BEKINS
BEKINS MOVING & STORAGE CO.
Application Filed: 2012-10-10
Trademark Application Details
ABANDONED - AFTER INTER-PARTES DECISION
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| Serial Number | 85750674 |
| Mark Drawing Code | 4000: Illustration: Drawing with word(s)/letter(s)/number(s) in Block form |
| Attorney Name | Nancy V. Stephens |
| Attorney Docket Number | 79869-5 |
| Law Office Assigned | M20 |
| Employee Name | ORNDORFF, LINDA B |
Timeline
| 1900-00-00 | Date of First Use |
| 2012-10-10 | Application Filed |
| 2013-01-08 | Published for Opposition |
| 2013-07-29 | Abandon |
| 2013-07-29 | Location: TTAB |
| 2013-07-29 | Status: Dead/Abandoned |
| 2018-07-08 | Transaction Date |
Trademark Applicants & Owners
| Owner: |  BEKINS MOVING & STORAGE CO. |
| Address | 6501 216th St. SW Mountlake Terrace WA 98043 |
| Legal Entity Type | Corporation |
| Legal Entity State | WA |
Documents
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Attorney of Record
Good, Services, and Codes
| International Codes: | 39 |
| U.S. Codes: | 100,105 |
| Type Code | Type |
|---|---|
| CU0001 | 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 |
Trademark Filing History
| Description | Date | Event Coding |
|---|---|---|
| NEW APPLICATION ENTERED IN TRAM | 2012-10-13 | 1 NWAP I:Incoming Correspondence |
| NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM | 2012-10-16 | 2 NWOS I:Incoming Correspondence |
| TEAS PETITION TO DIRECTOR-MAKE SPECIAL-RECEIVED | 2012-10-19 | 3 TPMS I:Incoming Correspondence |
| ASSIGNED TO PETITION STAFF | 2012-10-30 | 4 APET A:Allowance for Publication |
| PETITION TO DIRECTOR - MAKE SPECIAL - GRANTED | 2012-10-30 | 5 PMSG O:Outgoing Correspondence |
| ASSIGNED TO EXAMINER | 2012-10-31 | 6 DOCK D:Assigned to Examiner |
| ASSIGNED TO EXAMINER | 2012-10-31 | 7 DOCK D:Assigned to Examiner |
| NON-FINAL ACTION WRITTEN | 2012-11-01 | 8 CNRT R:Renewal |
| NON-FINAL ACTION E-MAILED | 2012-11-01 | 9 GNRT F:First Action |
| NOTIFICATION OF NON-FINAL ACTION E-MAILED | 2012-11-01 | 10 GNRN O:Outgoing Correspondence |
| TEAS RESPONSE TO OFFICE ACTION RECEIVED | 2012-11-01 | 11 TROA I:Incoming Correspondence |
| CORRESPONDENCE RECEIVED IN LAW OFFICE | 2012-11-01 | 12 CRFA I:Incoming Correspondence |
| TEAS/EMAIL CORRESPONDENCE ENTERED | 2012-11-02 | 13 TEME I:Incoming Correspondence |
| APPROVED FOR PUB - PRINCIPAL REGISTER | 2012-11-15 | 14 CNSA O:Outgoing Correspondence |
| ASSIGNED TO LIE | 2012-12-01 | 15 ALIE A:Allowance for Publication |
| LAW OFFICE PUBLICATION REVIEW COMPLETED | 2012-12-01 | 16 PREV O:Outgoing Correspondence |
| NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED | 2012-12-19 | 17 NONP E:E-Mail |
| PUBLISHED FOR OPPOSITION | 2013-01-08 | 18 PUBO A:Allowance for Publication |
| OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED | 2013-01-08 | 19 NPUB E:E-Mail |
| CONCURRENT USE PROC. INSTITUTED NO. 999999 | 2013-04-02 | 20 CU.I T:TTAB Proceeding |
| CONCURRENT USE DISSOLVED | 2013-07-29 | 21 CU.M T:TTAB Proceeding |
| CONCURRENT USE TERMINATED NO. 999999 | 2013-07-29 | 22 CU.T T:TTAB Proceeding |
| ABANDONMENT - AFTER INTER PARTES DECISION | 2013-07-29 | 23 ABN4 O:Outgoing Correspondence |
| ABANDONMENT NOTICE MAILED - INTER PARTES DECISION | 2013-07-30 | 24 MAB4 O:Outgoing Correspondence |
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