Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90459102 MATRIX(Standard Characters, see http://uspto.report/TM/90459102/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 014 for Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments; tiaras; hair ornaments of precious metal (jewellery); gemstones; synthetic precious stones; imitation precious stones; jewellery stones of facetted glass; ornaments (jewellery); magnets being jewellery; necklaces; earrings; bracelets; rings (jewellery); brooches; bangles; jewellery charms; charms for key rings; pendants; chains 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
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Liechtenstein application number 2020-901 filed 12/18/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments; tiaras; hair ornaments of precious metal (jewellery); hair ornaments of precious metal in the nature of jewellery for use in the hair; gemstones; synthetic precious stones; imitation precious stones; jewellery stones of facetted glass; ornaments (jewellery); ornaments of precious metal in the nature of jewellery; magnets being jewellery; magnets being jewellery, namely, magnetic necklaces, magnetic pendants; necklaces; earrings; bracelets; rings (jewellery); rings being jewellery; brooches; jewellery brooches; bangles; jewellery charms; charms for key rings; pendants; chains of precious and semi-precious metals; jewellery chains 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 boxesClass 014 for Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments; tiaras; hair ornaments of precious metal in the nature of jewellery for use in the hair; gemstones; synthetic precious stones; imitation precious stones; jewellery stones of facetted glass; ornaments of precious metal in the nature of jewellery; magnets being jewellery, namely, magnetic necklaces, magnetic pendants; necklaces; earrings; bracelets; rings being jewellery; jewellery brooches; bangles; jewellery charms; charms for key rings; pendants; jewellery chains 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
Deleted Filing Basis: 1(b)
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Liechtenstein application number 2020-901 filed 12/18/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Liechtenstein registration number 19428 registered 04/01/2021 with a renewal date of __________ and an expiration date of 12/18/2030 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-165225234168-2106068 68_._MATRIX_-_Registratio n_Certificate.pdf
Converted PDF file(s) ( 7 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7
Correspondence Information (current):
      LISA W. ROSAYA
      PRIMARY EMAIL FOR CORRESPONDENCE: nyctrademarks@bakermckenzie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lisa.rosaya@bakermckenzie.com
Correspondence Information (proposed):
      Lisa W. Rosaya
      PRIMARY EMAIL FOR CORRESPONDENCE: nyctrademarks@bakermckenzie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Lindsey.Utrata@bakermckenzie.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /LEU/      Date: 06/24/2021
Signatory's Name: Lindsey E. Utrata
Signatory's Position: Attorney of Record, Authorized Attorney, New York Bar Member
Signatory's Phone Number: 212.626.4242

Signature method: Signed directly within the form

Response Signature
Signature: /LEU/     Date: 06/24/2021
Signatory's Name: Lindsey E. Utrata
Signatory's Position: Attorney of Record, Authorized Attorney, New York Bar Member

Signatory's Phone Number: 212.626.4242 Signature method: Signed directly within the form

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    LISA W. ROSAYA
   BAKER & MCKENZIE LLP
   
   452 FIFTH AVENUE
   NEW YORK, New York 10018
Mailing Address:    Lisa W. Rosaya
   BAKER & MCKENZIE LLP
   452 FIFTH AVENUE
   NEW YORK, New York 10018
        
Serial Number: 90459102
Internet Transmission Date: Thu Jun 24 21:16:28 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20210624211628
024838-90459102-7801cd0f9c1a44a2f80a67ad
609559a91a15bfac8591b0ce349f897c14f4e068
3b-N/A-N/A-20210624210606868845