Game File - Traxxas, L.P. v. Bungie, Inc., 91294462, No. 1 (T.T.A.B. Oct. 9, 2024)
Game File - Traxxas, L.P. v. Bungie, Inc., 91294462, No. 1 (T.T.A.B. Oct. 9, 2024)
Notice of Opposition
Notice is hereby given that the following party opposes registration of the indicated application.
Opposer information
Name Traxxas, L.P.
Granted to date 10/09/2024
of previous ex-
tension
Address 6250 TRAXXAS WAY
MCKINNEY, TX 75070
UNITED STATES
Applicant information
Application no. 98011586 Publication date 06/11/2024
Opposition filing 10/09/2024 Opposition period 10/09/2024
date ends
Applicant Bungie, Inc.
550 106TH AVENUE N.E. SUITE 207
BELLEVUE, WA 98004
UNITED STATES
Description of NONE
mark
Goods/services Class 028. First use: First Use: Jul 10, 1986 First Use In Commerce: Sep 12,
1986
Radio-controlled model vehicles and parts therefor
Description of NONE
mark
Goods/services Class 009. First use: First Use: May 26, 2004 First Use In Commerce: May 26,
2004
Batteries and battery chargers
Description of NONE
mark
Goods/services Class 009. First use: First Use: Feb 8, 2019 First Use In Commerce: Feb 8,
2019
Phone accessories, namely, hand grips, stands, and mounts adapted for phones
Class 016. First use: First Use: Apr 30, 2020 First Use In Commerce: Apr 30,
2020
Desk mats
Class 021. First use: First Use: Jul 31, 2016 First Use In Commerce: Jul 31,
2016
Cups; beverage sleeves, namely, insulating sleeve holders for beverage cans
and bottles
Description of NONE
mark
Goods/services Class 012. First use: First Use: Sep 11, 2015 First Use In Commerce: Sep 11,
2015
Pre-designed vinyl vehicle wraps specially adapted for vehicles
Class 016. First use: First Use: Apr 3, 2012 First Use In Commerce: Apr 3, 2012
Decals; stickers; posters; pens; vehicle wraps, namely, adhesive-backed cast
PVC film for wrapping commercial vehicles for advertising or other promotional
purposes
Class 022. First use: First Use: May 12, 2014 First Use In Commerce: May 12,
2014
General purpose lanyards for holding badges, keys, mobile phones, remote con-
trols, and cards
Class 024. First use: First Use: Jan 3, 2001 First Use In Commerce: Jan 3, 2001
plastic banner and vinyl banner
Class 025. First use: First Use: Jun 17, 2013 First Use In Commerce: Jun 17,
2013
Apparel, namely, hats, shirts, sweaters, hoodies, jackets, beanies, and scarves
Description of NONE
mark
Goods/services Class 008. First use: First Use: Aug 7, 2018 First Use In Commerce: Aug 7,
2018
Hand tools, namely, screwdrivers, nut drivers, hex drivers, speed bits, wrenches,
allen wrenches, t-wrenches, combination wrenches, scissors, pliers, wire cut-
ters, camber alignment gauges, toe alignment gauges, taper gauges, drive strut
alignment tools, reamers, and crimpers, adapted for use with remote controlled
model vehicles
Class 009. First use: First Use: Nov 13, 2018 First Use In Commerce: Nov 13,
2018
Hand tools, namely, temperature sensor, adapted for use with remote controlled
model vehicles
Description of NONE
mark
Goods/services Class 018. First use: First Use: Aug 2, 2023 First Use In Commerce: Aug 2,
2023
Tote bags; duffel bags; backpacks
TRAXXAS, L.P. §
§
Opposer §
§
v. §
§
BUNGIE, INC. § Mark:
§
Applicant § Application No.: 98011586
§
§
NOTICE OF OPPOSITION
Opposer Traxxas, L.P. (“Opposer”), a Texas limited partnership with a place of business
at 6250 Traxxas Way, McKinney, TX 75070, believes it is or will be damaged by the registration
of the mark (the “T TRAXUS Mark”) and hereby opposes the same.
sale and distribution of radio-controlled model vehicles and parts and accessories therefor, as
2. Opposer and its predecessors in interest have, since at least December of 1999
used and Opposer continues to use the mark TRAXXAS to identify, advertise, and promote
Opposer’s radio-controlled model vehicles and parts therefor. Opposer registered its mark
TRAXXAS on February 6, 2007 (Reg. No. 3205399) for the same goods after an application for
registration was filed on November 3, 2005, and such registration is valid. Opposer’s right to
use its TRAXXAS mark for the same goods has become incontestable. A current status copy of
mark TRAXXAS to identify, advertise, and promote Opposer’s batteries and battery chargers.
