To: | Matrix Industries, Inc. (hbalmat@balmatlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88346529 - MATRIX - 01122 |
Sent: | 5/17/2019 3:03:06 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88346529
MARK: MATRIX
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Matrix Industries, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/17/2019
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
CONFUSION BASED ON REGISTRATION NO. 2805267
The proposed mark is MATRIX and Design for, among other things,
IC 011: HVAC units
The proposed mark is MATRIX in typed form for:
IC 011: residential gas fired integrated energy appliance that provides domestic hot water, forced air space heating, cooling and heat recovery ventilation; residential gas fired condensing furnace; residential gas fired condensing water heater
The marks are similar and create the same general impression due to the identical term MATRIX in the marks.
The parties provide related goods for cooling and heating.
Consumers who encounter the parties’ similar marks used on their related goods are likely to be confused about the source of the goods.
CONFUSION BASED ON REGISTRATION NO. 5268981
The proposed mark is MATRIX and Design for, among other things,
IC 009: apparatus for converting thermal energy to electrical energy, namely, thermoelectric converters; energy harvesting devices; thermoelectric components for incorporation into other devices
The registered mark is MATRIX in standard characters for:
IC 009: power conversion equipment, namely, dc and ac power converters, and electronic controls for said power conversion equipment
The marks are similar and create the same general impression due to the identical term MATRIX in the marks.
The parties provide related goods used that may be used in connection with power conversion.
Consumers who encounter the parties’ similar marks used on their related goods are likely to be confused about the source of the goods.
EARLIER FILED CONFLICTING APPLICATION
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.
DESCRIPTION OF THE MARK
The following description is suggested, if accurate:
The mark consists of a straight horizontal line and a wavy horizontal line, with both lines connected to each other at the ends and the wavy line crossing over the straight line at two points, with the stylized word “MATRIX” below the design.
In Class 9, applicant must specify the exact type of “beacons”, what characteristic is sensed by the “sensors”, the common commercial name of each type of “energy harvesting devices”, and the common commercial name of each type of “thermoelectric components for incorporation into other devices”
In Class 11, the applicant must correct the typo “unites” to “units” and list the common commercial name and proper class for each type of “thermoelectric cooling materials”
SUGGESTED IDENTIFICATION OF GOODS
Applicant may substitute the following wording, if accurate:
IC 009: a smartwatch that measures the user's ability to convert body heat to electric power using a thermoelectric element; smartwatch and wearable activity tracker that measures the user's activity, steps taken, and sleep patterns and features a compass, altimeter, power meter, and wireless communication channel; downloadable mobile app that communicates with the user's smartwatch and wearable activity tracker to record and display data regarding the user's activity, steps taken, sleep patterns, direction, and altitude; smartwatch and wearable activity tracker that is powered by the user's body heat using thermoelectric technology; downloadable mobile app that communicates with the user's smartwatch and wearable activity tracker to record and display the user's electrical power generation; apparatus for converting thermal energy to electrical energy, namely, thermoelectric converters; luminous beacons and temperature sensors for Internet of Things devices; energy harvesting devices, namely, electrical conductors; thermoelectric components for incorporation into other devices
IC 011: refrigeration equipment, namely, namely, rapid chilling units for household use; home refrigeration units for rapidly chilling or freezer food and beverages; thermoelectric cooling materials, namely, portable thermoelectric cooling unit for foods and beverages; HVAC units; refrigerators
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.
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
/Ellen Awrich/
Trademark Examining Attorney
Law Office 116
571-272-9123
ellen.awrich@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.