It's What's Inside That Counts Trademark Details

Word Mark | It's What's Inside That Counts |
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Status | Alive Registered 700 — Registered |
Current Owner
Serial Number | 85509286 |
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Registration Number | 4396947 |
Status Date | Tuesday, September 3, 2013 |
Filing Date | Tuesday, September 3, 2013 |
Registration Date | Tuesday, September 3, 2013 |
Attorney | Kristin H. Altoff |
Correspondent
Kristin H. Altoff
Morgan, Lewis & Bockius LLP
Attention: TMSU
1111 Pennsylvania Avenue, NW
Washington DC 20004
Morgan, Lewis & Bockius LLP
Attention: TMSU
1111 Pennsylvania Avenue, NW
Washington DC 20004
Case File Statements
Indication of Colors | Color is not claimed as a feature of the mark. |
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Goods & Services | Industrial chemicals; hydraulic fluid; fire-resistant hydraulic fluid; mold release preparations; coolants for use in metalworking; coolants for use in drawing, forming, stamping and blankwashing operations on metal surfaces; chemical preparations in the nature of bonding agents for fibrous materials, pigments, cements, paper, leather, textiles, and metals; chemical dust suppressant preparations that are not petroleum, oil or grease-based, namely, dust suppressing chemicals in liquid form for use with or on unpaved roads, mineral stockpiles, conveyors, embankments and piles, and mine surfaces; hygroscopic chemicals and other chemical preparations, namely, dust suppressing chemicals that are not petroleum, oil, or grease-based for absorbing and suppressing dust and airborne soil particulates; chemical preparations for cleaning purposes for use in metalworking |
Goods & Services | Rust preventatives in the nature of a coating; anti-rust greases and oils; all the foregoing for use in the primary metals industry, namely, by manufacturers of ferrous and non-ferrous metals, and by manufacturers of metal products; anti-corrosion thin-film coatings for application to metals and metal surfaces |
Goods & Services | Cleaning preparations, namely, industrial cleaners for metals and metal surfaces |
Goods & Services | Industrial lubricants for metalworking and metal casting; lubricating compositions, namely, industrial lubricants for casting dies; lubricating oils and greases for use in the working, rolling, grinding, cutting, finishing, and coating of metals; lubricating oils and greases containing chemically transformed petroleum derived hydrocarbons and mixtures of hydrocarbons used in rolling of metals as lubricant, protector, and cleaning agent during manufacturing, processing, or fabricating of steel or metal; lubricants for rolling and forming of ferrous and non-ferrous metals; lubricants for use in the hot rolling of aluminum sheet and plate |
Goods & Services | Chemical processing management services for others in the fields of chemical processing, metalworking and steelworking, namely, chemical procurement of industrial chemicals, inventory management and control, providing business consultation and advice in the fields of chemical processing and management thereof, and business consultation services in the field of chemical process optimization |
Goods & Services | Chemical processing management services for others in the fields of chemical processing, metalworking and steelworking, namely, on-site observation and monitoring of chemical processing, consulting services in the field of waste reduction, management of the recycling of waste from such processing, and providing technical consultation in the field of chemical processing |
Goods & Services | Chemical processing management services for others in the fields of chemical processing, metalworking and steelworking, namely, preparation of material safety data sheet and environmental and occupational and safety compliance reports |
Pseudo Mark | It Is What Is Inside That Counts |
Classifications
International Class Codes |
001
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U.S. Class Codes | 001, 005, 006, 010, 026, 046 |
Status | 6 — Active |
Status Date | Tuesday, January 10, 2012 |
First Use Anywhere | Monday, June 25, 2012 |
First Use In Commerce | Sunday, September 9, 2012 |
Primary Code | 001 |
International Class Codes |
002
|
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U.S. Class Codes | 006, 011, 016 |
Status | 6 — Active |
Status Date | Tuesday, January 10, 2012 |
First Use Anywhere | Monday, June 25, 2012 |
First Use In Commerce | Sunday, September 9, 2012 |
Primary Code | 002 |
International Class Codes |
003
|
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U.S. Class Codes | 001, 004, 006, 050, 051, 052 |
Status | 6 — Active |
Status Date | Tuesday, September 25, 2012 |
First Use Anywhere | Monday, June 25, 2012 |
First Use In Commerce | Sunday, September 9, 2012 |
Primary Code | 003 |
International Class Codes |
004
|
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U.S. Class Codes | 001, 006, 015 |
Status | 6 — Active |
Status Date | Tuesday, January 10, 2012 |
First Use Anywhere | Monday, June 25, 2012 |
First Use In Commerce | Sunday, September 9, 2012 |
Primary Code | 004 |
International Class Codes |
035
|
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U.S. Class Codes | 100, 101, 102 |
Status | 6 — Active |
Status Date | Tuesday, January 10, 2012 |
First Use Anywhere | Monday, June 25, 2012 |
First Use In Commerce | Sunday, September 9, 2012 |
Primary Code | 035 |
International Class Codes |
040
|
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U.S. Class Codes | 100, 103, 106 |
