
| Serial Number | 79262629 |
| Word Mark | FORMATRIX |
| Filing Date | Friday, March 1, 2019 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, September 1, 2020 |
| Registration Number | 6138405 |
| Registration Date | Tuesday, September 1, 2020 |
| Mark Drawing | 4 - Illustration: Drawing with word(s) / letter(s) / number(s) in Block form |
| Published for Opposition Date | Tuesday, June 16, 2020 |
| Goods and Services | Assembly of products for others; custom assembling of polyurethane-based paints for use in building washes and lime washes, polyurethane-based coatings used as stains, plastics and elastomers for others; printing services; 3D printing services; custom color compounding of paint; custom manufacture of elastomeric components; custom manufacture of thermoplastic components; paint mixing services; custom manufacture of communication devices for others; treatment of materials using chemicals, namely, polyurethane-based paints for use in building washes and lime washes, customized polyurethane-based coatings used as stains, plastics and elastomers; providing information relating to material treatment; providing information relating to printing services; providing information relating to the rental of printing machines and apparatus; rental of printing machines and apparatus |
| Goods and Services | Apparatus for broadcasting sound, data or images; apparatus for the recording and reproduction of images; magnetic data media, namely, blank magnetic data carriers; digital recording media, namely, blank DVDs; coin-operated mechanisms for television sets; cash registers; calculators; data processing equipment, namely, computer servers, computer network servers, servers for web hosting; computers; downloadable computer software for providing technical assistance and reporting information for use in manufacturing and formulating products, especially those incorporating customized polyurethane-based paints for use in building and lime washes, customized polyurethane-based coatings used as stains, plastics and elastomers; downloadable computer application software for providing technical assistance and reporting information for use in manufacturing and formulating products, especially those incorporating customized polyurethane-based paints for use in building and lime washes, customized polyurethane-based coatings used as stains, plastics and elastomers; Downloadable graphical user interface software; downloadable universal peripheral interface software, downloadable application programming interface software; downloadable computer programs for user interface design; downloadable application software for smart phones for providing technical assistance and reporting information for use in manufacturing and formulating products, especially those incorporating customized polyurethane-based paints for use in building and lime washes, customized polyurethane-based coatings used as stains, plastics and elastomers; downloadable computer programs featuring electronic charts used to identify the hiding-power of paint; downloadable computer e-commerce software for providing technical assistance and reporting information for use in manufacturing and formulating products, especially those incorporating customized polyurethane-based paints for use in building and lime washes, customized polyurethane-based coatings used as stains, plastics and elastomers; downloadable computer e-commerce software to allow users to perform electronic business transactions via a global computer network; downloadable software development kit (SDK); downloadable software for the processing of business transactions; Downloadable cloud-based software platforms for use in manufacturing and formulating products, especially those incorporating customized polyurethane-based paints for use in building and lime washes, customized polyurethane-based coatings used as stains, plastics and elastomers; downloadable computer software for operating an online shop; downloadable software for embedding online advertising on websites; downloadable software for arranging online sales and business transactions; downloadable software for evaluating customer behaviour in online shops; downloadable computer e-commerce software for use in manufacturing and formulating products, especially those incorporating customized polyurethane-based paints for use in building and lime washes, customized polyurethane-based coatings used as stains, plastics and elastomers; downloadable customer relation management (CRM) software |
| Goods and Services | Providing access to e-commerce platforms on the internet; providing access to platforms and portals on the internet; provision of access to an electronic marketplace portal on computer networks; signal transmission for electronic commerce via telecommunication systems and data communication systems; provision of access to web pages; provision of telecommunication access services and communication links to computer databases and to the internet; electronic bulletin board services; transfer of data by telecommunications, namely, wireless transfer of data via wireless application protocols; providing an electronic mailbox for transmission of mail |
| Pseudo Mark | FOR MATRIX |
| Goods and Services | Customized polyurethane-based paints for use in building and lime washes; anti-rust preparations in the nature of oils for use on bridges, parking garages and large building construction; wood preservatives; lacquers; printing ink; inks for marking; engraving ink; thinners and thickeners for coatings, dyes and inks; customized polyurethane-based coatings used as stains for use on textiles and floorings; raw natural resins; metal in foil and powder form for use in painting, decorating, printing and art; textured additives for paints for building construction materials; textured additives for use in coatings for building construction materials |
| Goods and Services | Chemical preparations for use in industry; chemicals used in science; chemical preparations for use in photography; chemicals for use in agriculture except fungicides, herbicides, insecticides and parasiticides; chemicals used in horticulture except fungicides, herbicides, insecticides and parasiticides; chemicals used in forestry except fungicides, herbicides, insecticides and parasiticides; synthetic resins, unprocessed; unprocessed plastics; fire extinguishing compositions; fire prevention compositions; tempering preparations; metal tempering preparations; soldering preparations; soldering chemicals; tanning compositions for animal skins; adhesives for use in industry; compost; fertilizing preparations; fertilizers; biological preparations for use in industry and science |
