| Serial Number | 79196864 |
| Word Mark | SWAN-FINCH ESTABLISHED 1853 MOTUL REG. U.S. PAT. OFF. MOTOR OILS SWAN-FINCH OIL CORPORATION NEW YORK, NEWARK, CHICAGO, BUFFALO, BOSTON, PITTSBURG, SAN FRANCISCO, TORONTO |
| Filing Date | Thursday, April 14, 2016 |
| Status | 707 - PARTIAL SECTION 71 ACCEPTED |
| Status Date | Wednesday, April 16, 2025 |
| Registration Number | 5477563 |
| Registration Date | Tuesday, May 29, 2018 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, March 13, 2018 |
| Goods and Services | [ Chemical products for cooling liquids, chemical compositions as ingredients for lubricants; chemical additives for motor fuel; chemicals for use in industry, science, photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; soil fertilizers; fire-extinguishing compositions; tempering preparations and soldering chemicals; chemical substances for preserving foodstuffs; tanning materials, namely, enzymes for use in the tanning of leather; adhesives for use in industry; waterproofing chemical compositions; antifreeze; scale removers, other than for household use ] |
| Description of Mark | The mark consists of a shaded red circle with a black rectangular band across the middle with two black lines extending up and two black lines extending down to form triangles, and the word "MOTUL" in yellow across the middle of the band; the words "SWANFINCH" in red on yellow wings attached to a black and yellow wheel above with the words "ESTABLISHED 1853" in yellow on a shaded black miscellaneous design below the wings, and "MOTOR OILS" in black below "MOTUL REG. U.S. PAT OFF." in yellow, and the words "SWAN-FINCH OIL CORPORATION" and the words "New York, Newark, Chicago, Buffalo, Boston, Pittsburg, San Francisco, Toronto" in yellow at the bottom. |
| Goods and Services | [ Games, namely, action skill games, card games, dice games; toys, namely, electronic action toys, toy cars, toy motorcycles; balloons, board games; portable electronic games designed for use with television receivers only; video games, namely, coin-operated video-games, arcade car and motorcycle racing video game machines; video game machines; video game consoles; hand-held game machines with liquid crystal displays; robots for entertainment; arcade games; model cars; portable hand-held game apparatus with liquid crystal displays; portable electronic game apparatus; consumer video game apparatus; controls for mass-market video game apparatus, equipment for portable game apparatus with liquid crystal displays; dolls; modeled plastic toy figurines; toy figurines; arcade game machines and apparatus; arcade video game apparatus; slot machines; sports equipment, namely, starting blocks for sports, protective paddings as part of sports suits for racing and motor sports; gymnastic articles, namely, parallel bars; sports flags, namely, corner flags ] |
| Goods and Services | [ Education, namely, training in the field of sports, races and motor engines including oils, greases and lubricants; entertainment, namely, organizing sporting and cultural activities; editing of books and of magazines; book lending; animal training; television show and film production; rental of films, phonographic recordings, cinema projection apparatus and accessories, stage scenery; videotape editing; organization of competitions relating to education and entertainment in the field of sports, races and motor sports competitions; organization and conducting of colloquiums, conferences, conventions in the field of sports, races and motor engines including oils, greases and lubricants for non-business and non-commercial purposes; organization of exhibitions for cultural or educational purposes; operating of lotteries; booking of seats for shows ] |
| Goods and Services | [ digital printing products, namely printing paper; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials, namely, paintbrushes; typewriters and office requisites except furniture, namely, envelope sealing machines; printing instructional or teaching material, except apparatus, in the field of sports, races and motor engines including oils, greases and lubricants; plastic bags, plastic films for packaging, not included in other classes; printing type; printing blocks; boxes of cardboard or paper; writing or drawing books; folders for papers; files, namely, card files; posters; albums for coins, photographs; cards, namely, greeting cards, note cards, invitation cards; business cards; postcards; books, namely, guest books, books in the field of sports, races and motor engines including oils, greases and lubricants; newspapers; printed prospectuses; pamphlets in the field of sports, races and motor engines including oils, greases and lubricants; advertising pamphlets; printed publications, namely, brochures, booklets, and teaching materials in the field of sports, races and motor engines including oils, greases and lubricants; informational flyers featuring sports, races and motor engines including oils, greases and lubricants; journals in the field of sports, races and motor engines including oils, greases and lubricants; printed periodicals in the field of sports, races and motor engines including oils, greases and lubricants; magazines featuring sports, races and motor engines including oils, greases and lubricants; catalogs in the field of sports, races and motor engines including oils, greases and lubricants; calendars; diaries; writing pads; notepads; printed sports competition guides; writing instruments; pens; pencils; print engravings or lithographic works of art; pictures; paintings, framed or unframed; graphic prints; drawing instruments; handkerchiefs of paper; face towels of paper; table linen of paper; plastic or paper bags and pouches for merchandise packaging; envelopes, garbage bags of paper or of plastics; non-magnetically encoded plastic or laminated gift cards for purchase as gifts for others and to enable them to make purchases under conditions previously agreed by the issuer and purchaser of the card; printed vouchers redeemable for the purchase of goods or services; printed vouchers exchangeable for goods or services; non-magnetically encoded gift cards; non-magnetically encoded subscription cards; printed gift certificates; printed gift vouchers and certificates; product data sheets ] |
