| Trademark Snap Shot Amendment to Delete or Correct Basis (Table presents the data on Amendment to Delete or Correct Basis) |
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OVERVIEW |
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| SERIAL NUMBER | 88939530 | FILING DATE | 05/29/2020 |
| REG NUMBER | 0000000 | REG DATE | N/A |
| REGISTER | PRINCIPAL | MARK TYPE | TRADEMARK |
| INTL REG # | N/A | INTL REG DATE | N/A |
| TM ATTORNEY | MAI, TINA HSIN |
L.O. ASSIGNED | 117 |
PUB INFORMATION |
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| RUN DATE | 10/13/2022 | ||
| PUB DATE | 03/01/2022 | ||
| STATUS | 686-PUBLISHED FOR OPPOSITION | ||
| STATUS DATE | 10/12/2022 | ||
| LITERAL MARK ELEMENT | FUJIFILM | ||
| DATE ABANDONED | N/A | DATE CANCELLED | N/A |
| SECTION 2F | NO | SECTION 2F IN PART | NO |
| SECTION 8 | NO | SECTION 8 IN PART | NO |
| SECTION 15 | NO | REPUB 12C | N/A |
| RENEWAL FILED | NO | RENEWAL DATE | N/A |
| DATE AMEND REG | N/A | ||
FILING BASIS |
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| FILED BASIS | CURRENT BASIS | AMENDED BASIS | |||
| 1 (a) | NO | 1 (a) | NO | 1 (a) | NO |
| 1 (b) | YES | 1 (b) | NO | 1 (b) | NO |
| 44D | YES | 44D | NO | 44D | NO |
| 44E | NO | 44E | YES | 44E | YES |
| 66A | NO | 66A | NO | ||
| NO BASIS | NO | NO BASIS | NO | ||
MARK DATA |
|
| STANDARD CHARACTER MARK | NO |
| LITERAL MARK ELEMENT | FUJIFILM |
| MARK DRAWING CODE | 5-AN ILLUSTRATION DRAWING WITH WORD(S)/LETTER(S)/NUMBER(S) IN STYLIZED FORM |
| COLOR DRAWING FLAG | YES |
CURRENT OWNER INFORMATION |
|
| PARTY TYPE | 20-OWNER AT PUBLICATION |
| NAME | FUJIFILM Corporation |
| ADDRESS | 26-30, Nishiazabu 2-chome, Minato-ku Tokyo, 106-8620 |
| ENTITY | 03-CORPORATION |
| CITIZENSHIP | Japan |
GOODS AND SERVICES |
|
| INTERNATIONAL CLASS | 002 |
| DESCRIPTION TEXT | Toner; toner for printers, photocopiers, digital copiers, electrostatic copying machines, copiers, facsimiles, other office machines and industrial equipment; pigments; ink for printers, copiers, facsimiles, other office machines and industrial equipment; printing ink; dry inks; mimeographing inks; paints; filled toner cartridges; filled toner cartridges for printers with copying, facsimile and scanner function; filled toner cartridges for printers, copiers, facsimile, other office machines and industrial equipment; filled ink cartridges; filled ink cartridges for printers with copying, facsimile and scanner function; filled ink cartridges for printers, copiers, facsimile, other office machines and industrial equipment; dyestuffs; coatings in the nature of paints; nonferrous metals foil and powder for use in painting, decorating, printing and art; precious metal foil and powder for use in painting, decorating, printing and art |
| INTERNATIONAL CLASS | 007 |
| DESCRIPTION TEXT | Printing machines; industrial inkjet printing machines |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION TEXT | Photocopying machines; digital copiers; electrostatic copying machines; photo and thermal copiers; facsimile machines; telecommunication machines and apparatus; laser document printers; inkjet document printers; dye-sublimation printers; scanners; multifunctional devices which incorporate printer, copier and facsimile machine functions; multifunctional devices which incorporate copier, facsimile machine, scanner and printer functions; plotters; document printers and their component parts and fittings; scanners and their component parts and fittings; photo and thermal copiers and their component parts and fittings; facsimile machines and their component parts and fittings; multifunctional devices which incorporate copier, facsimile machine and scanner functions and their component parts and fittings; photosensitive drum for copiers; photosensitive drum for computer printers; photosensitive drum for facsimile machines; photosensitive drum for multifunctional devices which incorporate printer, facsimile machine, copier and scanner functions; thermal print head for photo copiers and document printers; ink jet head for photo copiers and document printers; LED print head for photo copiers and