| Goods and Services | Computer programming and software design; computer software design for others; paint matching, namely, analysis of colors of paints; designing of paint matching techniques; designing and constructing an internet platform for others in the field of electronic commerce; consultancy services relating to software used in the field of e-commerce; consultancy relating to the creation and design of websites for e-commerce; development of computer software for logistics, supply chain management and e-business portals; design and development of computer software for logistics, supply chain management and e-business portals; computer services, namely, interactive hosting services which allow the users to publish and share their own content and images online; computer programming, namely, creation of computing platforms for third parties; hosting online facilities for others for conducting interactive discussions; providing web hosting platforms on the internet for digital formulation support; providing a web hosting of e-commerce platforms on the internet for others; maintenance of software used in the field of e-commerce; providing user authentication services using biometric hardware and software technology for e-commerce transactions; providing user authentication control services of data transmitted via telecommunications using single sign on technology, and hash-based authentication services; software as a service (SaaS) services featuring software for software for use in e-commerce and construction technology; platform as a service (PaaS) featuring computer software platforms for use in manufacturing and formulating products, especially those incorporating customized polyurethane-based paints for use in building and lime washes, customized polyurethane-based coatings used as stains, plastics and elastomers; electronic data storage and data back-up services; temporary electronic storage of information and data; IT consultancy, advisory and information services; hosting of databases; electronic storage services for archiving electronic data; encryption, decryption and authentication of information, messages and data; programming of computer software for e-commerce platforms for others |
| International Class | 038 - Services allowing people to communicate with another by a sensory means. |
| US Class Codes | 100, 101, 104 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, July 15, 2019 |
| Primary Code | 038 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 040 - Treatment of materials. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, July 15, 2019 |
| Primary Code | 040 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 001 - Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. |
| US Class Codes | 001, 005, 006, 010, 026, 046 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, July 15, 2019 |
| Primary Code | 001 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 002 - Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. |
| US Class Codes | 006, 011, 016 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, July 15, 2019 |
| Primary Code | 002 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 009 - Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus. |
| US Class Codes | 021, 023, 026, 036, 038 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, July 15, 2019 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 042 - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Monday, July 15, 2019 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Covestro Deutschland AG |
| Party Type | 31 - New Owner After Registration |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | Covestro Intellectual Property GmbH & Co. KG |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | Covestro Intellectual Property GmbH & Co. KG |
| Party Type | 21 - New Owner After Publication |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | Covestro Deutschland AG |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Party Name | Covestro Deutschland AG |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 99 - Other |
| Address | DE |
| Event Date | Event Description |
| Friday, July 19, 2019 | APPLICATION FILING RECEIPT MAILED |
| Thursday, July 11, 2019 | SN ASSIGNED FOR SECT 66A APPL FROM IB |
| Monday, July 15, 2019 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, July 15, 2019 | ASSIGNED TO EXAMINER |
| Monday, August 19, 2019 | REFUSAL PROCESSED BY MPU |
| Friday, September 6, 2019 | REFUSAL PROCESSED BY IB |
| Wednesday, February 19, 2020 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Wednesday, February 19, 2020 | TEAS CHANGE OF OWNER ADDRESS RECEIVED |
| Monday, July 22, 2019 | NON-FINAL ACTION WRITTEN |
| Tuesday, July 23, 2019 | NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW |
| Monday, August 19, 2019 | NON-FINAL ACTION MAILED - REFUSAL SENT TO IB |
| Wednesday, February 19, 2020 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, February 19, 2020 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Wednesday, February 19, 2020 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Thursday, February 20, 2020 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Monday, April 6, 2020 | SUSPENSION LETTER WRITTEN |
| Monday, April 6, 2020 | LETTER OF SUSPENSION E-MAILED |
| Monday, April 6, 2020 | NOTIFICATION OF LETTER OF SUSPENSION E-MAILED |
| Tuesday, April 28, 2020 | EXAMINERS AMENDMENT -WRITTEN |
| Tuesday, April 28, 2020 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, April 28, 2020 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Wednesday, April 29, 2020 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, May 27, 2020 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, May 27, 2020 | NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB |
| Wednesday, May 27, 2020 | NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB |
| Friday, June 12, 2020 | NOTIFICATION PROCESSED BY IB |
| Tuesday, June 16, 2020 | PUBLISHED FOR OPPOSITION |
| Tuesday, June 16, 2020 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Thursday, July 16, 2020 | NEW REPRESENTATIVE AT IB RECEIVED |
| Wednesday, February 19, 2020 | APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED |
| Wednesday, February 19, 2020 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, April 28, 2020 | EXAMINER'S AMENDMENT ENTERED |
| Thursday, May 7, 2020 | ASSIGNED TO LIE |
| Thursday, July 23, 2020 | CHANGE OF OWNER RECEIVED FROM IB |
| Tuesday, September 1, 2020 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, December 1, 2020 | FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB |
| Saturday, December 19, 2020 | GENERIC MADRID TRANSACTION CREATED |
| Sunday, December 20, 2020 | GENERIC MADRID TRANSACTION SENT TO IB |
| Saturday, January 30, 2021 | FINAL DECISION TRANSACTION PROCESSED BY IB |
| Sunday, January 22, 2023 | NEW REPRESENTATIVE AT IB RECEIVED |
| Friday, February 2, 2024 | CHANGE OF OWNER RECEIVED FROM IB |
| Monday, September 1, 2025 | COURTESY REMINDER - SEC. 71 (6-YR) E-MAILED |