Ground Matrix, Inc.Download PDFTrademark Trial and Appeal BoardMar 29, 2019EX (T.T.A.B. Mar. 29, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 29, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Ground Matrix, Inc. _____ Serial No. 87419771 _____ Brian M. Davis of VLP Law Group LLP, for Ground Matrix, Inc. Benjamin Rosen, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Taylor, Bergsman and Kuczma, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Ground Matrix, Inc. (“Applicant”) seeks registration on the Principal Register of the standard character mark GROUND MATRIX for: Real estate brokerage services; Real estate management services; Real estate services, namely, property management services for commercial property; Real estate acquisition services; Real estate agency services; Real estate appraisal in International Class 36.1 1 Application Serial No. 87419771 was filed on April 21, 2017, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 87419771 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark, when used in connection with the identified services, is likely to be confused with the two registered marks owed by different entities set forth below: Registration No. 3792982 for the standard character mark MATRIX REALTY GROUP (REALTY GROUP disclaimed) for “real estate brokerage; Real estate consultation; Real estate management services; Real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space” in International Class 36;2 and Registration No. 4671775 for the standard character mark SRE MATRIX for “Real estate brokerage” in International Class 36.3 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. Both Applicant and the Examining Attorney filed briefs.4 We affirm the refusal to register. 2 Issued May 25, 2010; Section 8 & 15 affidavit, accepted and acknowledged. The registration also includes services in International Class 37 that were not cited as a bar to the registration of Applicant’s mark. 3 Issued January 13, 2015. 4 Applicant also attached to its appeal brief some of the same exhibits, or summaries thereof, it had submitted with its response and request for reconsideration; the Board discourages this practice. In re Lorillard Licensing Co., 99 USPQ2d 1312, 1315 (TTAB 2011); In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008) (attaching as exhibits to brief material already of record requires Board to determine whether attachments had been properly made of record and adds to the bulk of the file); In re Thor Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from record to briefs is duplicative and is unnecessary). Serial No. 87419771 - 3 - I. Applicable Law/Limitation of Cited Registration Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d). Our determination of likelihood of confusion under § 2(d) is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of record” need be considered). In analyzing likelihood of confusion, we limit our discussion to Registration No. 3792982 (‘982 Reg.) for the mark MATRIX REALTY GROUP (in standard characters) for “real estate brokerage; real estate consultation; real estate management services; [and] real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space,” because the mark and the services recited in that registration are closest to the mark and the services identified in Applicant’s application. If we find no likelihood of confusion with the mark in the ‘982 Registration, then it follows there would be no likelihood of confusion Serial No. 87419771 - 4 - with the mark in cited Registration No. 4671775. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2008) (confining likelihood of confusion analysis to one of multiple cited registrations deemed closest to the applied-for mark). II. Likelihood of Confusion Analysis A. Similarity of the Services, Channels of Trade and Classes of Consumers Applicant’s services are identified as “real estate brokerage services; real estate management services; real estate services, namely, property management services for commercial property; real estate acquisition services; real estate agency services; [and] real estate appraisal” and Registrant’s services are identified as “real estate brokerage; real estate consultation; real estate management services; [and] real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space.” The services are identical in that they both include real estate brokerage and real estate management services. The remaining services identified in Applicant’s application, i.e., “real estate services, namely, property management services for commercial property; real estate acquisition services; real estate agency services; [and] real estate appraisal,” are complementary and related to the “real estate brokerage and management services” identified in the cited registration, all being services related to the acquisition and management of real estate. Even so, given the in-part identical “real estate brokerage services and real estate management services” we need not discuss the similarity of all of Applicant’s services because it is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of services within a Serial No. 87419771 - 5 - particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). Nonetheless, to support the relatedness of the services, the Examining Attorney made of record web pages from the websites of various entities, i.e., Legacy Partners, Hilco Real Estate, ALTA Properties, Weichert, Long & Foster Real Estate, McEnearney Associates, Chatel Real Estate, WRH Realty Services, Inc., Friedman Integrated Real Estate Solutions and VanTrust Real Estate LLC, showing the same mark used in connection with a one or more of the services identified in both Applicant’s application and the cited registration.5 We thus find the services identical or closely related for purposes of our likelihood of confusion analysis. Notably, Applicant’s brief is silent on the issue. Furthermore, because the services are identical in-part, the channels of trade and classes of purchasers for such services are considered to be the same. In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in 5 July 25, 2017 Office Action; TSDR 11-19 and October 19, 2017 Final Office Action; TSDR 7-20. The TSDR citations are to the