To: | Swarovski Aktiengesellschaft (nyctrademarks@bakermckenzie.com) |
Subject: | U.S. Trademark Application Serial No. 90459102 - MATRIX - N/A |
Sent: | May 07, 2021 10:33:36 AM |
Sent As: | ecom129@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90459102
Mark: MATRIX
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Correspondence Address:
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Applicant: Swarovski Aktiengesellschaft
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 07, 2021
SEARCH OF OFFICE’S DATABASE OF MARKS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
REQUIREMENTS
Before the application can be considered further, the following requirement(s) must be addressed.
IDENTIFICATION OF THE GOODS INDEFINITE
For the reasons set forth below, the identification of goods is, in part, indefinite and the nature of the goods must be further specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods.
The portion of the identification that is unacceptable is underlined and comments and suggestions for correcting the wording are set forth in the brackets. The remainder of the identification is acceptable as written. Applicant must amend the identification to specify the common commercial or generic name of the goods. If there is no common commercial or generic name, applicant must describe the product, its main purpose and its intended uses. See id.
Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments; tiaras;
hair ornaments of precious metal (jewellery) [on 01-01-2017, this 04-14-2011 manual entry was deleted in compliance with Nice 11-20 because the nature of the ornaments is unclear; this wording is no longer acceptable; further specify the nature of the goods, namely, the common commercial name or generic name of the goods; for example, if accurate, may amend to “hair ornaments of precious metal in the nature of jewelry for use in the hair”]
gemstones; synthetic precious stones; imitation precious stones; jewellery stones of facetted glass;
ornaments (jewellery) [further specify the nature of the goods, namely, the common commercial name or generic name of the goods; for example, if accurate, may amend to “Ornaments of precious metal in the nature of jewelry”];
magnets being jewellery [further specify the nature of the goods; for example, if accurate, may amend to “Jewelry, namely, magnetic necklaces”];
necklaces; earrings; bracelets;
rings (jewellery) [amend to “rings”];
brooches [clarify to “jewelry brooches”];
bangles; jewellery charms; charms for key rings; pendants;
chains of precious and semi-precious metals [further specify the nature of the goods, namely, the common commercial name or generic name of the goods; for example, if accurate, may amend to “Jewellery chain of precious and semi-precious metals”];
chain belts being jewellery; lockets; cuff links; tie pins and tie clips; shoe clips being jewellery; scarf clips being jewellery; medallions; key chains; key rings; items of jewellery of glass, natural or artificial precious stones, plastic, common or precious metal for personal use; beads for making jewellery; watches and clocks and their parts; watch bands and straps; cases adapted for holding watches and clocks; jewellery cases; jewellery boxes
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
CERTIFICATE OF FOREIGN REGISTRATION REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
CLOSING
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 129
U.S. Patent and Trademark Office
571-272-9343
douglas.lee4@uspto.gov
RESPONSE GUIDANCE