Opposer registered its mark TRAXXAS on July 11, 2017 (Reg. No. 5242836) for the same
goods after an application for registration was filed on July 7, 2016, and such registration is
valid. Opposer’s right to use its TRAXXAS mark for the same goods has become incontestable.
A current status copy of Reg. No. 5242836 is attached and pleaded into the record.
4. Opposer has, since at least February of 2019 used and Opposer continues to use
the mark TRAXXAS to identify, advertise, and promote Opposer’s phone accessories. Opposer
has, since at least April of 2020 used and Opposer continues to use the mark TRAXXAS to
identify, advertise, and promote Opposer’s desk mats. Opposer has, since at least July of 2016
used and Opposer continues to use the mark TRAXXAS to identify, advertise, and promote
Opposer’s cups and beverage sleeves. Opposer registered its mark TRAXXAS on August 11,
2020 (Reg. No. 6126517) for the foregoing goods after an application for registration was filed
on January 17, 2019, and such registration is valid. A current status copy of Reg. No. 6126517 is
5. Opposer has, since at least September of 2015 used and Opposer continues to use
the mark TRAXXAS to identify, advertise, and promote Opposer’s pre-designed vinyl vehicle
wraps specially adapted for vehicles. Opposer has, since at least April of 2012 used and Opposer
continues to use the mark TRAXXAS to identify, advertise, and promote Opposer’s decals,
stickers, posters, pens, and vehicle wraps. Opposer has, since at least May of 2014 used and
Opposer continues to use the mark TRAXXAS to identify, advertise, and promote Opposer’s
lanyards. Opposer has, since at least January of 2001 used and Opposer continues to use the
mark TRAXXAS to identify, advertise, and promote Opposer’s plastic and vinyl banners.
2
Opposer has, since at least June of 2013 used and Opposer continues to use the mark TRAXXAS
to identify, advertise, and promote Opposer’s apparel, namely, hats, shirts, sweaters, hoodies,
jackets, beanies, and scarves. Opposer registered its mark TRAXXAS on October 13, 2020
(Reg. No. 6175851) for the foregoing goods after an application for registration was filed on
January 17, 2019, and such registration is valid. A current status copy of Reg. No. 6175851 is
6. Opposer has, since at least August of 2018 used and Opposer continues to use the
mark TRAXXAS to identify, advertise, and promote Opposer’s various hand tools. Opposer has,
since at least November of 2018 used and Opposer continues to use the mark TRAXXAS to
identify, advertise, and promote Opposer’s temperature sensors. Opposer registered its mark
TRAXXAS on August 3, 2021 (Reg. No. 6442642) for the foregoing goods after an application
for registration was filed on December 4, 2018, and such registration is valid. A current status
copy of Reg. No. 6442642 is attached and pleaded into the record.
7. Opposer has, since at least October of 2016 used and Opposer continues to use the
mark TRAXXAS to identify, advertise, and promote Opposer’s tote bags, duffel bags, and
backpacks. Opposer registered its mark TRAXXAS on May 21, 2024 (Reg. No. 7393157) for
the same goods after an application for registration was filed on December 13, 2022, and such
registration is valid. A current status copy of Reg. No. 7393157 is attached and pleaded into the
record.
8. Opposer has, since at least December of 2011 used and Opposer continues to use
the mark TRAXXAS to identify, advertise, and promote Opposer’s downloadable software for
radio-controlled model vehicles. Through this use, Opposer has acquired nationwide common
law trademark rights in its mark TRAXXAS for the same goods.