downloadable .pdf format. Serial No. 87419771 - 6 - determining likelihood of confusion). As such the channels of trade and classes of purchasers at a minimum overlap. The du Pont factors of the relatedness of the services, channels of trade and classes of purchasers strongly favor a finding of likelihood of confusion. B. The Number and Nature of Similar Marks Used on Similar Services When present, we must consider evidence of “[t]he number and nature of similar marks in use on similar goods.” du Pont, 177 USPQ at 567. In this regard, the Federal Circuit has stated that evidence of the extensive registration and use of a term by others can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Applicant contends that: the term MATRIX is a relatively weak source identifier that should be accorded a fairly narrow scope of protection that does not extend so far as to prevent the registration of other MATRIX marks that combine the term with words that are otherwise dissimilar to the term[ ] REALTY GROUP…. Applicant’s br. p. 5.6 In support of its position Applicant notes the co-existence on the Register of the two cited registrations and has made of record various third-party applications and registrations for marks containing the word MATRIX in Class 36, 6 7 TTABVUE 6. Serial No. 87419771 - 7 - covering “the same or closely related financial services.”7 Applicant also made of record Internet materials showing “multiple MATRIX marks in the real estate industry.” These materials reference uses of term MATRIX (in combination with other matter) in connection with various real estate services by Matrix Real Estate LLC (Bellevue, WA), Matrix Real Estate (Windsor, CA), Matrix Real Estate Associates (North Carolina), Human Matrix Real Estate, and Matrix Group, Inc.8 As regards the live Class 36 registrations for the various MATRIX- marks, they have little to no probative value because they are all registered for services in the finance and insurance industries, as opposed to the real estate industry. Cf. Juice Generation, 115 USPQ2d at 1674 (Evidence of use of similar marks by third parties for similar or related goods or services, in turn, is relevant to a mark’s commercial strength.). 7 April 18, 2018 Request for Reconsideration; TSDR 14-61. We have given no consideration to Registration Nos. 3054420 and 3355747, and application Serial Nos. 77399167 and 86077549, as they are either cancelled or abandoned. It is well-established that an expired or cancelled registration is evidence of nothing but the fact that it once issued. Sunnen Prods. Co. v. Sunex Int'l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987). Similarly, the abandoned applications have “‘no probative value other than as evidence that the applications [were] filed.’” Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1403 n.4 (TTAB 2010) (quoting In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002)). In addition, while the listing of results from a search of the word MATRIX in the Trademark Electronic Search System (“TESS”) database, made of record with Applicant’s April 18, 2017 response (TSDR 17-20) is of record, the registrations listed therein are not of record, and the list itself has little, if any, probative value. The list consists of marks and their application or registration number, as well as a marker indicating whether, in the case of a registration, it is “dead” or “live.” We cannot determine from a mere listing like this the nature of the goods or services for which these purported marks have been applied-for or registered and many of the marks themselves appear to contain substantial additional matter. The Board does not take judicial notice of registrations or applications residing in the Office, and further, with respect to the applications, as stated above, they are evidence of nothing more than that they were filed with the USPTO. 8 Id. at TSDR 21-43. Serial No. 87419771 - 8 - As regards the evidence of third-party uses, although Applicant has not presented specific evidence concerning the extent and impact of these uses, it nevertheless presented “evidence of these marks being used in internet commerce” for various real estate services, some of which are identical or related to the services identified in the application and cited registration. Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1136; see also Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (internet printouts “on their face, show that the public may have been exposed to those internet websites and therefore may be aware of the advertisements contained therein”). However, these five uses do not evidence such a widespread and significant use of the term “MATRIX,” in the real estate industry that we can conclude that the cited mark is so weak that the public would be able to distinguish the source of Registrant’s goods from those of Applicant by the differences in their respective marks. Cf. Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1136 n.2 (at least 14 relevant third-party uses or registrations of record); Juice Generation, 115 USPQ2d at 1672 n.1 (at least 26 relevant third-party uses or registrations of record); see also Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) (weakness found based on at least 85 actual uses of ROSE-formative marks for similar services and eight similar third-party registrations). Thus, Applicant has failed to show any commercial weakness in the common term MATRIX. Considering the record as a whole, we find that Registrant’s mark is appropriately placed in the middle of the “‘spectrum from very strong to very weak.’” Joseph Phelps Vineyards, Serial No. 87419771 - 9 - LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). As for the co-existence of the two cited marks on the register, while the Office strives for consistency in examination, the Board is not bound by the prior decisions of examining attorneys in allowing marks for registration. It is well established that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). We accordingly find this du Pont factor neutral. C. Similarity/Dissimilarity of the Marks We now consider the du Pont likelihood of confusion factor of the similarity or dissimilarity of the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In