document printers; print head for photo copiers and document printers; light-emitting diodes (LED); laser diodes; lasers, not for medical purposes; organic light-emitting diodes (OLED); semi-conductor power elements; downloadable and recorded computer software for document management, for document creation, for document and image processing; downloadable and recorded computer software for scanning images and documents; downloadable and recorded computer software for document production and document workflow management; downloadable and recorded computer software for data processing; downloadable and recorded computer program and software for image processing; downloadable and recorded computer software for monitoring, repairing, and operating print server of computer; downloadable and recorded computer software for diagnostics and troubleshooting of document printers, copies, scanners, and facsimile machines; downloadable and recorded software for developing digital print applications; downloadable and recorded application software for monitoring printer performance, image analysis, natural language processing, translation, and character recognition; downloadable and recorded application software, namely, printer driver software; downloadable and recorded computer programs for monitoring printer performance and development of digital print software applications; toner cartridges, unfilled; toner cartridges, unfilled for printers and copies; ink cartridges, unfilled; personal digital assistants; downloadable and recorded electronic publications, namely, electronic books, magazines, brochures, and instruction manuals in the field of document reproduction, digital printing, remote and flexible working, digital transformation, graphic arts, cloud and mobile computing, artificial intelligence, and cost control; print heads for document printers and plotters |
| INTERNATIONAL CLASS | 016 |
| DESCRIPTION TEXT | Recycled paper; printing paper; paper; paper for copies; paper for printers; paper and cardboard; stationery; printed matter, namely, books, magazines, brochures, and instruction manuals in the field of document reproduction, digital printing, remote and flexible working, digital transformation, graphic arts, cloud and mobile computing, artificial intelligence, and cost control; containers of paper, for packaging |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION TEXT | Rental of copiers, printers, scanners, typewriters, word processors, and other office machines; photocopying services; document reproduction, namely, photocopying; consultancy relating to purchase and operation of copiers, printers, scanners, other office machines and industrial equipment and providing information relating thereto; providing office functions in the nature of preparation of documents using printers, photocopiers, copiers, scanners, facsimile machines, other office machines and industrial equipment; business management and consultancy concerning the reproduction, digitization and editing of documents and images using computers; operation of computers for document management; operation of computers, typewriters, teletypewriters, other office machines and industrial equipment; preparation and auditing of financial statements; filing of documents or magnetic tapes; computerized file management; providing information and consultancy about systemization of information into computer databases; compilation of information into computer databases; input of information into computer databases; registration of written communications and data in the field of customer inquiries relating to hardware and software support requests and customer support matters; business management analysis; business consultancy; marketing research or analysis; provision of information concerning commercial sales; consultancy in the field of computerized processing of information, namely, data processing |
| INTERNATIONAL CLASS | 037 |
