| Serial Number | 79196865 |
| Word Mark | SWAN FINCH MOTUL MOTOR OILS SWAN-FINCH OIL CORPORATION NEW YORK NEWARK NJ CHICAGO BUFFALO SAN FRANCISCO MOTUL SINCE 1853 |
| Filing Date | Thursday, April 14, 2016 |
| Status | 707 - PARTIAL SECTION 71 ACCEPTED |
| Status Date | Monday, April 21, 2025 |
| Registration Number | 5455550 |
| Registration Date | Tuesday, May 1, 2018 |
| Mark Drawing | 3 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, February 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 ] |
| 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 ] |
| 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 or 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 ] |
| Indication of Colors claimed | The color(s) red, black, white and gold is/are claimed as a feature of the mark. |
| 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 | [ 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 ] |
| Description of Mark | The mark consists of the following: 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 white across the middle of the band; the words "SWAN-FINCH" in red on white wings attached to a black and white wheel above with the words "ESTABLISHED" in "1853" in white on a shaded black miscellaneous design below the wings, and "MOTOR OILS" in white below "MOTUL" and the words "SWAN-FINCH OIL CORPORATION" in white below, with the words "NEW YORK", "NEWARK NJ", "CHICAGO", "BUFFALO", and "SAN FRANCISCO" in white beneath, all above the word "MOTUL" in white on a red rectangular band and "SINCE 1853" in gold below with 4 gold stars curved around on each side, all on a black background. |
| NOT AVAILABLE | "ESTABLISHED IN 1853", "MOTOR OILS", "OIL CORPORATION", "NEW YORK NEWARK NJ CHICAGO BUFFALO SAN FRANCISCO" AND "SINCE 1853" |
| 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 ] |
| Pseudo Mark | SWAN FINCH MOTUL MOTOR OILS SWAN FINCH OIL CORPORATION MOTUL SINCE EIGHTEEN FIFTY THREE |
| 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 | Monday, April 21, 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 | Monday, April 21, 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 | G - NOT AVAILABLE |
| Class Status Date | Monday, April 21, 2025 |
| 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 | Monday, April 21, 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 | Monday, April 21, 2025 |
| Primary Code | 041 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | MOTUL, Société Anonyme |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | AUBERVILLIERS F-93300 FR |
| Party Name | MOTUL, Société Anonyme |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | F-93300 AUBERVILLIERS FR |
| Party Name | MOTUL, Société Anonyme |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | F-93300 AUBERVILLIERS 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 |
| Friday, June 2, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, July 7, 2017 | ASSIGNED TO LIE |
| Saturday, July 15, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Saturday, July 15, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, August 4, 2017 | NON-FINAL ACTION WRITTEN |
| Friday, August 4, 2017 | NON-FINAL ACTION E-MAILED |
| Friday, August 4, 2017 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, December 13, 2017 | DATA MODIFICATION COMPLETED |
| Thursday, December 14, 2017 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, December 14, 2017 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, December 14, 2017 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, December 21, 2017 | EXAMINERS AMENDMENT -WRITTEN |
| Thursday, December 21, 2017 | EXAMINERS AMENDMENT E-MAILED |
| Thursday, December 21, 2017 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Thursday, December 21, 2017 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, January 9, 2018 | EXAMINERS AMENDMENT -WRITTEN |
| Tuesday, January 9, 2018 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, January 9, 2018 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Tuesday, January 9, 2018 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, January 9, 2018 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, January 24, 2018 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Tuesday, February 13, 2018 | PUBLISHED FOR OPPOSITION |
| Tuesday, February 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 |
| Tuesday, May 1, 2018 | REGISTERED-PRINCIPAL REGISTER |
| Friday, May 11, 2018 | NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB |
| Wednesday, August 1, 2018 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Monday, August 13, 2018 | GENERIC MADRID TRANSACTION CREATED |
| Monday, August 13, 2018 | GENERIC MADRID TRANSACTION SENT TO IB |
| Friday, November 2, 2018 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, May 1, 2023 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |
| Monday, April 29, 2024 | TEAS SECTION 71 RECEIVED |
| Monday, December 2, 2024 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Tuesday, December 3, 2024 | POST REGISTRATION ACTION MAILED - SEC.71 |
| Tuesday, April 15, 2025 | TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED |
| Wednesday, April 16, 2025 | POST REGISTRATION ACTION CORRECTION |
| Wednesday, April 16, 2025 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Monday, April 21, 2025 | REGISTERED - PARTIAL SEC 71 ACCEPTED |
| Monday, April 21, 2025 | NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED |
| Sunday, August 3, 2025 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Tuesday, December 16, 2025 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Sunday, December 21, 2025 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |