
| Serial Number | 88586611 |
| Word Mark | THE OCEAN RACE ROUND THE WORLD SINCE 1973 |
| Filing Date | Wednesday, August 21, 2019 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, October 5, 2021 |
| Registration Number | 6504917 |
| Registration Date | Tuesday, October 5, 2021 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, July 20, 2021 |
| Goods and Services | Entertainment in the nature of sailing events and social entertainment events to promote environmental sustainability; Education services, namely, providing mentoring, tutoring, classes, seminars and workshops in the field of sailing and environmental sustainability; Providing of training, namely, sports leadership and sports training services; Sporting and cultural activities, namely, organization of sailing events and social entertainment events to promote environmental sustainability; Organization of events for cultural, entertainment and sporting purposes in the nature of sailing events and social entertainment events to promote environmental sustainability; Video and film production and editing |
| Pseudo Mark | THE OCEAN RACE ROUND THE WORLD SINCE ONE NINE SEVEN THREE; THE OCEAN RACE ROUND THE WORLD SINCE ONE THOUSAND NINE HUNDRED SEVENTY THREE; THE OCEAN RACE ROUND THE WORLD SINCE NINETEEN SEVENTY THREE |
| Description of Mark | The mark consists of the stylized stacked wording "THE OCEAN RACE" above the stylized stacked wording "ROUND THE WORLD SINCE 1973". A swirl design comprised of ten boats appears to the left of the wording. |
| Goods and Services | Cameras and video recording cameras; Prerecorded magnetic data carriers and recording discs featuring sailing activities, nature captions and recordings of public gatherings; Pre-recorded digital media devices featuring images, video, video games, data and databases, broadcasts and advertisings for sailing and recordings of public gatherings; Data processing equipment; Computers; Downloadable computer software for gaming and nautical tracking; Eyewear; binoculars; compasses; magnets; Downloadable publications in the nature of books, magazines, and brochures in the field of sailing and environmental sustainability; Downloadable game software; Downloadable mobile applications for providing a news and information feed on sailing and environmental sustainability; life vest; survival suits; floatation aids in the nature of flotation vests; protective helmets; life preservers |
| Goods and Services | Luggage; Umbrellas and parasols; handbags; backpacks; all-purpose carrying bags; all-purpose sports bags; travelling bags; duffel bags; tote bags |
| Goods and Services | Toys, games, playthings and novelties, namely, teddy bears and toy boats; Sporting articles and equipment, namely, swim fins, body boards and surfboards; Bags specially adapted for sports equipment; Toy miniature model boats; Harnesses for sailboards and sailboats |
| Goods and Services | Printed matter, namely, magazines, guides, books in the field of sailing and environmental sustainability, posters and postcards; Photographs; Stationery and office requisites, except furniture, namely, stationery, pens, and pencils; Adhesives for stationery or household purposes; Artists' materials, namely, canvases for painting; Printed instructional and teaching materials in the field of sailing and environmental sustainability; calendars; posters; banners of paper; packaging materials made of reusable materials, namely, recycled paper and plastic |
| Goods and Services | Telecommunications gateway services; TV and online broadcasting services; Radio and television broadcasting services; Providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of sailing and sustainability; Transmission of digital information; Providing multiple-user access to a global computer information network; Providing Internet access; Providing access to telecommunication networks |
| Goods and Services | Clothing, namely, tops, bottoms, jackets, gilets, socks, smocks, shirts, baseball caps, beanies, wide-brimmed hats, hats, swimwear, belts, dresses, skirts, shorts, and knitwear, namely, tops and bottoms; footwear; sports clothing, namely, tops, bottoms, jackets, gilets, smocks, shirts, baseball caps, hats, belts, dresses, skirts, shorts, jerseys, and knitwear, namely, tops and bottoms; swimsuits and wetsuits |
| Section 2(f) Limitation Statement | as to "THE OCEAN RACE" has become distinctive of the services in classes 38, 41, and 42, as demonstrated by the attached evidence. |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Compilation of environmental information into computer databases |
| Disclaimer with Predetermined Text | "SINCE 1973" FOR INTERNATIONAL CLASS 9, INTERNATIONAL CLASS16, INTERNATIONAL CLASS18, INTERNATIONAL CLASS 25, AND INTERNATIONAL CLASS 35 AND "ROUND THE WORLD SINCE 1973" INTERNATIONAL CLASS 38, INTERNATIONAL CLASS 41, AND INTERNATIONAL CLASS 42 |
