in the mark is "ENDOSCOPE". The wording "STORZ" and "KARL STORZ" has no meaning in a foreign language. |
| Goods and Services | Hospitals; nursing homes; medical clinic services; sanatoriums; medical equipment rental; all the aforementioned services for medical, surgical, veterinary, endoscopic and dental fields and in the hospital sector |
| NOT AVAILABLE | "ENDOSKOPE" |
| Goods and Services | Aerosol dispensers for medical purposes; acupuncture needles; medical apparatus for use in endoscopic diagnosis and analysis; apparatus for artificial respiration; apparatus and installations for the production of x-rays, for medical purposes; nursing appliances, namely, medical intubation equipment; apparatus for the treatment of deafness; body rehabilitation apparatus for medical purposes; microdermabrasion apparatus; instrument cases for use by doctors specially adapted for holding medical instruments; respirators for artificial respiration; babies' bottles; basins for medical purposes; receptacles for applying medicines, namely, medical fluid injectors; teething rings; blood testing apparatus; bougies; hernia elastic bandages; artificial breasts; incubators for medical purposes; incubators for babies; surgical apparatus and instruments for use in general and endoscopic surgery; thread, surgical; surgical implants comprising artificial material; surgical cutlery; suture needles; surgical sponges; mirrors for surgeons; suture materials; defibrillators; dialyzers; drainage tubes for medical purposes; insufflators; ice bags for medical purposes; bandages, elastic; electric acupuncture instruments; electrodes for medical use; electrocardiographs; tips for crutches for invalids; finger guards for medical purposes; feeding bottle teats; dental burs; galvanic belts for medical purposes; galvanic therapeutic appliances; gastroscopes; uterine syringes; obstetric apparatus for cattle; obstetric apparatus; surgical forceps; hearing protectors, namely, ear plugs for noise reduction; physiotherapy apparatus; appliances for washing body cavities; plaster orthopedic bandages for anatomical joints; belts for medical purposes; orthopedic belts; hair prostheses; hematimeters; gloves for medical purposes; urinals; urethral probes; urethral syringes; invalids' hoists; hot air vibrators for medical purposes; blankets, electric, for medical purposes; heating cushions, electric, for medical purposes; heart pacemakers; hearing aids for the deaf; ear trumpets; corsets for medical purposes; corn knives in the nature of surgical blades; syringes for injections; injectors for medical purposes; douche bags; enema apparatus for medical purposes; cannulae; castrating pincers; surgical catgut; catheters; orthopedic cushions; pads for preventing pressure sores on patient bodies; surgical compressors; soporific pillows for insomnia; stockings for varices; ambulance stretchers; draw-sheets for sick beds; crutches; artificial eyes; artificial limbs; artificial skin for surgical purposes; artificial jaws; lenses for surgical implantation; artificial teeth; surgical lamps; lancets; lasers for medical purposes; abdominal belts; abdominal corsets; spoons for administering medicine; air pillows for medical purposes; air cushions for medical purposes; air mattresses, for medical purposes; masks for use by medical personnel; massage apparatus; esthetic massage apparatus; gloves for massage; childbirth mattresses; medical apparatus and instruments for use in orthopedic surgery; medical guidewires; physical exercise apparatus, for medical purposes; knives for surgical purposes; breast pumps; umbilical belts; commode chairs for medical purposes; needles for medical purposes; anesthetic apparatus; anesthetic masks; contraceptive apparatuses, non-chemical; ear picks; ear plugs for medical purposes; clothing especially for operating rooms; operating tables; surgical drapes; ophthalmometers; ophthalmoscopes; orthopedic articles, namely, implants made of artificial materials; arch supports for footwear; supportive bandages; knee bandages, orthopedic; orthopedic footwear; orthopedic soles; pessaries; balling guns for therapeutic purposes; condoms; pulse meters; pumps for medical purposes, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time; quartz lamps for medical purposes; radiological apparatus for medical purposes; fumigation apparatus for medical purposes. x-ray apparatus for medical purposes; x-ray photographs for medical purposes; x-ray tubes for medical purposes; radiology screens for medical purposes; radium tubes for medical purposes; saws for surgical purposes; feeding bottles; feeding bottle valves; scissors for surgery; splints, surgical; slings; babies' pacifiers; cupping glasses; supports for flat feet; protection devices against x-rays, for medical purposes; maternity support belts for medical purposes; armchairs for medical or dental purposes; love dolls; scalpels; probes for medical purposes; containers especially made for medical waste; beds, specially made for medical purposes; cases fitted for medical instruments; furniture especially made for medical purposes; spirometers; syringes for medical purposes; spittoons for medical purposes; hygienic basins for medical purposes; stents; sterile sheets, surgical; stethoscopes; boots for medical purposes; hot air therapeutic apparatus; thermo-electric compresses; thermal packs for first aid purposes; thermometers for medical purposes; stretchers, wheeled; trocars; droppers for administering medication, sold empty; dropper bottles for administering medication, sold empty; filters for ultraviolet rays, for medical purposes; ultraviolet ray lamps for medical purposes; incontinence sheets; hypogastric belts for medical purposes; abdominal pads; urological diagnostic apparatus and instruments; vaginal syringes; vaporizers for medical purposes; veterinary apparatus and instruments, namely, catheter for veterinary purposes; bed vibrators; vibromassage apparatus; hydrostatic beds for medical purposes; water bags for medical purposes; resuscitation apparatus; brushes for cleaning body cavities; clips, surgical; dental apparatus and instruments, namely, crown and bridge removers; electric dental apparatus, namely, dental drills; mirrors for dentists; dentists' armchairs; dentures; orthodontic appliances; pins for artificial teeth; sprayers for medical purposes for dispensing medicine, sold empty; tongue scrapers; strait jackets |
| Goods and Services | Scientific and technological services, namely, scientific research and development in the fields of medical technology, medicine, veterinary medicine, dental medicine, medical and non-medical endoscopy; analysis of industrial fluids and industrial research in the field of non-medical endoscopy; design and development of computer hardware and software; all the aforementioned services in the medical, dental, veterinary and endoscopic field and in the hospital sector |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, December 20, 2024 |
| Primary Code | 035 |
| 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, December 20, 2024 |
| 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, December 20, 2024 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 044 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. |
| US Class Codes | 100, 101 |
| Class Status Code | F - NOT AVAILABLE |
| Class Status Date | Friday, December 20, 2024 |
| Primary Code | 044 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, December 20, 2024 |
| 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, December 20, 2024 |
| Primary Code | 010 |
| 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 | F - NOT AVAILABLE |
| Class Status Date | Friday, December 20, 2024 |
| Primary Code | 016 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | KARL STORZ SE & Co. KG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | KARL STORZ GmbH & Co. KG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | KARL STORZ GmbH & Co. KG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Event Date | Event Description |
| Tuesday, May 3, 2016 | APPLICATION FILING RECEIPT MAILED |
| Thursday, April 28, 2016 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Friday, April 29, 2016 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Friday, April 29, 2016 | ASSIGNED TO EXAMINER |
| Monday, May 9, 2016 | NON-FINAL ACTION WRITTEN |
| Tuesday, May 10, 2016 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Wednesday, May 11, 2016 | REFUSAL PROCESSED BY MPU |
| Wednesday, May 11, 2016 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Friday, May 27, 2016 | REFUSAL PROCESSED BY IB |
| Thursday, September 29, 2016 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, October 6, 2016 | ASSIGNED TO LIE |
| Thursday, October 6, 2016 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, October 6, 2016 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, December 12, 2016 | FINAL REFUSAL WRITTEN |
| Monday, December 12, 2016 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Monday, December 12, 2016 | FINAL REFUSAL E-MAILED |
| Wednesday, May 17, 2017 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Wednesday, May 17, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, May 18, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, June 30, 2017 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, July 7, 2017 | ASSIGNED TO LIE |
| Friday, July 7, 2017 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, July 25, 2017 | WITHDRAWN FROM PUB - OG REVIEW QUERY |
| Thursday, September 14, 2017 | NON-FINAL ACTION WRITTEN |
| Tuesday, August 1, 2017 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Wednesday, October 4, 2017 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Wednesday, February 28, 2018 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Thursday, September 14, 2017 | NON-FINAL ACTION E-MAILED |
| Thursday, September 14, 2017 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, October 4, 2017 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, October 20, 2017 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, February 6, 2018 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Tuesday, February 6, 2018 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, February 7, 2018 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, February 8, 2018 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, February 28, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Tuesday, March 20, 2018 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Friday, April 6, 2018 | NOTIFICATION PROCESSED BY IB |
| Tuesday, June 5, 2018 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, September 5, 2018 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Thursday, October 4, 2018 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Thursday, March 21, 2019 | NEW REPRESENTATIVE AT IB RECEIVED |
| Wednesday, February 28, 2018 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, March 20, 2018 | PUBLISHED FOR OPPOSITION |
| Saturday, September 15, 2018 | GENERIC MADRID TRANSACTION CREATED |
| Saturday, September 15, 2018 | GENERIC MADRID TRANSACTION SENT TO IB |
| Thursday, April 4, 2019 | NEW REPRESENTATIVE AT IB RECEIVED |
| Monday, June 5, 2023 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Friday, December 20, 2024 | CANCELLED SECTION 71 |
| Friday, April 26, 2019 | FINAL DECISION TRANSACTION PROCESSED BY IB |