Status | 6 — Active |
Status Date | Tuesday, September 25, 2012 |
First Use Anywhere | Monday, June 25, 2012 |
First Use In Commerce | Sunday, September 9, 2012 |
Primary Code | 040 |
International Class Codes |
045
|
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U.S. Class Codes | 100, 101 |
Status | 6 — Active |
Status Date | Tuesday, September 25, 2012 |
First Use Anywhere | Monday, June 25, 2012 |
First Use In Commerce | Sunday, September 9, 2012 |
Primary Code | 045 |
Trademark Timeline
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Jan 05 2012Trademark application filed with USPTO
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Jan 09 2012New Application Entered In Tram
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Jan 10 2012New Application Office Supplied Data Entered In Tram
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Jan 11 2012Notice of Pseudo Mark Mailed
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Jan 27 2012Teas Voluntary Amendment Received
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Feb 07 2012Assigned To Lie
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Feb 09 2012Applicant Amendment Prior To Examination - Entered
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Mar 08 2012Assigned To Examiner
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Mar 16 2012Notification of Non-Final Action E-Mailed
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Mar 16 2012Non-Final Action E-Mailed
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Mar 16 2012Non-Final Action Written
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Jun 25 2012First use anywhere for the mark
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Jun 25 2012First use anywhere for the mark
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Jun 25 2012First use anywhere for the mark
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Jun 25 2012First use anywhere for the mark
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Jun 25 2012First use anywhere for the mark
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Jun 25 2012First use anywhere for the mark
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Jun 25 2012First use anywhere for the mark
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Sep 09 2012First use in commerce for the mark
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Sep 09 2012First use in commerce for the mark
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Sep 09 2012First use in commerce for the mark
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Sep 09 2012First use in commerce for the mark
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Sep 09 2012First use in commerce for the mark
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Sep 09 2012First use in commerce for the mark
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Sep 09 2012First use in commerce for the mark
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Sep 14 2012Teas Response To Office Action Received
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Sep 25 2012Approved For Pub - Principal Register
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Sep 25 2012Teas/email Correspondence Entered
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Sep 25 2012Correspondence Received In Law Office
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Sep 26 2012Law Office Publication Review Completed
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Oct 10 2012Notification of Notice of Publication E-Mailed
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Oct 30 2012Official Gazette Publication Confirmation E-Mailed
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Oct 30 2012Published For Opposition
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Dec 25 2012Noa E-Mailed - Sou Required From Applicant
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Jun 25 2013Use Amendment Filed
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Jun 25 2013Extension 1 Filed
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Jun 25 2013Teas Extension Received
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Jun 25 2013Teas Statement of Use Received
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Jul 24 2013Case Assigned To Intent To Use Paralegal
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Jul 26 2013Law Office Registration Review Completed
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Jul 26 2013Allowed Principal Register - Sou Accepted
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Jul 26 2013Statement of Use Processing Complete
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Jul 26 2013Extension 1 Granted
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Jul 27 2013Notice of Approval of Extension Request E-Mailed
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Jul 27 2013Notice of Acceptance of Statement of Use E-Mailed
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Sep 03 2013Registered-Principal Register
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Sep 03 2013Trademark officially registered with the USPTO
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Sep 17 2013Attorney Revoked And/or Appointed
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Sep 17 2013Teas Revoke/appoint Attorney Received
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Jan 07 2014Attorney Revoked And/or Appointed
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Jan 07 2014Teas Revoke/appoint Attorney Received