| Serial Number | 79310554 |
| Word Mark | ZERO VOLKSWAGEN WAY TO |
| Filing Date | Tuesday, December 15, 2020 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, April 12, 2022 |
| Registration Number | 6696176 |
| Registration Date | Tuesday, April 12, 2022 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, January 25, 2022 |
| Goods and Services | Book, magazine and newspaper publishing services; Publishing of electronic publications; Publishing of web magazines; Editorial reporting services; Education, namely, conducting classes, seminars, conferences, workshops, lectures and symposiums in the fields of environmental protection, sustainability, climate change issues, environmental regulations and standards, corporate responsibility, emissions reduction, and technological improvements in vehicles and distribution of training material in connection therewith; Education, namely, providing non-downloadable webinars in the fields of environmental protection, sustainability, climate change issues, environmental regulations and standards, corporate responsibility, emissions reduction, and technological improvements in vehicles; Education, namely, providing panel discussions in the fields of environmental protection, sustainability, climate change issues, environmental regulations and standards, corporate responsibility, emissions reduction, and technological improvements in vehicles; Educational and entertainment services, namely, providing motivational and educational speakers; Arranging, organizing, conducting, and hosting social entertainment events; Entertainment services, namely, providing podcasts in the fields of environmental protection, sustainability, climate change issues, environmental regulations and standards, corporate responsibility, emissions reduction, and technological improvements in vehicles; Organization, arranging and conducting of sports competitions; Arranging and conducting youth sports programs; Sport camps; translation and interpreter services; Providing training in the fields of environmental protection, sustainability, climate change issues, environmental regulations and standards, corporate responsibility, emissions reduction, and technological improvements in vehicles; Organizing community sporting and cultural events; organization and implementation of cultural and sporting events; training and further training consultancy relating to the promotion of talent and young talent; presentation of live musical and show performances; Entertainment, namely, providing online electronic and computer games on computer networks and the internet; academies being the provision of classes in the fields of environmental protection, sustainability, climate change issues, environmental regulations and standards, corporate responsibility, emissions reduction, and technological improvements in vehicles; Providing information about education; Organization of contest and incentive award competitions designed to reward program participants who achieve levels of environmental protection, sustainability, climate change initiatives, environmental regulations and standards, corporate responsibility and emissions reduction for education or entertainment purposes; organization, arranging and conducting of [ colloquia ] * colloquiums *, educational conferences, congresses *, * [ and ] symposiums, seminars and workshops for training purposes in the fields of environmental protection, sustainability, climate change issues, environmental regulations and standards, corporate responsibility, emissions reduction, and technological improvements in vehicles; organization of exhibitions for cultural or educational purposes; Providing group coaching in the field of leadership development; Vocational education in the fields of environmental protection, sustainability, climate change issues, environmental regulations and standards, corporate responsibility, emissions reduction, and technological improvements in vehicles; organization of sports competitions; lending library services; publication of books; online publication of electronic books and journals; operation of a club for entertainment or education purposes, namely, automobile clubs and fan clubs; Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club members; animal training; organization of lotteries; adult education services, namely, classes, seminars and workshops in the field of environmentalism; * education services, namely, * training in the field of environmental conservation practices; education services relating to conservation, namely, providing classes, lectures, seminars and workshops in the field of environmental conservation practices; Educational services, namely, providing classes, seminars and training relating to nature conservation, environmental protection, environmental conservation practices, sustainability, climate change issues, environmental regulations and standards, corporate responsibility, and emissions reduction and distribution of training material in connection therewith; [ Consultancy and information relating to the abovementioned services ] * Consultancy and information in relation to the aforesaid services; all of the aforementioned services solely in connection with environment, in particular reduction of emissions * |
| Description of Mark | The mark consists of the word "ZERO" in large font with the wording "VOLKSWAGEN WAY TO" in smaller font extending across the middle of the letters "ZE" in the word "ZERO" and a horizontal line extending after the word "TO" through the center of the letter "R" to circle the center of the letter "O" in the word "ZERO" forming a stylized power button. |
| Certificate of Correction for Registration | In the statement, classes 16, 35, 41 and 42 have been corrected per the Restriction Notice dated12/23/21, and per the Fnote dated 4/29/22. |