3
9. It has come to the attention of Opposer that the applicant Bungie, Inc.
(“Applicant”) has applied for registration of the T TRAXUS Mark in the United States Patent
and Trademark Office, as shown in U.S. Application Ser. No. 98011586 (the “Application”),
having a filing date of May 24, 2023. The Application for the T TRAXUS Mark seeks
video game software via electronic or optical communications networks and wireless
devices; downloadable electronic game software for mobile and cellular telephones,
recordings; digital music downloadable from the Internet; audio books in the nature of
novels, comic books, graphic novels and reference guides and instruction guides in the
downloadable digital books in the nature of novels, comic books, graphic novels,
reference guides and instruction guides in the fields of video games, science fiction,
graphic novels and comic books, user manuals, instruction guides, reference guides, all
in the fields of video games, science fiction, fantasy and action-adventure stories
International Class 025: Apparel relating to video games or featuring video game
characters, scenes and symbols, namely, costumes for use in role-playing, shirts,
sweatshirts, pants, shorts, hats, baseball caps, jackets, footwear, shoes, boots
4
10. Applicant seeks to register the T TRAXUS Mark for Applicant’s Goods in
International Classes 009 and 025 as evidenced by the publication of the Application in the
11. Opposer has expended, and continues to expend, substantial efforts and sums
advertising and promoting Opposer’s goods offered in connection with its TRAXXAS mark.
Opposer has acquired and now enjoys substantial goodwill and a valuable reputation under its
TRAXXAS mark. Opposer's TRAXXAS mark has become well known within the trade and
when the marks are viewed as a whole, in connection with the associated goods.
13. “Shirts,” “hats,” and “jackets” are named in both Applicant’s Goods and Reg. No.
14. The identification for Applicant’s Goods under the T TRAXUS Mark is without
any restriction as to channels of trade or classes of purchasers. Applicant’s Goods are therefore
presumed to encompass all goods of the type described, move in all normal channels of trade,
and be available to all classes of purchasers. As such, Applicant’s Goods are therefore also
presumed to encompass and travel in the same channels of trade to the same class of purchasers
15. By virtue of Opposer aforementioned prior and senior rights arising from the
registration and use of the Opposer’s TRAXXAS mark, Applicant is barred from obtaining a
registration of the T TRAXUS Mark, because the use and attempt to register by Applicant of the
T TRAXUS Mark for Applicant’s Goods, without authorization by Opposer, will create a
likelihood of confusion, under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
5
including, without limitation, that there exists a common source, affiliation, approval, or
sponsorship with the goods provided by Opposer in connection with its marks.
Wherefore, for all of the foregoing reasons and for such other reasons as the Board
determines are appropriate, Opposer respectfully prays that this Opposition be sustained, and the
Respectfully Submitted,
Matthew Phillips
CARR LAW FIRM, PLLC
5606 SMU Boulevard #601087
Dallas, TX 75360
(214) 760-3000
[email protected]
Attorney for Traxxas, L.P.
6
Generated on: This page was generated by TSDR on 2024-10-09 17:18:58 EDT
Mark: TRAXXAS
Mark Information
Mark Literal TRAXXAS
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Gregory W. Carr Docket Number: TRAX 3351000
Attorney Primary [email protected] Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Gregory W. Carr
Name/Address: Carr Law Firm, PLLC
5606 SMU Boulevard, #601087
Dallas, TEXAS United States 75360
Phone: 214-760-3000 Fax: 214-760-3003
Correspondent e- [email protected] [email protected] Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Dec. 29, 2023 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Dec. 29, 2023 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Dec. 29, 2023 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Feb. 04, 2022 NOTICE OF SUIT
Nov. 19, 2021 NOTICE OF SUIT
May 12, 2021 NOTICE OF SUIT
May 10, 2021 NOTICE OF SUIT
May 05, 2021 NOTICE OF SUIT
May 04, 2021 NOTICE OF SUIT
Mar. 31, 2021 NOTICE OF SUIT
Feb. 01, 2021 NOTICE OF SUIT
Jan. 22, 2021 NOTICE OF SUIT
Jan. 12, 2021 NOTICE OF SUIT
May 22, 2020 NOTICE OF SUIT
Feb. 14, 2020 NOTICE OF SUIT
Feb. 13, 2020 NOTICE OF SUIT
Jul. 29, 2019 NOTICE OF SUIT
Feb. 20, 2018 COUNTERCLAIM OPP. NO. 999999 234192
Nov. 15, 2017 CORRECTION UNDER SECTION 7 - PROCESSED
Feb. 06, 2017 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Feb. 04, 2017 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Feb. 04, 2017 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Feb. 02, 2017 TEAS SECTION 8 & 9 RECEIVED
Dec. 09, 2016 POST REGISTRATION ACTION MAILED - SEC. 7
Nov. 26, 2016 CASE ASSIGNED TO POST REGISTRATION PARALEGAL
Aug. 26, 2016 TEAS SECTION 7 REQUEST RECEIVED
Feb. 06, 2016 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
May 06, 2014 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
May 06, 2014 TEAS CHANGE OF OWNER ADDRESS RECEIVED
Apr. 06, 2012 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Apr. 06, 2012 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Apr. 06, 2012 CASE ASSIGNED TO POST REGISTRATION PARALEGAL
Mar. 12, 2012 TEAS SECTION 8 & 15 RECEIVED
Mar. 05, 2009 NOTICE OF SUIT
Oct. 21, 2008 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Feb. 06, 2007 REGISTERED-PRINCIPAL REGISTER
Nov. 21, 2006 PUBLISHED FOR OPPOSITION
Nov. 01, 2006 NOTICE OF PUBLICATION
Sep. 29, 2006 LAW OFFICE PUBLICATION REVIEW COMPLETED
Sep. 28, 2006 ASSIGNED TO LIE
Sep. 15, 2006 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 15, 2006 TEAS/EMAIL CORRESPONDENCE ENTERED
Sep. 08, 2006 CORRESPONDENCE RECEIVED IN LAW OFFICE
Sep. 08, 2006 TEAS RESPONSE TO OFFICE ACTION RECEIVED
May 10, 2006 NON-FINAL ACTION MAILED
May 10, 2006 NON-FINAL ACTION WRITTEN
May 09, 2006 ASSIGNED TO EXAMINER
Dec. 21, 2005 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
Nov. 18, 2005 PAPER RECEIVED
Nov. 08, 2005 NEW APPLICATION ENTERED
Proceedings
Summary
Number of 6
Proceedings:
Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
Status Date: Feb. 14, 2024
Publication Date:Oct. 04, 2016Notice of Allowance Date:Nov. 29, 2016
Mark Information
Mark Literal TRAXXAS
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Gregory W. Carr Docket Number: TRAX 4878000
Attorney Primary [email protected] Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Gregory W. Carr
Name/Address: CARR LAW FIRM PLLC
5606 SMU Boulevard, #601087
Dallas, TEXAS UNITED STATES 75360
Phone: 214.760.3000
Correspondent e- [email protected] [email protected] Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Feb. 16, 2024 ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED
Feb. 14, 2024 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Feb. 14, 2024 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Feb. 14, 2024 CORRECTION UNDER SECTION 7 - PROCESSED
Feb. 12, 2024 CASE ASSIGNED TO POST REGISTRATION PARALEGAL
Jun. 12, 2023 TEAS SECTION 7 REQUEST RECEIVED
Jun. 05, 2023 TEAS SECTION 8 & 15 RECEIVED
Jul. 11, 2022 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
Feb. 04, 2022 NOTICE OF SUIT
Nov. 19, 2021 NOTICE OF SUIT
May 12, 2021 NOTICE OF SUIT
May 10, 2021 NOTICE OF SUIT
May 05, 2021 NOTICE OF SUIT
May 04, 2021 NOTICE OF SUIT
Jul. 11, 2017 REGISTERED-PRINCIPAL REGISTER
Jun. 06, 2017 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Jun. 05, 2017 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Jun. 03, 2017 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Jun. 02, 2017 STATEMENT OF USE PROCESSING COMPLETE
May 26, 2017 USE AMENDMENT FILED
Jun. 02, 2017 SOU EXTENSION 1 GRANTED
May 26, 2017 SOU EXTENSION 1 FILED
Jun. 02, 2017 CASE ASSIGNED TO INTENT TO USE PARALEGAL
May 26, 2017 SOU TEAS EXTENSION RECEIVED
May 26, 2017 TEAS STATEMENT OF USE RECEIVED
Nov. 29, 2016 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Oct. 04, 2016 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Oct. 04, 2016 PUBLISHED FOR OPPOSITION
Sep. 14, 2016 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Aug. 29, 2016 LAW OFFICE PUBLICATION REVIEW COMPLETED
Aug. 25, 2016 APPROVED FOR PUB - PRINCIPAL REGISTER
Aug. 25, 2016 ASSIGNED TO EXAMINER
Aug. 15, 2016 PRELIMINARY/VOLUNTARY AMENDMENT - ENTERED
Aug. 13, 2016 ASSIGNED TO LIE
Aug. 04, 2016 TEAS VOLUNTARY AMENDMENT RECEIVED
Jul. 13, 2016 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
Jul. 11, 2016 NEW APPLICATION ENTERED
Proceedings
Summary
Number of 1
Proceedings:
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Aug. 11, 2020
Publication Date:Oct. 08, 2019Notice of Allowance Date:Dec. 03, 2019
Mark Information
Mark Literal TRAXXAS
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
For: Phone accessories, namely, hand grips, stands, and mounts adapted for phones
International 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Feb. 08, 2019 Use in Commerce: Feb. 08, 2019
For: Cups; beverage sleeves, namely, insulating sleeve holders for beverage cans and bottles
International 021 - Primary Class U.S Class(es): 002, 013, 023, 029, 030, 033, 040, 050
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Jul. 31, 2016 Use in Commerce: Jul. 31, 2016
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Gregory W. Carr Docket Number: TRAX 5196000
Attorney Primary [email protected] Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Gregory W. Carr
Name/Address: Carr Law Firm, PLLC
5606 SMU Boulevard, #601087
Dallas, TEXAS United States 75360
Phone: 214-760-3000 Fax: 214-760-3003
Correspondent e- [email protected] [email protected] Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Dec. 29, 2023 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Dec. 29, 2023 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Dec. 29, 2023 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Aug. 11, 2020 REGISTERED-PRINCIPAL REGISTER
Jul. 10, 2020 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Jul. 09, 2020 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Jun. 22, 2020 STATEMENT OF USE PROCESSING COMPLETE
Jun. 09, 2020 USE AMENDMENT FILED
Jun. 22, 2020 DIVISIONAL PROCESSING COMPLETE
Jun. 09, 2020 DIVISIONAL REQUEST RECEIVED
Jun. 22, 2020 CASE ASSIGNED TO INTENT TO USE PARALEGAL
Jun. 09, 2020 TEAS REQUEST TO DIVIDE RECEIVED
Jun. 09, 2020 TEAS STATEMENT OF USE RECEIVED
Jun. 04, 2020 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Jun. 02, 2020 SOU EXTENSION 1 GRANTED
Jun. 02, 2020 SOU EXTENSION 1 FILED
Jun. 02, 2020 SOU TEAS EXTENSION RECEIVED
Dec. 03, 2019 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Oct. 08, 2019 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Oct. 08, 2019 PUBLISHED FOR OPPOSITION
Sep. 18, 2019 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Sep. 05, 2019 ASSIGNED TO LIE
Aug. 29, 2019 APPROVED FOR PUB - PRINCIPAL REGISTER
Aug. 26, 2019 PRELIMINARY/VOLUNTARY AMENDMENT - ENTERED
Aug. 26, 2019 TEAS VOLUNTARY AMENDMENT RECEIVED
Aug. 03, 2019 TEAS/EMAIL CORRESPONDENCE ENTERED
Aug. 02, 2019 CORRESPONDENCE RECEIVED IN LAW OFFICE
Aug. 02, 2019 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Mar. 13, 2019 NOTIFICATION OF NON-FINAL ACTION E-MAILED
Mar. 13, 2019 NON-FINAL ACTION E-MAILED
Mar. 13, 2019 NON-FINAL ACTION WRITTEN
Feb. 28, 2019 ASSIGNED TO EXAMINER
Feb. 09, 2019 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
Jan. 21, 2019 NEW APPLICATION ENTERED
Proceedings
Summary
Number of 1
Proceedings:
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Oct. 13, 2020
Publication Date:Dec. 03, 2019Notice of Allowance Date:Jan. 28, 2020
Mark Information
Mark Literal TRAXXAS
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
For: Decals; stickers; posters; pens; vehicle wraps, namely, adhesive-backed cast PVC film for wrapping commercial vehicles for
advertising or other promotional purposes
International 016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Apr. 03, 2012 Use in Commerce: Apr. 03, 2012
For: General purpose lanyards for holding badges, keys, mobile phones, remote controls, and cards
International 022 - Primary Class U.S Class(es): 001, 002, 007, 019, 022, 042, 050
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: May 12, 2014 Use in Commerce: May 12, 2014
For: Apparel, namely, hats, shirts, sweaters, hoodies, jackets, beanies, and scarves
International 025 - Primary Class U.S Class(es): 022, 039
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Jun. 17, 2013 Use in Commerce: Jun. 17, 2013
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Gregory W. Carr Docket Number: TRAX 5197000
Attorney Primary [email protected] Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Gregory W. Carr
Name/Address: Carr Law Firm, PLLC
5606 SMU Boulevard, #601087
Dallas, TEXAS United States 75360
Phone: 214-760-3000 Fax: 214-760-3003
Correspondent e- [email protected] [email protected] Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Dec. 29, 2023 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Dec. 29, 2023 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Dec. 29, 2023 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Oct. 13, 2020 REGISTERED-PRINCIPAL REGISTER
Sep. 11, 2020 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Sep. 10, 2020 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Aug. 12, 2020 STATEMENT OF USE PROCESSING COMPLETE
Jul. 31, 2020 USE AMENDMENT FILED
Aug. 12, 2020 CASE ASSIGNED TO INTENT TO USE PARALEGAL
Jul. 31, 2020 TEAS STATEMENT OF USE RECEIVED
Jul. 30, 2020 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Jul. 28, 2020 SOU EXTENSION 1 GRANTED
Jul. 28, 2020 SOU EXTENSION 1 FILED
Jul. 28, 2020 SOU TEAS EXTENSION RECEIVED
Jan. 28, 2020 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Dec. 03, 2019 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Dec. 03, 2019 PUBLISHED FOR OPPOSITION
Nov. 13, 2019 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Oct. 30, 2019 APPROVED FOR PUB - PRINCIPAL REGISTER
Oct. 28, 2019 TEAS/EMAIL CORRESPONDENCE ENTERED
Oct. 28, 2019 CORRESPONDENCE RECEIVED IN LAW OFFICE
Oct. 23, 2019 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Oct. 01, 2019 COMBINED EXAMINER'S AMENDMENT/PRIORITY ACTION ENTERED
Oct. 01, 2019 NOTIFICATION OF EXAMINER'S AMENDMENT/PRIORITY ACTION E-MAILED
Oct. 01, 2019 EXAMINER'S AMENDMENT/PRIORITY ACTION E-MAILED
Oct. 01, 2019 EXAMINERS AMENDMENT AND/OR PRIORITY ACTION - COMPLETED
Sep. 19, 2019 TEAS/EMAIL CORRESPONDENCE ENTERED
Sep. 19, 2019 CORRESPONDENCE RECEIVED IN LAW OFFICE
Sep. 18, 2019 ASSIGNED TO LIE
Sep. 16, 2019 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Mar. 14, 2019 NOTIFICATION OF NON-FINAL ACTION E-MAILED
Mar. 14, 2019 NON-FINAL ACTION E-MAILED
Mar. 14, 2019 NON-FINAL ACTION WRITTEN
Feb. 28, 2019 ASSIGNED TO EXAMINER
Feb. 09, 2019 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
Jan. 21, 2019 NEW APPLICATION ENTERED
Proceedings
Summary
Number of 1
Proceedings:
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Aug. 03, 2021
Publication Date:Nov. 24, 2020Notice of Allowance Date:Jan. 19, 2021
Mark Information
Mark Literal TRAXXAS
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
For: Hand tools, namely, screwdrivers, nut drivers, hex drivers, speed bits, wrenches, allen wrenches, t-wrenches, combination wrenches,
scissors, pliers, wire cutters, camber alignment gauges, toe alignment gauges, taper gauges, drive strut alignment tools, reamers, and
crimpers, adapted for use with remote controlled model vehicles
International 008 - Primary Class U.S Class(es): 023, 028, 044
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Aug. 07, 2018 Use in Commerce: Aug. 07, 2018
For: Hand tools, namely, temperature sensor, adapted for use with remote controlled model vehicles
International 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Nov. 13, 2018 Use in Commerce: Nov. 13, 2018
Basis Information (Case Level)
Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed 44D: No Currently 44D: No
Filed 44E: No Currently 44E: No
Filed 66A: No Currently 66A: No
Filed No Basis: No Currently No Basis: No
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Gregory W. Carr Docket Number: TRAX 5191000
Attorney Primary [email protected] Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Gregory W. Carr
Name/Address: Carr Law Firm, PLLC
5606 SMU Boulevard, #601087
Dallas, TEXAS United States 75360
Phone: 214-760-3000 Fax: 214-760-3003
Correspondent e- [email protected] [email protected] Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Dec. 29, 2023 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Dec. 29, 2023 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Dec. 29, 2023 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Aug. 03, 2021 REGISTERED-PRINCIPAL REGISTER
Jul. 01, 2021 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Jul. 01, 2021 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Jun. 30, 2021 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Jun. 30, 2021 STATEMENT OF USE PROCESSING COMPLETE
Jun. 02, 2021 USE AMENDMENT FILED
Jun. 30, 2021 DIVISIONAL PROCESSING COMPLETE
Jun. 02, 2021 DIVISIONAL REQUEST RECEIVED
Jun. 30, 2021 SOU EXTENSION 1 GRANTED
Jun. 02, 2021 SOU EXTENSION 1 FILED
Jun. 22, 2021 CASE ASSIGNED TO INTENT TO USE PARALEGAL
Jun. 02, 2021 TEAS REQUEST TO DIVIDE RECEIVED
Jun. 02, 2021 SOU TEAS EXTENSION RECEIVED
Jun. 02, 2021 TEAS STATEMENT OF USE RECEIVED
Jan. 19, 2021 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Nov. 24, 2020 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Nov. 24, 2020 PUBLISHED FOR OPPOSITION
Nov. 04, 2020 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Oct. 15, 2020 APPROVED FOR PUB - PRINCIPAL REGISTER
Aug. 04, 2020 TEAS/EMAIL CORRESPONDENCE ENTERED
Aug. 04, 2020 CORRESPONDENCE RECEIVED IN LAW OFFICE
Aug. 04, 2020 TEAS REQUEST FOR RECONSIDERATION RECEIVED
Feb. 05, 2020 NOTIFICATION OF FINAL REFUSAL EMAILED
Feb. 05, 2020 FINAL REFUSAL E-MAILED
Feb. 05, 2020 FINAL REFUSAL WRITTEN
Jan. 07, 2020 TEAS/EMAIL CORRESPONDENCE ENTERED
Jan. 07, 2020 CORRESPONDENCE RECEIVED IN LAW OFFICE
Jan. 06, 2020 ASSIGNED TO LIE
Dec. 16, 2019 NOTICE OF REVIVAL - E-MAILED
Dec. 16, 2019 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Dec. 16, 2019 PETITION TO REVIVE-GRANTED
Dec. 16, 2019 TEAS PETITION TO REVIVE RECEIVED
Oct. 16, 2019 ABANDONMENT NOTICE E-MAILED - FAILURE TO RESPOND
Oct. 16, 2019 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE
Mar. 13, 2019 NOTIFICATION OF NON-FINAL ACTION E-MAILED
Mar. 13, 2019 NON-FINAL ACTION E-MAILED
Mar. 13, 2019 NON-FINAL ACTION WRITTEN
Feb. 28, 2019 ASSIGNED TO EXAMINER
Dec. 21, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
Dec. 07, 2018 NEW APPLICATION ENTERED
Proceedings
Summary
Number of 1
Proceedings:
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: May 21, 2024
Publication Date:Sep. 26, 2023Notice of Allowance Date:Nov. 21, 2023
Mark Information
Mark Literal TRAXXAS
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Gregory W. Carr Docket Number: TRAX 5196002
Attorney Primary [email protected] Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Gregory W. Carr
Name/Address: Carr Law Firm, PLLC
5606 SMU Boulevard, #601087
Dallas, TEXAS United States 75360
Phone: 214-760-3000 Fax: 214-760-3003
Correspondent e- [email protected] [email protected] Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
May 21, 2024 NOTICE OF REGISTRATION CONFIRMATION EMAILED
May 21, 2024 REGISTERED-PRINCIPAL REGISTER
Apr. 13, 2024 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Apr. 12, 2024 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Apr. 11, 2024 STATEMENT OF USE PROCESSING COMPLETE
Mar. 19, 2024 USE AMENDMENT FILED
Apr. 08, 2024 CASE ASSIGNED TO INTENT TO USE PARALEGAL
Mar. 20, 2024 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Mar. 19, 2024 TEAS STATEMENT OF USE RECEIVED
Mar. 19, 2024 SOU EXTENSION 1 GRANTED
Mar. 19, 2024 SOU EXTENSION 1 FILED
Mar. 19, 2024 SOU TEAS EXTENSION RECEIVED
Dec. 29, 2023 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Dec. 29, 2023 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Dec. 29, 2023 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Nov. 21, 2023 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Sep. 26, 2023 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Sep. 26, 2023 PUBLISHED FOR OPPOSITION
Sep. 06, 2023 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Aug. 24, 2023 APPROVED FOR PUB - PRINCIPAL REGISTER
Aug. 24, 2023 ASSIGNED TO EXAMINER
Jan. 10, 2023 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
Dec. 16, 2022 NEW APPLICATION ENTERED