UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/503938
APPLICANT: Vitec CC, Inc.
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CORRESPONDENT ADDRESS: BRUCE D. HOLLOWAY REED SMITH CROSBY HEAFEY LLP 1999 HARRISON STREET OAKLAND, CALIFORNIA 94612
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: MATRIX PLUS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 350583.00030
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/503938
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2,670,814 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the examining attorney must compare the goods to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). TMEP §§1207.01 et seq.
The applicant applied to register the mark MATRIX PLUS for “electrical intracommunications systems comprising control stations, interface modules, frames, controller cards, connectors, power supplies, panels and mountings, software for operation of the foregoing, and user manuals sold as a package therewith.” The registered mark is MATRIX for “Wireless transmission systems comprised of receivers and transmitters for transmitting audio and video signals from computers to home theater systems.”
Similarity of the Marks
Similarity in appearance is one factor in determining whether there is a likelihood of confusion between marks. Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words. See, e.g., Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS, both for systems software); Canadian Imperial Bank of Commerce, N.A., v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH held likely to be confused with COMMUNICASH, both for banking services); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (TRUCOOL for synthetic coolant held likely to be confused with TURCOOL for cutting oil). TMEP §1207.01(b)(ii).
Here, the applicant’s mark and the registered mark contain the identical term MATRIX. The addition of the word PLUS to the applicant’s mark does not obviate the similarity in appearance and overall commercial impression of the two marks.
Comparison of Goods
The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). TMEP §1207.01(a)(i).
Here, the applicant has intracommunication systems and the registrant has wireless transmission systems for transmitting signals from computers to home theater systems. The applicant’s and registrant’s goods are related in that both parties have a type of communication system and the applicant’s systems are worded broadly enough to include wireless communication systems. In addition, the applicant has not specified the use of its intracommunication systems, thus it must be presumed that the applicant’s systems include systems of the same type as those of the applicant, namely systems for transmitting signals from computers to home theater systems. Thus, because of the similarity in appearance and overall commercial impression of the applicant’s mark and the registered mark, and because of the relatedness of the applicant’s and registrant’s goods, purchasers encountering those goods are likely to mistakenly believe they are provided by a common source. Accordingly, registration is refused.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The examining attorney encloses information regarding pending Application Serial Nos. 78-065384 and 76-437249. The filing dates of the referenced applications precede the applicant’s filing date. There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If one or more of the referenced applications matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §1208.01.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
The applicant must insert a disclaimer of MATRIX in the application. MATRIX is merely descriptive of a characteristic of the applicant’s goods in that the term MATRIX is commonly used to refer to a type of or a feature of an intercom system. The applicant’s specimen indicates that its goods are intercom key stations and that a “matrix system” is a part of its intercom system. In addition, the applicant should note the attached sampling of excerpts of articles printed from Nexis indicating that the term MATRIX is commonly used to refer to a type of intercom system. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use MATRIX apart from the mark as shown.
Filing Fee Advisory - Fee Increase Effective January 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Stacy B. Wahlberg/
Trademark Attorney
Law Office 113
(703) 308-9113 ext. 206
LO Fax (703) 746-8113
LO email: ecom113@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
MAIL-IT REQUESTED: OCTOBER 10, 2003 10083K
CLIENT: GHJKGJK
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
MATRIX W/10 (INTERCOM OR INTERCOMMUNICATION)
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 103
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1-3,5,8,17
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: WAHLBERG, STACY
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************01728**********************************
Copyright 2003 by PRIMEDIA Business Magazines & Media Inc.
"All Rights Reserved"
Entertainment Design
October 1, 2003
SECTION: ISSN: 1520-5150; Pg. 9
LENGTH: 2110 words
HEADLINE: FRANK GEHRY GOES TO COLLEGE
BYLINE: By ellen lampert-gréaux
BODY:
... Shure dual-diversity wireless units, plus wired units including Shure Beta 58A, 87A, 57A, Shure SM81 & SM94, AKG C535, and 414B/ULS, plus an Active Direct Box BSS AR-133. The production intercom is a Clear-Com 4-channel system with assignable matrix, and the theatre is equipped with an assisted listening system by Sennheiser SZI1029 . A performance video system includes a Hitachi KP-D51 camera with Cosmicar H6Zbe lens and Sony KV-27S42 monitors.
Theatre 2 is an extremely ...