| Goods and Services | Passenger transport; Transport of goods; packaging and storage of goods; arranging of transportation for travel tours; traveler and passenger transportation; vehicle towing; taxi transport; transport by motor vehicles, namely, car transport, bus transport, truck transport, railway transport, cargo ship transport, and transport by two-wheeled motor vehicles; transportation logistics, namely, transportation of goods; vehicle rental, especially automobiles; transport of persons, in particular by buses; car sharing services; arranging of passenger transportation services for others via an online application; freight brokerage services; delivery of goods and packages; storage of electricity; electricity distribution; traffic information; tracking of automobile fleets using electronic navigation and locating devices in the nature of GPS navigation services |
| Goods and Services | Printed calendars; stationery; pens* ; all of the aforesaid goods solely in connection with environment, in particular reduction of emissions * |
| Goods and Services | T-shirts; polo shirts; jackets; caps being headwear; parts and accessories for all the aforesaid goods, included in this class; all aforementioned goods only in connection with merchandising and sales promotion and for use for workwear and trade fair clothing |
| Goods and Services | Retail and wholesale store services for motor vehicles and their parts and fittings; retail and wholesale mail-order services featuring motor vehicles and their parts and fittings; negotiation of commercial transaction contracts for others for the sale and purchase of motor vehicles; advertising services to promote public awareness of environmental matters; compilation of environmental information in databanks or into computer databases; [ compilation of information relating to environmental conditions in databanks or into computer databases ] * all of the aforementioned services solely in connection with environment, in particular reduction of emissions * |
| Goods and Services | Automobiles; engines for land vehicles |
| Goods and Services | [ IT services, namely, software development, programming and implementation; computer hardware development; website hosting services; server hosting; application service provider (ASP), namely, hosting computer software applications of others; software as a service (SAAS) services featuring software for data analysis, database management, electronic storage of data, monitoring energy consumption, monitoring exhaust emissions, enabling downloads and updates of vehicle software via wireless networks, improving the quality of simulations and enhancing various function of vehicles, and tracking usage of renewable energy sources, for use in the fields of vehicles, automobiles, environmental protection, and emissions reduction; rental of software; rental of computer hardware and facilities in the nature of rental of space in a computer co-location facility for containerized data centers of others; IT consultancy, advisory and information services; IT security services in the nature of protection and recovery of computer data; data duplication services, namely, media duplication of data and digital information; data conversion of electronic information; data encryption and decoding services; computer systems analysis and diagnostics; research and development of computers and computer systems; computer project management services; data mining services; digital watermarking services; computer network configuration services; computer software support services being troubleshooting of computer software problems provided via online networks and the Internet; updating the memory banks of computer systems; data migration services; updating websites for others; monitoring computer systems remotely to ensure proper functioning; data encryption services; consultancy in the field of internet and data security; ] Scientific and technological services, namely, development of computer software; scientific and technological services, namely, scientific research, analysis and testing in the fields of environmental protection, sustainability, climate change initiatives, environmental regulations and standards, emissions reduction, and technological improvements in vehicles; testing, authentication and quality control, namely, environmental testing and inspection services, authentication of digital certificates, quality control for goods and services, product quality testing services; Automotive design; New product design services; Industrial design; Graphic design services; industrial analysis and research services, namely, industrial design and industrial research in the fields of environmental protection, sustainability, climate change initiatives, environmental regulations and standards, emissions reduction, and technological improvements in vehicles; styling being industrial design; [ development and research services for new products for third parties; ] * research and development for others with regard to new products; * provision of scientific information, advice and consultancy in relation to carbon offsetting; digitization of documents, namely, scanning; technical research in the fields of environmental protection, sustainability, climate change, environmental standards, vehicle emissions reduction, and technological design improvements in vehicles; surveying; chemical research; biological research; weather forecasting; [ research in the field of physics ] * research physics * ; architectural services; fashion design; authenticating works of art; cloud seeding; [ software design for others; ] environmental monitoring services in the nature of environmental testing and inspection services; environmental monitoring services in the nature of environmental automobile emission testing and inspection services; provision of [ technological ] information, advice and consultancy in relation to carbon offsetting; scientific and technical advisory services relating to pollution control; research in the field of environmental protection; environmental science and environmental technology consultancy services in the field of environmental assessment and planning; consulting services in the field of environmental assessment; consultancy services relating to