AKZONOBEL Trademark - Serial Number 79092411

Serial Number
79092411
Word Mark
AKZONOBEL
Filing Date
Status
PARTIAL SECTION 71 ACCEPTED
Status Date
2022-06-28
Registration Number
4069225
Registration Date
2011-12-13
Type of Mark
Service Mark
Mark Drawing
Standard character mark Typeset
Published for Opposition Date
2011-09-27
Attorney Name
Monique Raub

Statements

Goods and Services

(001) Chemicals for industrial, photographic and scientific purposes, as well as for agricultural, horticultural and forestry purposes, except fungicides, herbicides, insecticides and parasiticides; surfactants for industrial use, namely, for use in textile treatment products, textile care products, organoclays, agrochemicals, oilfield operations, industrial cleaning products, institutional cleaning products, household cleaning products, pigments, personal care products, emulsion polymerization, systems for road paving, and flotation agents for purification of minerals; synthetic resins as raw materials; cleaning materials, namely, detergents for industrial use, emulsifying agents, namely, emulsifiers for use in the manufacture of leather and textile, oil dispersants, aromatic solvents for industrial use, wetting agents; chemical products for clarifying colors and dyes, for industrial uses; bleaches and degreasing solvents, for use in manufacturing processes for metal cleansing; chemical agents for impregnating of textiles and leather, non-wovens and fabrics; chemical wetting agents; chemical preparations for oil pigments for industrial use; chemicals for use in oil and water purification; [ chemical reagents for use in the manufacture of chemical products and for use in scientific research; ] chemical compositions for waterproofing textiles; chemicals, namely, excipients, bearers and substrates not for medical applications, for industrial, agricultural, horticultural and forestry purposes; chemicals, namely, chemical compounds and mixtures, dispersants and suspensions for industrial purposes; [ mineral oils for industrial use, for leather tanning and for conserving foodstuffs; ] glycerides, fatty acids, gelatin for industrial purposes; [ modified starch for use as a powder layer for manufacturing and packaging processes and procedures; ] polymers, including redispersive polymer powders; resistant starch for industrial use for use in the manufacture of paper or textiles; synthetic resins and plastics as raw materials for use in the manufacture of plastic molding compounds; glues and adhesives for industrial use and use in the building industry; adhesives, including adhesives for the edges and overlap strips and for repairing wallpaper and other wall coverings for industrial use; [ chemical preparations for use in wood hardening; ] [ adhesives for preventing wheel bolts from coming loose; ] chemical additives for glues and adhesives [; blueprint paper; light sensitive photographic paper; light sensitive photographic films, but not exposed; photographic paper and photometric paper; light sensitive photographic dry plates; photographic sensitizers; starch for industrial use; glazers' putty; sensitized photographic paper to absorb in the ink for use with video printers ]

(002) Paints, varnishes, lacquers; powder paints; paints, namely, [ timber coatings, ] enamel paints and coil coatings; [ hardeners, namely, liquid hardeners, namely, additives for use in hardening paint for disposal; drying agents, namely, desiccants, thinners, dyes, all being textured additives for paints, varnishes and lacquers; ] preservatives in the nature of a coating against rust and against deterioration of wood; primers; wood stains; mastic-based varnishes and lacquers; [ inks, namely, printing ink pastes, ] wood stains; [ natural resins as raw materials, metals in sheet and powder form for painters, decorators, printers and artists; ] paints, namely, silicone-based coatings

(003) [ Bleaching preparations for industrial and household use; soap; paint-removing soaps; preparations and compounds for removing moulds and deposits; compounds and mixtures for removing deposits not used in manufacturing processes; paints and varnish removers; preparations for cleaning floor tiles, concrete, paving and natural stone; preparations and mixtures for removing sealants; polishes, ] degreasers [ and stone abrasives ] not used in manufacturing processes [ laundry starch; all purpose domestic cleaners ]

(005) [ All purpose disinfectants; ] biocides [ mineral food supplements for human and veterinary use ]

