BEKINS - Trademark Details
Status: 604 - Abandoned - After Inter-Partes Decision
Serial Number
85750674
Word Mark
BEKINS
Status
604 - Abandoned - After Inter-Partes Decision
Status Date
2013-07-29
Filing Date
2012-10-10
Mark Drawing
4000 - Standard character mark
Typeset
Published for Opposition Date
2013-01-08
Attorney Name
Law Office Assigned Location Code
M20
Employee Name
ORNDORFF, LINDA B
Statements
Concurrent Use Statement
Concurrent use information. Concurrent use information. The Applicant seeks a registration for the listed services in the States of Washington (date of first use 00/00/1903), Oregon (date of first use 00/00/1925 and Colorado (date of first use 01/01/1930). Currently US Trademark Registration numbers 618,004, 659,670, 2,427,605 (BEKINS), 2,455,005 (BEKINS TRADESHOW SERVICES) and 2,762,203 (BEKINS WORLDWIDE SOLUTIONS) are owned by Bekins Holding Corp., formerly Bekins Van Lines. Bekins Van Lines and Bekins Moving & Storage Co. evolved from the original "Bekins" company formed in the 1800's by brothers John and Martin Bekins. In 1954, the Interstate Commerce Commission approved a separation agreement separating the original "Bekins" company into two entities. Also in 1954, Bekins Van Lines Co. applied for a federal trademark registration for the trademark BEKINS to cover "transportation and storage of household goods" claiming a date of first use in commerce of 1891 with no disclosure of the fact that another company, Bekins Moving & Storage Co., had equal rights to the BEKINS name for the same or similar services. Subsequently, four additional marks were registered with no disclosure of Bekins Moving & Storage Co.'s concurrent and co-existing rights. Through the years, Bekins Van Lines and its related companies and Bekins Moving & Storage Co. and its related companies have been able to co-exist without marketplace confusion through geographical separation. The current application seeks a concurrent registration for BEKINS to cover the applied for services in Washington, Oregon and Colorado where Bekins Moving & Storage used the mark prior to the date when Bekins Van Lines (the current Registrant) filed to register the mark. The date of first use on the application is listed as 1891 as this was the first use in interstate commerce. The actual first use by Bekins Moving& Storage in Washington, Oregon and Colorado was as least as early as 01/01/1930, (specific dates listed above) and well prior to the Registrant's first filing date of 03/17/1954
Goods and Services
Moving and storage of goods; Moving company services; Transportation and storage of goods
Classification Information
International Class
039 - Transport; packaging and storage of goods; travel arrangement. - Transport; packaging and storage of goods; travel arrangement.
US Class Codes
100, 105
Class Status Code
8 - Abandoned
Class Status Date
2013-07-29
Primary Code
039
First Use Anywhere Date
1900-00-00
First Use In Commerce Date
1900-00-00
Correspondences
Name
NANCY V. STEPHENS
Address
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Trademark Events
Event Date | Event Description |
2012-10-13 | NEW APPLICATION ENTERED IN TRAM |
2012-10-16 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
2012-10-19 | TEAS PETITION TO DIRECTOR-MAKE SPECIAL-RECEIVED |
2012-10-30 | ASSIGNED TO PETITION STAFF |
2012-10-30 | PETITION TO DIRECTOR - MAKE SPECIAL - GRANTED |
2012-10-31 | ASSIGNED TO EXAMINER |
2012-10-31 | ASSIGNED TO EXAMINER |
2012-11-01 | NON-FINAL ACTION WRITTEN |
2012-11-01 | NON-FINAL ACTION E-MAILED |
2012-11-01 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
2012-11-01 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
2012-11-01 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
2012-11-02 | TEAS/EMAIL CORRESPONDENCE ENTERED |
2012-11-15 | APPROVED FOR PUB - PRINCIPAL REGISTER |
2012-12-01 | ASSIGNED TO LIE |
2012-12-01 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
2012-12-19 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
2013-01-08 | PUBLISHED FOR OPPOSITION |
2013-01-08 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
2013-04-02 | CONCURRENT USE PROC. INSTITUTED NO. 999999 |
2013-07-29 | CONCURRENT USE DISSOLVED |
2013-07-29 | CONCURRENT USE TERMINATED NO. 999999 |
2013-07-29 | ABANDONMENT - AFTER INTER PARTES DECISION |
2013-07-30 | ABANDONMENT NOTICE MAILED - INTER PARTES DECISION |