LOAD-DATE: September 29, 2003
Copyright 2003 by PRIMEDIA Business Magazines & Media Inc.
"All Rights Reserved"
Broadcast Engineering
September 1, 2003
SECTION: ISSN: 0007-1994; Pg. 4
LENGTH: 3289 words
HEADLINE: IBC 2003
BODY:
... asymmetric trimming; customization features including fully customizable keyboards and workspace layouts; multi-track audio mixing, multi-channel output and real-time audio effects; includes LiveType CG and Soundtrack.
Stands: 7.621/7.817/7.819
DIGITAL MATRIX INTERCOM
TELEX RTS CRONUS
+49 9421 706 317;www.telex.de
32-port system occupying 2RU; its standard configuration offers the ability to link up to four units into a single 128-port matrix over distances of ...
LOAD-DATE: September 12, 2003
Copyright 2003 AFX News Limited
Company News Feed formerly Regulatory News Service
September 1, 2003 Monday
SECTION: COMPANY NEWS
LENGTH: 5191 words
HEADLINE: The Vitec Group PLC - Interim Results
... 2 HD encoding and fiber optic distribution, and
enables the end customers of a major cable provider to view a wider range of
HDTV broadcasts at home.
ASG's Systems Wireless unit is now successfully selling Drake digital matrix
intercom products in the US, having secured several important broadcast stations
including KYW-TV, Philadelphia, America's number four TV market, and KDKA-TV,
Pittsburgh, the oldest Broadcast station in the US. Additionally, Systems
Wireless has consolidated its position as the ...
COMPANY-TERMS:
THE VITEC GROUP PLC, UNITED KINGDOM; TICKER: VTC; ISIN: GB0009296665
Copyright 2003 by PRIMEDIA Business Magazines & Media Inc.
"All Rights Reserved"
Sound & Video Contractor
September 1, 2003
SECTION: WHAT'S NEW; ISSN: 49; Pg. 9
LENGTH: 1360 words
HEADLINE: AUDIO PRODUCTS
BODY:
... true-diversity receiver and the ATW-T310 UniPak body-pack transmitter; and the ATW-3141 UHF handheld dynamic microphone system, which also includes the ATW-R310 receiver and the ATW-T341 handheld microphone/transmitter.
Circle 142 or visitfreeproductinfo.net/svc
Intercom
Telex/RTS
www.rtsintercoms.com
The Cronus digital matrix intercom is a 32-port system occupying two rackspaces. The Cronus is based upon an advanced digital signal-processing architecture, and its standard configuration offers the ability to link as many as four units into a single 128-port matrix over ...
LOAD-DATE: September 15, 2003
Copyright 2003 by PRIMEDIA Business Magazines & Media Inc.
"All Rights Reserved"
Sound & Video Contractor
July 01, 2003
SECTION: ISSN: 49; Pg. 7
LENGTH: 2625 words
HEADLINE: InfoComm 2003
BYLINE: S&VC Staff
BODY:
... 308SP loudspeaker enclosure. The loudspeaker features a rotatable 100 degrees horizontal by 60 degrees vertical Converging Elliptical Waveguide design allowing for both vertical and horizontal orientation.
Telex/RTS introduced the RTS Cronus digital matrix intercom. Cronus features utilization of LAN and USB connectivity for programming.
Stardraw's Weblink allows manufacturers to embed custom data within the symbols that represent their products in Stardraw's database.
Audio-Technica showed its new Engineered Sound products, the ES991 ...
LOAD-DATE: July 15, 2003
Copyright 2002 Gale Group, Inc.
ASAP
Copyright 2002 CMP Media, Inc.
Rental & Staging Systems
August 1, 2002
SECTION: Pg. 57
IAC-ACC-NO: 98932884
LENGTH: 1230 words
HEADLINE: Beyond Communication -- Wireless intercom systems come of age.
BYLINE: LeJeune, Andre
BODY:
... dealt primarily with wireless intercoms, other innovations in intercom technology should also be touched on. Due to large numbers of headset positions, multiple independent channels, and audio sources that are often required for a complex staging event, the advent of digital intercom matrixes offer the utmost in flexibility. Combining intercom functions with talkback and IFB, these routing systems offer software-controlled crosspoint switching and configuration to fit almost any intercommunications system schematic. They also offer external interfaces to telephone, cameras, and other party lines.
Wireless intercoms have come of age and are, for the ...