(007) [ Paint mixers; paint sprayers, namely, paint spraying equipment and paint spraying guns ]

(009) Computer programs, namely, computer software, namely, administrative and management support software and information supply software for use in organizing and managing customer car repair data [, paint mixing machines, creating databases in the field of color collections, and software used to monitor the status of the control paper retention in industrial paper making machinery; computer software for creating databases and analyzing data in the field of market research; data processing equipment, namely, computers for monitoring and controlling manufacturing processes; downloadable, electronically recorded on computer media computer databases in the field of consumer trends; ] computer software for recording, monitoring, compiling, analyzing, designing and predicting consumer trends [; downloadable electronic publications, namely, magazines and books in the chemicals and coatings industries ]

(016) [ Paper, cardboard, ] printed matter and printed publications, namely, magazines and books featuring the finishing, decorations and furnishing of buildings [; glues and adhesives for domestic and office use; writing materials and materials for artists, namely, artists' pastels, pencils and paint brushes; paint rollers, paint brushes, paint applicators in the nature of sponges; materials for painters, namely, finishing and decorating brushes, sponges and rollers; large and small paintbrushes; paint rollers; sponges for applying paint; palettes for painters; self-adhesive masking tape for stationery and household purposes ]

(017) [ Sealing, ] packing and insulating material [ insulating materials ] for roofs, doors and windows [; resin-based sealing materials for sealing wood and filling holes, cracks, splits and other imperfections; insulating varnishes; thermal insulating materials for thermal insulation; adhesive sealing agents, namely, adhesive sealants and roof sealants, glass sealant, fiberglass sealant, rubber sealant, ceramic tile sealant, masonry sealant, window and door sealant, metal sealant, concrete sealant, brick sealant, acrylic sealant, siding sealant, wood sealant, vinyl sealant, molding sealant, porcelain sealant and building materials sealant; sealants for filling holes, namely, caulking and expanding foam sealant for use in building and construction; expanding foam insulation for use in building and construction; intermediate products, namely, plastics in sheet, board and rod form for use in manufacturing processes and for sealing packaging and insulation foam for filling holes and cavities; adhesive sealing strips for sealing doors and windows ]

(019) Non-metallic building materials, namely, cement mixes and cement mixtures and mortar for filling holes; non-metallic building materials for filling, repairing and touching up cracks, splits cavities and other imperfections in walls, floors, ceilings and other surfaces, namely, soffits; [ wall tile adhesive; ] [ tile adhesive; mortar and plasters preparations; mortar for use as a coating; coatings in the form of plaster of Paris; ] building materials, namely, silicone-based coatings

(030) [ Salt ]

(037) [ Building construction; repair and maintenance; installation of automotive accessories, automotive detailing, and preventive anti-corrosion treatment of vehicles ]

(040) [ Treatment of materials for the manufacture of chemical goods; paint mixing services; coloring and tinting services, namely, coloring and tinting of paints, varnishes, lacquers and stains; providing information and giving advice on mixing paints and on coloring paints, varnishes, lacquers and stains ]

(041) [ Education and instructional services, namely, conducting classes in the fields of computers, computerization, computer programming, computer software, information technology, computer networks, the Internet, intranet, extranets and websites, publication of books featuring information relating to education in the above areas; education, training and instructional services, namely, conducting classes in the fields of selecting and designing home interiors, as well as in the area of color selection for paints, varnishes, lacquers and stains ]

(042) Technological services, namely, providing consultation services in the nature of carrying out and providing advice on inspections to establish vehicle damage, computer software consultation services in the nature of developing, implementing, maintaining, updating and providing advice on software in the field of repair of vehicle damage and vehicle repair [ and technical monitoring services for others for the operation of the production process in the paper and tissue paper production industries; scientific and industrial research, in the field of measuring the performance of pulp bleaching processes for others; chemical analysis and research services in the fields of pulp bleaching and paper and tissue paper production; providing technological and scientific research into the exploitation of natural, biological raw material resources; providing information and consulting in the field of interior design regarding the use and application of colors, paints, varnishes, lacquers and stains; technical advice on paint matching in the nature of color analysis for the purposes of matching colors to aid in the selection of furnishing for homes and buildings and the selection of colors for paints, varnishes, lacquers and stains and architectural advice on paint matching in the nature of color analysis for the purposes of matching colors to aid in the selection of furnishing for homes and buildings and the selection of colors for paints, varnishes, lacquers and stains; professional new product design for others, chemical analysis, product design and development in the field of chemical products and paints, varnishes, lacquers and stains; interior and exterior architecture and architecture consultancy on such matters; design of computer software; designing of interiors, home furnishing, furniture, decorating, décor; color specification, namely, for the color analysis for the purpose of interior design; industrial and graphic design ]

Classification Information

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
Active
Class Status Date
2011-02-11
Primary Code
042
First use anywhere
0
First use in commerce
0
International Class
(041) Education; providing of training; entertainment; sporting and cultural activities.
US Class Codes
100, 101, 107
Class Status Date
2019-02-19
Primary Code
041
First use anywhere
0
First use in commerce
0
International Class
(040) Treatment of materials.
US Class Codes
100, 103, 106
Class Status Date
2019-02-19
Primary Code
040
First use anywhere
0
First use in commerce
0
International Class
(019) Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
US Class Codes
001, 012, 033, 050
Class Status
Active
Class Status Date
2011-02-11
Primary Code
019
First use anywhere
0
First use in commerce
0
International Class
(030) Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.
US Class Codes
046
Class Status Date
2019-02-19
Primary Code
030
First use anywhere
0
First use in commerce
0
International Class
(037) Building construction; repair; installation services.
US Class Codes
100, 103, 106
Class Status Date
2019-02-19
Primary Code
037
First use anywhere
0
First use in commerce
0
International Class
(017) Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
US Class Codes
001, 005, 012, 013, 035, 050
Class Status Date
2022-06-28
Primary Code
017
First use anywhere
0
First use in commerce
0
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
Active
Class Status Date
2011-02-11
Primary Code
016
First use anywhere
0
First use in commerce
0
International Class
(003) Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
US Class Codes
001, 004, 006, 050, 051, 052
Class Status
Active
Class Status Date
2011-02-11
Primary Code
003
First use anywhere
0
First use in commerce
0
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 Date
2022-06-28
Primary Code
001
First use anywhere
0
First use in commerce
0
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; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
US Class Codes
021, 023, 026, 036, 038
Class Status
Active
Class Status Date
2011-02-11
Primary Code
009
First use anywhere
0
First use in commerce
0
International Class
(005) Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
US Class Codes
005, 006, 018, 044, 046, 051, 052
Class Status
Active
Class Status Date
2011-02-11
Primary Code
005
First use anywhere
0
First use in commerce
0
International Class
(007) Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
US Class Codes
013, 019, 021, 023, 031, 034, 035
Class Status Date
2019-02-19
Primary Code
007
First use anywhere
0
First use in commerce
0
International Class
(002) Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
US Class Codes
006, 011, 016
Class Status
Active
Class Status Date
2011-02-11
Primary Code
002
First use anywhere
0
First use in commerce
0

Current Owner

Original Registrant

Party Name
Address

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Legal Entity Type
Public Limited Company

Trademark Owner History

Original Applicant

Party Name
Address

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Legal Entity Type
Corporation

Owner at Publication

Party Name
Address

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Legal Entity Type
Corporation

Original Registrant

Party Name
Address

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Legal Entity Type
Public Limited Company

Correspondences

Party Name
Monique Raub, Akzo Nobel Inc.
Address

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Prior Registrations

Relationship Type
Reel Number
Prior Registration
3079821
Prior Registration
1924943

Trademark Events

Event Date
Event Description
2023-05-29
PARTIAL INVALIDATION PROCESSED BY THE IB
2023-04-19
PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB
2023-04-19
INVALIDATION PROCESSED
2023-02-28
PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED
2022-06-29
NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED
2022-06-28
REGISTERED - PARTIAL SEC 71 ACCEPTED
2022-06-27
TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED
2022-06-15
POST REGISTRATION ACTION MAILED - SEC.71
2022-06-06
CASE ASSIGNED TO POST REGISTRATION PARALEGAL
2022-06-03
NEW REPRESENTATIVE AT IB RECEIVED
2021-12-08
TEAS SECTION 71 RECEIVED
2021-12-08
APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
2021-12-08
TEAS CHANGE OF CORRESPONDENCE RECEIVED
2021-12-08
TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS
2021-12-08
ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
2021-12-08
TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
2021-12-08
TEAS CHANGE OF OWNER ADDRESS RECEIVED
2021-10-01
CHANGE OF NAME/ADDRESS REC'D FROM IB
2021-08-28
NEW REPRESENTATIVE AT IB RECEIVED
2021-02-03
LIMITATION FROM THE IB EXAMINED, NO ACTION IS NEEDED
2020-12-13
COURTESY REMINDER - SEC. 71 (10-YR) E-MAILED
2020-08-13
INTERNATIONAL REGISTRATION RENEWED
2020-07-03
LIMITATION OF GOODS RECEIVED FROM IB
2020-01-03
PARTIAL INVALIDATION PROCESSED BY THE IB
2019-11-06
PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB
2019-11-06
INVALIDATION PROCESSED
2019-10-19
PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED
2019-02-19
NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED
2019-02-19
REGISTERED - PARTIAL SEC 71 ACCEPTED
2019-02-18
CASE ASSIGNED TO POST REGISTRATION PARALEGAL
2019-01-30
TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED
2018-08-01
POST REGISTRATION ACTION MAILED - SEC.71
2018-07-24
POST REGISTRATION ACTION MAILED - SEC.71
2018-07-09
TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED
2018-01-12
POST REGISTRATION ACTION MAILED - SEC.71
2018-01-03
CASE ASSIGNED TO POST REGISTRATION PARALEGAL
2017-12-13
TEAS SECTION 71 RECEIVED
2016-12-13
COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED
2012-06-11
FINAL DECISION TRANSACTION PROCESSED BY IB
2012-05-21
FINAL DISPOSITION NOTICE SENT TO IB
2012-05-21
FINAL DISPOSITION PROCESSED
2012-03-13
FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
2011-12-13
REGISTERED-PRINCIPAL REGISTER
2011-12-04
NOTIFICATION PROCESSED BY IB
2011-09-27
OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
2011-09-27
PUBLISHED FOR OPPOSITION
2011-09-07
NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
2011-09-07
NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB
2011-08-22
LAW OFFICE PUBLICATION REVIEW COMPLETED
2011-08-18
ASSIGNED TO LIE
2011-08-06
APPROVED FOR PUB - PRINCIPAL REGISTER
2011-08-06
EXAMINER'S AMENDMENT ENTERED
2011-08-06
NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
2011-08-06
EXAMINERS AMENDMENT E-MAILED
2011-08-06
EXAMINERS AMENDMENT -WRITTEN
2011-08-02
TEAS/EMAIL CORRESPONDENCE ENTERED
2011-08-02
CORRESPONDENCE RECEIVED IN LAW OFFICE
2011-08-02
TEAS RESPONSE TO OFFICE ACTION RECEIVED
2011-03-12
REFUSAL PROCESSED BY IB
2011-03-08
TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
2011-03-08
ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
2011-02-22
NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
2011-02-22
REFUSAL PROCESSED BY MPU
2011-02-19
NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
2011-02-18
NON-FINAL ACTION WRITTEN
2011-02-15
APPLICATION FILING RECEIPT MAILED
2011-02-11
ASSIGNED TO EXAMINER
2011-02-11
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
2011-02-10
SN ASSIGNED FOR SECT 66A APPL FROM IB