| NOT AVAILABLE | "ESTABLISHED 1853" "REG. U.S. PAT. OFF" "MOTOR OILS" "OIL CORPORATION" AND "NEW YORK, NEWARK, CHICAGO, BUFFALO, BOSTON, PITTSBURG, SAN FRANCISCO, TORONTO" |
| Goods and Services | Industrial oils and greases; lubricants, namely, automobile and motorcycle lubricants; oils, greases and lubricants for vehicle motors and engines [ ; non-chemical additives to motor fuel; dust absorbing, wetting and binding compositions, for use in the maintenance of vehicle motors and engines and all machine motors and engines; fuels, motor fuel and lighting fuel; candles; wicks for candles for lighting; dust binding compositions used as binding agents; agglomerating agents being dust binding agents, fork oil being oils for all types of motor engines, in particular for motor vehicles, machinery and power generation ] |
| Indication of Colors claimed | The color(s) red, black and yellow is/are claimed as a feature of the mark. |
| Goods and Services | [ Clothing, namely, shirts, suits, sweaters, vests, tank tops, t-shirts, dresses, skirts, pants, slips, blazers, coats, blousons, motorcycling jackets, jackets, underwear, rainwear, swimwear, shorts, briefs; knitwear, namely, sweaters; ] head coverings, namely, hats, [ visors, ] caps [ , hoods; clothing for sports, namely, sports warm-up suits; sweatshirts; jackets; sports jerseys; belts; suspenders; gloves; footwear; footwear for sports; boots; half-boots; Masquerade costumes; scarves; shawls; uniforms ] |
| 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 | G - NOT AVAILABLE |
| Class Status Date | Wednesday, April 16, 2025 |
| Primary Code | 001 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 004 - Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting. |
| US Class Codes | 001, 006, 015 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, December 1, 2016 |
| Primary Code | 004 |
| 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 | G - NOT AVAILABLE |
| Class Status Date | Wednesday, April 16, 2025 |
| Primary Code | 016 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 025 - Clothing, footwear, headgear. |
| US Class Codes | 022, 039 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, December 1, 2016 |
| Primary Code | 025 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 028 - Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees. |
| US Class Codes | 022, 023, 038, 050 |
| Class Status Code | G - NOT AVAILABLE |
| Class Status Date | Wednesday, April 16, 2025 |
| Primary Code | 028 |
| 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 | G - NOT AVAILABLE |
| Class Status Date | Wednesday, April 16, 2025 |
| Primary Code | 041 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | MOTUL |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 33 - NOT AVAILABLE |
| Address | FR |
| Party Name | MOTUL, Société Anonyme |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 33 - NOT AVAILABLE |
| Address | FR |
| Party Name | MOTUL, Société Anonyme |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 33 - NOT AVAILABLE |
| Address | FR |
| Event Date | Event Description |
| Thursday, November 24, 2016 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Thursday, December 1, 2016 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Thursday, December 1, 2016 | ASSIGNED TO EXAMINER |
| Thursday, December 1, 2016 | NON-FINAL ACTION WRITTEN |
| Friday, December 2, 2016 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Monday, December 5, 2016 | REFUSAL PROCESSED BY MPU |
| Monday, December 5, 2016 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Tuesday, December 6, 2016 | APPLICATION FILING RECEIPT MAILED |
| Saturday, December 24, 2016 | REFUSAL PROCESSED BY IB |
| Monday, June 5, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, July 7, 2017 | ASSIGNED TO LIE |
| Friday, July 14, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, July 14, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, July 31, 2017 | NON-FINAL ACTION WRITTEN |
| Monday, July 31, 2017 | NON-FINAL ACTION E-MAILED |
| Monday, July 31, 2017 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, January 31, 2018 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, January 31, 2018 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, January 31, 2018 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, February 7, 2018 | EXAMINERS AMENDMENT -WRITTEN |
| Wednesday, February 7, 2018 | EXAMINERS AMENDMENT E-MAILED |
| Wednesday, February 7, 2018 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Wednesday, February 7, 2018 | EXAMINER'S AMENDMENT ENTERED |
| Wednesday, February 7, 2018 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, February 21, 2018 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, February 21, 2018 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, February 21, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, March 9, 2018 | NOTIFICATION PROCESSED BY IB |
| Tuesday, March 13, 2018 | PUBLISHED FOR OPPOSITION |
| Tuesday, March 13, 2018 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Wednesday, April 25, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION CREATED, TO BE SENT TO IB |
| Wednesday, April 25, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, May 11, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Tuesday, May 29, 2018 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, August 29, 2018 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Tuesday, September 11, 2018 | GENERIC MADRID TRANSACTION CREATED |
| Tuesday, September 11, 2018 | GENERIC MADRID TRANSACTION SENT TO IB |
| Friday, November 30, 2018 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Saturday, May 7, 2022 | CHANGE OF NAME/ADDRESS REC'D FROM IB |
| Monday, May 29, 2023 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Tuesday, November 26, 2024 | TEAS SECTION 71 RECEIVED |
| Tuesday, April 15, 2025 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Wednesday, April 16, 2025 | REGISTERED - PARTIAL SEC 71 ACCEPTED |
| Wednesday, April 16, 2025 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Tuesday, December 16, 2025 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |