TRANSFORM TO PERFORM - Trademark Details
Status: 404 - U.S. registration cancelled because International Registration cancelled in whole or in part
Image for trademark with serial number 79022402
Serial Number
79022402
Registration Number
3204212
Word Mark
TRANSFORM TO PERFORM
Status
404 - U.S. registration cancelled because International Registration cancelled in whole or in part
Status Date
2015-07-02
Filing Date
2005-07-01
Registration Number
3204212
Registration Date
2007-01-30
Mark Drawing
4000 - Standard character mark Typeset
Published for Opposition Date
2006-11-14
Attorney Name
Law Office Assigned Location Code
M30
Employee Name
MALIK, ATTIYA
Statements
Goods and Services
Minerals, natural or processed mineral materials and products containing minerals namely, alumina, andalusite, ball clay, barium sulphates, bauxite, bentonite, calcined kaolin, carbon, china clay, chromium corundum, clay, cordierite, dolomite, drilling fluids, feldspar, graphite, ground or synthesized calcium carbonate, halloysite, kaolin, magnesia, carbonate, marble, metakaolin, mica, montmorillonite, mullite, pegmatite, quartz, ferriferous sandstone, sialon, silica, silicon carbide, smectite clay, strontium carbonate, talc, vermiculite, refractory clays or blends thereof in the form of pellets, pills, granules, nuggets, porous nuggets, powders or muds; mixed mineral composites consisting primarily of alumina, andalusite, ball clay, barium sulphates, bauxite, bentonite, calcined kaolin, carbon, china clay, chromium corundum, clay, cordierite, dolomite, drilling fluids, feldspar, graphite, ground or synthesized calcium carbonate, halloysite, kaolin, magnesia, carbonate, marble, metakaolin, mica, montmorillonite, mullite, pegmatite, quartz, ferriferous sandstone, sialon, silica, silicon carbide, smectite clay, strontium carbonate, talc, vermiculite, refractory clays or blends thereof and for use in the manufacture of ceramics, tableware, sanitary ware, refractory products, tile, glass, paper, paperboard, cardboard, abrasives, paint, sealants, adhesives, rubber, cable, plastics, breathable films, artificial or synthetic resins, steels, carpeting, construction products, concrete, precision casting, electronics, enamels, inks, drilling fluids, lubricants, batteries, and fuel cells, catalysts, friction material, brake pads, liners, and clutch facings, powder metallurgy, and agricultural goods; mineral composites containing fibrous materials or other non-mineral materials for use in the manufacture of ceramics, tableware, sanitary ware, refractory products, tile, glass, paper, paperboard, cardboard, abrasives, paint, sealants, adhesives, rubber, cable, plastics, breathable films, artificial or synthetic resins, steels, carpeting, construction products, concrete, precision casting, electronics, enamels, inks, drilling fluids, lubricants, batteries, and fuel cells, catalysts, friction material, brake pads, liners, and clutch facings, powder metallurgy, and agricultural goods; compositions consisting of minerals and chemical products for use in the manufacture of ceramics, tableware, sanitary ware, refractory products, tile, glass, paper, paperboard, cardboard, abrasives, paint, sealants, adhesives, rubber, cable, plastics, breathable films, artificial or synthetic resins, steels, carpeting, construction products, concrete, precision casting, electronics, enamels, inks, drilling fluids, lubricants, batteries, and fuel cells, catalysts, friction material, brake pads, liners, and clutch facings, powder metallurgy, and agricultural goods; minerals having undergone a chemical surface treatment for use in the manufacture of ceramics, tableware, sanitary ware, refractory products, tile, glass, paper, paperboard, cardboard, abrasives, paint, sealants, adhesives, rubber, cable, plastics, breathable films, artificial or synthetic resins, steels, carpeting, construction products, concrete, precision casting, electronics, enamels, inks, drilling fluids, lubricants, batteries, and fuel cells, catalysts, friction material, brake pads, liners, and clutch facings, powder metallurgy, and agricultural goods; fillers containing minerals, bodies and mixtures made from minerals for use in the paper, paints, plastics and rubber industries; industrial minerals namely alumina, andalusite, ball clay, barium sulphates, bauxite, bentonite, calcined kaolin, carbon, china clay, chromium corundum, clay, cordierite, dolomite, drilling fluids, feldspar, graphite, ground or synthesized calcium carbonate, halloysite, kaolin, magnesia, carbonate, marble, metakaolin, mica, montmorillonite, mullite, pegmatite, quartz, ferriferous sandstone, sialon, silica, silicon carbide, smectite clay, strontium carbonate, talc, vermiculite, refractory clays or blends thereof for use in one or several ore preparations for cast iron, ceramic, refractory materials, sanitary apparatus, glass, paper, cardboard, abrasive materials, paint, sealing materials, adhesives, rubber, cables, plastics, steel, carpet, building industries and the environmental protection industries; chemical products for the preparation of enamels; chemical products used as thinners in the manufacture of paints and coatings; chemicals used in drilling muds; chemicals used in the manufacture of inks; lime for agricultural purposes
Goods and Services
Fillers, namely clays for use as colorants in paint; mineral pigments, thinners and coating composites containing these materials for use in the manufacture of paints, dyes, varnishes and lacquers; enamel paints; ferruginous sandstone; natural or synthetic dyestuffs for use in the ceramics industry
Goods and Services
Non-metallic building materials namely bricks, marble, natural stone; cement and mortar made primarily of silica, mullite, magnesia or grog; non-metal roofing materials, namely tiles and slates; non-metallic chimney flues; monolithic refractory shapes and mortars made from minerals for use as construction material; raw materials for ceramic use, namely processed white clay or ball clay or mixtures of both; chemically treated kaolin, composites of kaolin and bentonite all for ceramic use; mineral pellets for use in the building industry; metakaolin and composites containing metakaolin for use in the building industry; fired refractory materials; refractory shapes and linings; limestone and gypsum for the building industry
Goods and Services
Venture capital services, namely providing financing to emerging and start-up companies; investment fund management; equity capital investment; rental and leasing of land and real property
Goods and Services
Processing and refining of minerals; refining of metals; providing information in the fields processing, refining and chemical treatment of minerals and metals; handling of minerals; enrichment, refining, crushing and grinding of minerals; classification of minerals; chemical processing of minerals; washing, spin-drying and drying of minerals
Goods and Services
Quarrying services; mining and mineral exploration services; geological research and surveys; mud and mineral drilling services, namely providing measurements and downhole telemetry while drilling; laboratory research in the field of extraction, processing and transformation of minerals and metals; technical information and technical consulting in the field of extraction, processing and transformation of minerals and metals
Classification Information
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. - 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
F - Section 71 - Cancelled
Class Status Date
2013-10-04
Primary Code
001
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. - 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 Code
F - Section 71 - Cancelled
Class Status Date
2013-10-04
Primary Code
002
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. - 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 Code
F - Section 71 - Cancelled
Class Status Date
2013-10-04
Primary Code
019
International Class
036 - Insurance; financial affairs; monetary affairs; real estate affairs. - Insurance; financial affairs; monetary affairs; real estate affairs.
US Class Codes
100, 101, 102
Class Status Code
F - Section 71 - Cancelled
Class Status Date
2013-10-04
Primary Code
036
International Class
040 - Treatment of materials. - Treatment of materials.
US Class Codes
100, 103, 106
Class Status Code
F - Section 71 - Cancelled
Class Status Date
2013-10-04
Primary Code
040
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; legal services. - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.
US Class Codes
100, 101
Class Status Code
F - Section 71 - Cancelled
Class Status Date
2013-10-04
Primary Code
042
Correspondences
Name
Virginia L. Carron
Address
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International Registrations
International Registration Number
0881085
International Registration Date
2005-07-01
International Publication Date
2006-06-01
International Renewal Date
2015-07-01
Auto Protection Date
2007-11-11
International Status
102 - Death of IR (Dead as a Result of Non-Renewal, Renunciation or Cancellation by Holder of International Registration)
International Status Date
2015-07-02
Priority Claimed In
True
Priority Claimed Date
2005-01-24
First Refusal In
True
Trademark Events
Event DateEvent Description
2006-05-11SN ASSIGNED FOR SECT 66A APPL FROM IB
2006-05-12NEW APPLICATION ENTERED IN TRAM
2006-05-12ASSIGNED TO EXAMINER
2006-05-16NON-FINAL ACTION WRITTEN
2006-05-17NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
2006-05-18REFUSAL PROCESSED BY MPU
2006-05-18NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
2006-06-02REFUSAL PROCESSED BY IB
2006-09-08TEAS RESPONSE TO OFFICE ACTION RECEIVED
2006-09-08TEAS CHANGE OF CORRESPONDENCE RECEIVED
2006-09-08TEAS REVOKE/APPOINT ATTORNEY RECEIVED
2006-09-08ATTORNEY REVOKED AND/OR APPOINTED
2006-09-08CORRESPONDENCE RECEIVED IN LAW OFFICE
2006-09-12TEAS/EMAIL CORRESPONDENCE ENTERED
2006-09-15NEW REPRESENTATIVE AT IB RECEIVED
2006-09-29APPROVED FOR PUB - PRINCIPAL REGISTER
2006-10-06ASSIGNED TO LIE
2006-10-06LAW OFFICE PUBLICATION REVIEW COMPLETED
2006-10-25NOTICE OF PUBLICATION
2006-11-14PUBLISHED FOR OPPOSITION
2006-11-30NEW REPRESENTATIVE AT IB RECEIVED
2007-01-30REGISTERED-PRINCIPAL REGISTER
2007-08-23FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
2007-08-27FINAL DISPOSITION PROCESSED
2007-08-27FINAL DISPOSITION NOTICE SENT TO IB
2008-05-23FINAL DECISION TRANSACTION PROCESSED BY IB
2013-10-04CANCELLED SECTION 71
2014-06-04TOTAL INVALIDATION OF REG EXT PROTECTION CREATED
2014-12-20GENERIC MADRID TRANSACTION CREATED
2014-12-20GENERIC MADRID TRANSACTION SENT TO IB
2015-06-06TOTAL INVALIDATION PROCESSED BY THE IB
2016-01-14DEATH OF INTERNATIONAL REGISTRATION
2016-01-14NOTIFICATION OF EFFECT OF CANCELLATION OF INTL REG E-MAILED