environmental planning; environmental testing of exhaust emissions; environmental testing of exhaust * with regard to * noise pollution; environmental testing; environmental surveys; environmental testing and inspection services; environmental hazard assessment; environmental monitoring of waste storage areas in the nature of environmental testing and inspection services; airborne remote monitoring relating to environmental explorations in the nature of environmental testing and inspection services; measuring the environment within buildings in the nature of environmental testing and inspection services; research in the field of environmental conservation; environmental testing [ of vibration ] * relating to vibrations * ; airborne remote sensing relating to environmental explorations in the nature of environmental testing and inspection services; scientific and technical consultation in environment protection; research related to environmental protection; research in the field of environmental protection; technical consulting in the field of environmental engineering; scientific and technical advisory services relating to environmental pollution; engineering services in the field of environmental technology; scientific and technical advisory services relating to the safety of the environment; computerized data storage services relating to information on environmental protection; consultancy services relating to research in the field of environmental protection; providing technological information about environmentally-conscious and green innovations; environmental testing services to detect contaminants in water; [ provision of technological information, advice and consultancy in relation to carbon offsetting; ] consultancy and information [ relating ] * in relation * to the [ abovementioned ] * aforesaid *services; * all of the aforementioned services solely in connection with environment, in particular reduction of emission * |
| International Class | 012 - Vehicles; apparatus for locomotion by land, air, or water. |
| US Class Codes | 019, 021, 023, 031, 035, 044 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, May 19, 2021 |
| Primary Code | 012 |
| 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 | Wednesday, May 19, 2021 |
| 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 | Wednesday, May 19, 2021 |
| Primary Code | 025 |
| 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 | Wednesday, May 19, 2021 |
| Primary Code | 035 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 039 - Transport; packaging and storage of goods; travel arrangement. |
| US Class Codes | 100, 105 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, May 19, 2021 |
| Primary Code | 039 |
| 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 | Wednesday, May 19, 2021 |
| 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 | Wednesday, May 19, 2021 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Volkswagen Aktiengesellschaft |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 09 - Joint Stock Company |
| Address | DE |
| Party Name | Volkswagen Aktiengesellschaft |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 09 - Joint Stock Company |
| Address | DE |
| Party Name | Volkswagen Aktiengesellschaft |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 09 - Joint Stock Company |
| Address | DE |
| Event Date | Event Description |
| Friday, May 26, 2023 | INVALIDATION REVIEWED - NO ACTION REQUIRED BY OFFICE |
| Saturday, April 29, 2023 | PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED |
| Tuesday, September 20, 2022 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Monday, August 29, 2022 | FINAL DISPOSITION NOTICE SENT TO IB |
| Monday, August 29, 2022 | FINAL DISPOSITION PROCESSED |
| Tuesday, July 12, 2022 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Monday, May 2, 2022 | LIMITATION FROM THE IB EXAMINED AND ENTERED |
| Friday, April 29, 2022 | CORRECTION UNDER SECTION 7 ¿ PROCESSED |
| Friday, April 29, 2022 | ASSIGNED TO PARALEGAL |
| Tuesday, April 12, 2022 | REGISTERED-PRINCIPAL REGISTER |
| Wednesday, February 9, 2022 | LIMITATION FROM THE IB EXAMINED AND ENTERED |
| Tuesday, January 25, 2022 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, January 25, 2022 | PUBLISHED FOR OPPOSITION |
| Sunday, January 23, 2022 | NOTIFICATION PROCESSED BY IB |
| Friday, January 21, 2022 | LIMITATION OF GOODS RECEIVED FROM IB |
| Wednesday, January 5, 2022 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Wednesday, January 5, 2022 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, January 5, 2022 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Saturday, December 25, 2021 | LIMITATION OF GOODS RECEIVED FROM IB |
| Saturday, December 18, 2021 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Friday, December 17, 2021 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Friday, December 17, 2021 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Friday, December 17, 2021 | TEAS REQUEST FOR RECONSIDERATION RECEIVED |
| Monday, November 15, 2021 | NOTIFICATION OF FINAL REFUSAL EMAILED |
| Monday, November 15, 2021 | FINAL REFUSAL E-MAILED |
| Monday, November 15, 2021 | FINAL REFUSAL WRITTEN |
| Thursday, November 11, 2021 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, November 11, 2021 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Thursday, November 11, 2021 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Monday, July 5, 2021 | REFUSAL PROCESSED BY IB |
| Thursday, June 17, 2021 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Thursday, June 17, 2021 | REFUSAL PROCESSED BY MPU |
| Saturday, June 12, 2021 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Friday, June 11, 2021 | NON-FINAL ACTION WRITTEN |
| Tuesday, June 8, 2021 | ASSIGNED TO EXAMINER |
| Tuesday, May 25, 2021 | APPLICATION FILING RECEIPT MAILED |
| Wednesday, May 19, 2021 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, May 17, 2021 | LIMITATION FROM ORIGINAL APPLICATION ENTERED |
| Thursday, May 13, 2021 | SN ASSIGNED FOR SECT 66A APPL FROM IB |