comparing the marks, we are mindful that “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) Serial No. 87419771 - 10 - (citation omitted); see also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. L’Oreal v. Marcon, 102 USPQ2d at 1438; Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The average customers include members of the general public seeking real estate brokerage and real estate management services and, given the nature of those services, are likely to exercise some degree of care in their purchasing decisions.9 Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). On the other hand, different features may be analyzed to determine whether the marks are similar. Price Candy Co. v. Gold Medal 9 Neither Applicant nor the Examining Attorney addresses the du Pont factor concerning the care that would be exercised in purchasing the respective services. Nonetheless, real estate brokerage services, whether on the part of the person selling a home or buying one, would be chosen with some degree of care. Serial No. 87419771 - 11 - Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. We also are mindful that where, as here, the services are in-part identical, the degree of similarity between the marks necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering- Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). We compare Applicant’s mark GROUND MATRIX with the cited mark MATRIX REALTY GROUP and initially find that the word MATRIX dominates Registrant’s mark. We find so because the descriptive, and disclaimed, phrase REALTY GROUP merely describes the type of entity providing Registrant’s services and, as such, is not source-identifying. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” was the dominant portion of the mark THE DELTA CAFE). We find Applicant’s mark GROUND MATRIX and the cited mark MATRIX REALTY GROUP similar in appearance, sound and connotation in that they each Serial No. 87419771 - 12 - include, or consists of, the word “MATRIX.” The addition of the word “GROUND” to Applicant’s mark does does little to distinguish it from Registrant’s mark. Given the structure of Applicant’s mark, the “GROUND” portion, defined, in part, as “[s]oil; earth; level the ground for a lawn” (emphasis supplied),10 while appearing first and contributing to the mark’s commercial impression, merely modifies the word MATRIX being somewhat evocative of real property. Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting other matter. If an important or, as in the case here, a significant portion of both marks is the same, then the marks may be confusingly similar notwithstanding some differences. See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (affirming TTAB’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even though applicant’s mark PACKARD TECHNOLOGIES, with “TECHNOLOGIES” disclaimed, does not incorporate every 10 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2019) (www.ahdictionary.com, retrieved March 28, 2019). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff'd, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 87419771 - 13 - feature of opposer’s HEWLETT PACKARD marks, a similar overall commercial impression is created); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and CREST CAREER IMAGES (stylized) for uniforms likely to cause confusion). Also, both Applicant’s and Registrant’s marks are in standard characters and, as such, their display is not limited to any particular font style, size, or color. We therefore must consider that both marks might be used in any stylized display, including the same or similar lettering style or color. See In re Viterra, 101 USPQ2d at 1909-10; Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1886 (TTAB 2018) (literal elements of standard character marks may be presented in any font style, size or color). Contrary to Applicant’s contention, to the extent that the word MATRIX has any particular meaning with regard to real estate brokerage and real estate management service, that connotation would be the same for both Applicant’s and Registrant’s mark. While the word “matrix” has several definitions of which, Applicant’s asserts, the most common is “something within or from which something else originates,” this definition does not, as Applicant suggests, evoke different connotations in the respective marks; Applicant’s mark suggesting “something taken or arising from the ground” (emphasis in original) and the cited mark being “a direct reference to the cited Registrant.” Applicant’s br. p. 4.11 There is nothing in the record to support 11 7 TTABVUE 5. Serial No. 87419771 - 14 - this contention, and the different asserted connotations of the marks are not apparent in the marks themselves. Because of the similarities between Applicant’s and Registrant’s marks and the syntax of Applicant’s mark, consumers are likely to believe that that the respective marks are variant marks used by a single entity to identify and distinguish expanded services offerings. We recognize that in comparing the marks, we must consider Registrant’s mark in its entirety. Thus, we have taken into account the differences in appearance and sound between them. We nonetheless find that despite these differences, given the similarities between the marks in sound, appearance and meaning due to the shared term MATRIX, the marks engender similar commercial impressions. The factor of the similarity of the marks thus favors a finding of likelihood of confusion. D. Conclusion/Analyzing the Factors We have considered all of the arguments of the Examining Attorney and Applicant, including arguments not specifically addressed in this decision. In view of the in-part identical services, trade channels and classes of consumers, as well as the similarity of the marks, and because these findings do not outweigh any care made by consumers in their purchasing decisions, nor has Applicant demonstrated any weakness in the marks’ shared term, we conclude that confusion is likely between Applicant’s mark for its services and Registrant’s mark for its services. Decision: The refusal to register Applicant’s mark GROUND MATRIX under Section 2(d) of the Act is affirmed. Copy with citationCopy as parenthetical citation