| Goods and Services | Sail and boat design; Scientific and technological services in the nature of scientific research and analysis and hydrodynamic boat design and research and design relating thereto; Environmental testing and inspection services; Research in the field of environmental protection; Design and development of computer hardware and software; Website hosting services; software as a service (SAAS) services featuring software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; software as a service (SAAS) services featuring software for data processing; software as a service (SAAS) services featuring software for importing and managing data; software as a service (SAAS) services featuring software for developing mobile applications; software as a service (SAAS) services featuring software for sending electronic message alerts; software as a service (SAAS) services featuring software for enterprise content management; software as a service (SAAS) services featuring software for digital asset management; software as a service (SAAS) services featuring software for nautical tracking; software as a service (SAAS) services featuring software for recording of nautical sports racing data; software as a service (SAAS) services featuring software for compiling research information in the field of environmental protection; software as a service (SAAS) services featuring software for use in database management; Computer network configuration services; Design and development of software in the field of mobile applications |
| 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 | 6 - Active |
| Class Status Date | Thursday, September 5, 2019 |
| Primary Code | 009 |
| 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 | 6 - Active |
| Class Status Date | Thursday, September 5, 2019 |
| Primary Code | 016 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 018 - Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. |
| US Class Codes | 001, 002, 003, 022, 041 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, September 5, 2019 |
| Primary Code | 018 |
| 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, September 5, 2019 |
| 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 | 6 - Active |
| Class Status Date | Thursday, September 5, 2019 |
| Primary Code | 028 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Friday, May 22, 2020 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | 6 - Active |
| Class Status Date | Thursday, September 5, 2019 |
| Primary Code | 038 |
| 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 | 6 - Active |
| Class Status Date | Thursday, September 5, 2019 |
| 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 | 6 - Active |
| Class Status Date | Thursday, September 5, 2019 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | The Ocean Race 1973 S.L.U. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | Alicante 03001 ES |
| Party Name | The Ocean Race 1973 S.L.U. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | Alicante 03001 ES |
| Party Name | The Ocean Race 1973 S.L.U. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | Alicante 03001 ES |
| Event Date | Event Description |
| Tuesday, October 5, 2021 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, July 20, 2021 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, July 20, 2021 | PUBLISHED FOR OPPOSITION |
| Wednesday, June 30, 2021 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Friday, June 11, 2021 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Friday, June 4, 2021 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, June 4, 2021 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Friday, June 4, 2021 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, May 14, 2021 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, May 14, 2021 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, May 7, 2021 | ASSIGNED TO LIE |
| Tuesday, January 26, 2021 | TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED |
| Tuesday, January 26, 2021 | NOTIFICATION OF LETTER OF SUSPENSION E-MAILED |
| Tuesday, January 26, 2021 | LETTER OF SUSPENSION E-MAILED |
| Tuesday, January 26, 2021 | SUSPENSION LETTER WRITTEN |
| Tuesday, January 26, 2021 | PREVIOUS ALLOWANCE COUNT WITHDRAWN |
| Friday, January 22, 2021 | ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED |
| Monday, January 18, 2021 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Saturday, January 16, 2021 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, January 15, 2021 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, January 15, 2021 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Friday, January 15, 2021 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Friday, January 15, 2021 | NON-FINAL ACTION E-MAILED |
| Friday, January 15, 2021 | NON-FINAL ACTION WRITTEN |
| Wednesday, December 16, 2020 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, December 16, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, December 16, 2020 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Thursday, June 18, 2020 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Thursday, June 18, 2020 | FINAL REFUSAL E-MAILED |
| Thursday, June 18, 2020 | FINAL REFUSAL WRITTEN |
| Friday, May 22, 2020 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, May 22, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, May 22, 2020 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Wednesday, November 27, 2019 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Wednesday, November 27, 2019 | NON-FINAL ACTION E-MAILED |
| Wednesday, November 27, 2019 | NON-FINAL ACTION WRITTEN |
| Thursday, November 21, 2019 | ASSIGNED TO EXAMINER |
| Friday, September 6, 2019 | NOTICE OF DESIGN SEARCH CODE E-MAILED |
| Thursday, September 5, 2019 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, August 26, 2019 | NEW APPLICATION ENTERED |