| DESCRIPTION TEXT | Installation, maintenance and repair of printers, photocopiers, copiers, scanners, plotters, facsimiles and office machines and providing information relating thereto; repair and maintenance of 3D printers and providing information relating thereto; cleaning of office machines; refilling of toner cartridges; repair or maintenance of printing or bookbinding machines and apparatus; disinfecting of telephone handsets; installation, maintenance and repair of computer hardware; electric appliance installation and repair; installation, maintenance and repair of industrial machinery and providing information relating thereto; repair and maintenance of electronic machines and apparatus and providing information relating thereto; repair or maintenance of telecommunication machines and apparatus, other than telephone sets, radio receivers and television receivers and providing information relating thereto |
| INTERNATIONAL CLASS | 040 |
| DESCRIPTION TEXT | Digital printing; consultancy and information services relating to printing; printing services; recycling of toner cartridge; recycling of office machines and industrial equipment; recycling of waste and trash; rental of printing machines and apparatus; rental of 3D printers |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION TEXT | Consultancy relating to computer software and computer for printing; design and development of electronic data security systems; rental of computers; providing temporary use of non-downloadable computer programs for document management, document editing, metering hardware usage, document scanning, document photocopying, document imaging, graphic design, image analysis, natural language processing, translation, character recognition, and printer driver software; computer programming; testing of machines, apparatus and instruments of others to assure compliance with industry standards; scientific research in the field of machines, namely, in the field of printers, photocopiers, copiers, scanners, facsimiles machines, other office machines and industrial equipment; designing of machines, apparatus, instruments, including their parts, or systems composed of such machines, apparatus and instruments; digitization of documents in the nature of scanning; cloud computing featuring software for customer relationship management, for providing business card sharing, customer contact information management, analytics tools, online document management, and for website visitor tracking; cloud computing featuring software for image analysis, natural language processing, translation, character recognition, and printer driver software; electronic data storage; computer technology consultancy; information technology (IT) consultancy; technological advice relating to computers, automobiles and industrial machines; electronic document authentication services, namely, attesting of financial statements; consultancy and information services relating to printing technology using computers and their related equipments |
GOODS AND SERVICES CLASSIFICATION |
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| INTERNATIONAL CLASS | 002 | FIRST USE DATE | NONE | FIRST USE IN COMMERCE DATE | NONE | CLASS STATUS | 6-ACTIVE |
| INTERNATIONAL CLASS | 007 | FIRST USE DATE | NONE | FIRST USE IN COMMERCE DATE | NONE | CLASS STATUS | 6-ACTIVE |
| INTERNATIONAL CLASS | 009 | FIRST USE DATE | NONE | FIRST USE IN COMMERCE DATE | NONE | CLASS STATUS | 6-ACTIVE |
| INTERNATIONAL CLASS | 016 | FIRST USE DATE | NONE | FIRST USE IN COMMERCE DATE | NONE | CLASS STATUS | 6-ACTIVE |
| INTERNATIONAL CLASS | 035 | FIRST USE DATE | NONE | FIRST USE IN COMMERCE DATE | NONE | CLASS STATUS | 6-ACTIVE |
| INTERNATIONAL CLASS | 037 | FIRST USE DATE | NONE | FIRST USE IN COMMERCE DATE | NONE | CLASS STATUS | 6-ACTIVE |
| INTERNATIONAL CLASS | 040 | FIRST USE DATE | NONE | FIRST USE IN COMMERCE DATE | NONE | CLASS STATUS | 6-ACTIVE |
| INTERNATIONAL CLASS | 042 | FIRST USE DATE | NONE | FIRST USE IN COMMERCE DATE | NONE | CLASS STATUS | 6-ACTIVE |
MISCELLANEOUS INFORMATION/STATEMENTS |
|
| CHANGE IN REGISTRATION | NO |
| COLORS CLAIMED STATEMENT | The color(s) black and red is/are claimed as a feature of the mark. |
| DESCRIPTION OF MARK | The mark consists of the stylized word "FUJiFILM" in black except that the stylized dot in the first letter "I" is red. |
| PSEUDO MARK | FUJI FILM |
FOREIGN INFORMATION |
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| PRIORITY CLAIMED | SEC. 44(D) ON Japan |
| APPLICATION NO. | JP2020-03552 |
| APPLICATION FILING DATE | 04/01/2020 |
| FOREIGN REG NO. | 6422957 |
| FOREIGN REG DATE | 07/30/2021 |
| FOREIGN RNWL NUM | N/A |
| DATE OF FOREIGN RNWL | N/A |
| FOREIGN EXPIRATION | 07/30/2031 |
| FOREIGN RNWL EXPIRATION | N/A |
| PRIORITY CLAIMED | SEC. 44(D) ON Japan |
| APPLICATION NO. | JP2019-16671 |
| APPLICATION FILING DATE | 12/25/2019 |
| FOREIGN REG NO. | 6374774 |
| FOREIGN REG DATE | 04/08/2021 |
| FOREIGN RNWL NUM | N/A |
| DATE OF FOREIGN RNWL | N/A |
| FOREIGN EXPIRATION | 04/08/2031 |
| FOREIGN RNWL EXPIRATION | N/A |
PROSECUTION HISTORY |
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| DATE | ENT CD | ENT TYPE | DESCRIPTION | ENT NUM |
| 10/12/2022 | DP1B | I | 1(B) BASIS DELETED; PROCEED TO REGISTRATION | 040 |
| 09/26/2022 | IUCN | S | NOTICE OF ALLOWANCE CANCELLED | 039 |
| 10/12/2022 | AITU | A | CASE ASSIGNED TO INTENT TO USE PARALEGAL | 038 |
| 09/26/2022 | D1BR | I | TEAS DELETE 1(B) BASIS RECEIVED | 037 |
| 04/26/2022 | NOAM | E | NOA E-MAILED - SOU REQUIRED FROM APPLICANT | 036 |
| 03/01/2022 | NPUB | E | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED | 035 |
| 03/01/2022 | PUBO | A | PUBLISHED FOR OPPOSITION | 034 |
| 02/09/2022 | NONP | E | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED | 033 |
| 01/25/2022 | CNSA | P | APPROVED FOR PUB - PRINCIPAL REGISTER | 032 |
| 01/25/2022 | XAEC | I | EXAMINER'S AMENDMENT ENTERED | 031 |
| 01/25/2022 | GNEN | O | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED | 030 |
| 01/25/2022 | GNEA | O | EXAMINERS AMENDMENT E-MAILED | 029 |
| 01/25/2022 | CNEA | R | EXAMINERS AMENDMENT -WRITTEN | 028 |
| 01/22/2022 | ZZZX | Z | PREVIOUS ALLOWANCE COUNT WITHDRAWN | 027 |
| 01/11/2022 | PBCR | Z | WITHDRAWN FROM PUB - OG REVIEW QUERY | 026 |
| 12/30/2021 | PREV | O | LAW OFFICE PUBLICATION REVIEW COMPLETED | 025 |
| 12/28/2021 | ALIE | A | ASSIGNED TO LIE | 024 |
| 12/22/2021 | CNSA | P | APPROVED FOR PUB - PRINCIPAL REGISTER | 023 |
| 12/09/2021 | ZZZX | Z | PREVIOUS ALLOWANCE COUNT WITHDRAWN | 022 |
| 12/09/2021 | CNSA | P | APPROVED FOR PUB - PRINCIPAL REGISTER | 021 |
| 12/09/2021 | TEME | I | TEAS/EMAIL CORRESPONDENCE ENTERED | 020 |
| 12/09/2021 | CRFA | I | CORRESPONDENCE RECEIVED IN LAW OFFICE | 019 |
| 12/02/2021 | ERSI | I | TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED | 018 |
| 09/03/2021 | GNS2 | O | NOTIFICATION OF INQUIRY AS TO SUSPENSION E-MAILED | 017 |
| 09/03/2021 | GNSI | S | INQUIRY TO SUSPENSION E-MAILED | 016 |
| 09/03/2021 | CNSI | R | SUSPENSION INQUIRY WRITTEN | 015 |
| 09/03/2021 | RCCK | S | SUSPENSION CHECKED ? TO ATTORNEY FOR ACTION | 014 |
| 01/13/2021 | GNS3 | O | NOTIFICATION OF LETTER OF SUSPENSION E-MAILED | 013 |
| 01/13/2021 | GNSL | S | LETTER OF SUSPENSION E-MAILED | 012 |
| 01/13/2021 | CNSL | R | SUSPENSION LETTER WRITTEN | 011 |
| 01/07/2021 | TEME | I | TEAS/EMAIL CORRESPONDENCE ENTERED | 010 |
| 01/07/2021 | CRFA | I | CORRESPONDENCE RECEIVED IN LAW OFFICE | 009 |
| 01/03/2021 | ALIE | A | ASSIGNED TO LIE | 008 |
| 09/25/2020 | TROA | I | TEAS RESPONSE TO OFFICE ACTION RECEIVED | 007 |
| 09/03/2020 | GNRN | O | NOTIFICATION OF NON-FINAL ACTION E-MAILED | 006 |
| 09/03/2020 | GNRT | F | NON-FINAL ACTION E-MAILED | 005 |
| 09/03/2020 | CNRT | R | NON-FINAL ACTION WRITTEN | 004 |
| 08/31/2020 | DOCK | D | ASSIGNED TO EXAMINER | 003 |
| 06/18/2020 | NWOS | I | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM | 002 |
| 06/02/2020 | NWAP | I | NEW APPLICATION ENTERED IN TRAM | 001 |
CURRENT CORRESPONDENCE INFORMATION |
|
| ATTORNEY | Suzanne M. Hengl |
| CORRESPONDENCE ADDRESS | Suzanne M. Hengl BAKER BOTTS L.L.P. 30 ROCKEFELLER PLAZA 44TH FLOOR NEW YORK, NY, 10112-4498 |
| DOMESTIC REPRESENTATIVE | NONE |
PRIOR OWNER INFORMATION |
|
| PARTY TYPE | 10-ORIGINAL APPLICANT |
| NAME | FUJIFILM Corporation |
| ADDRESS | 26-30, Nishiazabu 2-chome, Minato-ku Tokyo, 106-8620 |
| ENTITY | 03-CORPORATION |
| CITIZENSHIP | Japan |