Matrixx Marketing, Inc.v.Matrix Alliances, Inc.

Trademark Trial and Appeal Board

Jan 5, 2001

No. 91101042 (T.T.A.B. Jan. 5, 2001)

1/5/01 Paper No. 31
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Matrixx Marketing, Inc.
v.
Matrix Alliances, Inc.
_____
Opposition No. 101,042
to application Serial No. 74/665,538
filed on April 25, 1995
_____
Gail L. Morrissey and Jeffrey S. Standley of Standley & Gilcrest
for Matrixx Marketing, Inc.
H. Robert Henderson of Henderson & Sturm for Matrix Alliances,
Inc.
______
Before Hanak, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Matrix Alliances, Inc. filed an application to register the
term MATRIX ALLIANCES for “direct mail and telemarketing
services” in International Class 35. The application is based
upon a bona fide intention to use the mark in commerce.
Following publication of the mark, Matrixx Marketing, Inc.
timely filed a notice of opposition, on the ground that
applicant’s mark so resembles opposer’s previously used and
registered marks MATRIXX MARKETING in connection with a variety
of services including telemarketing services1 and MATRIXX MARKET
1 Reg. No. 1,558,386 issued on September 26, 1989, Section 8
affidavit accepted, Section 15 affidavit acknowledged, setting forth
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 101,042
2
WATCH in connection with a variety of services including
marketing research services and conducting marketing studies for
others,2 both in International Class 35, as to be likely, if used
in connection with applicant’s telemarketing services, to cause
confusion, or to cause mistake or to deceive.
In its original notice of opposition, opposer also alleged
that registration of this mark will create a false connection
with opposer under Section 2(a) of the Lanham Act and will result
in a “tarnishment” of opposer’s marks. Then under an amended
Notice of Opposition, opposer charged that inasmuch as
applicant’s corporate status had allegedly been revoked by the
State of Nevada, applicant is no longer a “person” as
contemplated by the Lanham Act, and hence is not entitled to a
registration under 15 U.S.C. §1057 for MATRIX ALLIANCES.
However, since none of these latter three allegations were argued
in opposer’s brief on final decision, we presume the only
remaining ground for opposition is that of likelihood of
confusion under Section 2(d) of the Act.
Applicant denied the salient allegations of likelihood of
confusion contained in the notice of opposition.
The record consists of the pleadings; the file of the
involved application; status and title copies of opposer’s two
December 5, 1988 as the date of first use and first use in commerce.
The term “MARKETING” is disclaimed apart from the mark as shown.
2 Reg. No. 1,788,952 issued on August 17, 1993, setting forth July
22, 1991 as the date of first use and first use in commerce. The term
“MARKET WATCH” is disclaimed apart from the mark as shown.
Opposition No. 101,042
3
federal registrations and the testimony deposition of Michael T.
Capizzi, opposer’s vice-president of marketing and sales support,
with related exhibits, all submitted under a notice of reliance.
Applicant submitted no evidence or testimony. Only opposer has
filed a brief and an oral hearing was not requested.
The record shows that opposer is one of the largest
telephone marketing companies in the world. Opposer, a customer
service outsourcing vendor, also provides telephone marketing and
marketing research for its corporate clients. As one of the
world’s leading provider of telemarketing services, opposer
promotes and sells its services to Fortune 1000 corporations
based in the United States as well as to large organizations in
Canada and Europe. Over a ten year period, opposer promoted its
services under its MATRIXX marks in national publications, at
trade shows and through its own brochures and catalogs which are
sent or delivered to both existing and potential corporate
clients.
Applicant’s principal business is in the health care and
financial services field. However, this is an intent-to-use
application on which no allegation of use has been filed. Hence,
the record is devoid of any evidence that applicant has actually
made use of the mark MATRIX ALLIANCES for direct mail and
telemarketing services.
Opposition No. 101,042
4
As indicated above, opposer made of record status and title
copies of its pleaded registrations for the marks MATRIXX
MARKETING and MATRIXX MARKET WATCH. Thus, there is no issue with
respect to opposer’s priority. King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We turn then to the issue of likelihood of confusion. Our
determination under Section 2(d) of the Trademark Act is based
upon an analysis of all of the probative facts in evidence that
are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
Turning first to a consideration of the respective services,
opposer is a well-known provider of telemarketing services.
Because applicant’s recital of services includes telemarketing
services, we must assume the services are identical, and that
they will be offered in identical channels of trade to the exact
same class of purchasers.
Turning next to a consideration of the marks, we begin our
analysis of whether confusion is likely by keeping in mind two
propositions set forth by the Court of Appeals for the Federal
Circuit. First, “when marks would appear on virtually identical
goods or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992). Second, in articulating reasons for
Opposition No. 101,042
5
reaching a conclusion on the issue of likelihood of confusion,
“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 consideration of
the marks in their entireties.” In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In considering the marks before us, both parties’ marks are
dominated by the word “MATRIX” or “MATRIXX.” Applicant’s MATRIX
ALLIANCES mark is clearly dominated by the word MATRIX.3 By the
same token, registrant’s marks are dominated by the word
“MATRIXX.” Registrant has disclaimed exclusive rights to use the
words MARKETING and MARKET WATCH, thereby acknowledging the
descriptiveness of these terms. The record demonstrates that
quite frequently the word MATRIXX alone is used as a source
indicator for opposer’s services, both by opposer itself and by
third parties in referring to opposer’s services. Similarly, it
is safe to assume that upon applicant’s introduction into the
marketplace of its mark on these services, the word MATRIX alone
would be used by purchasers in referring to applicant’s
telemarketing services.
Clearly as to sound, “Matrix” and “Matrixx” are exact
phonetic equivalents. The words “MATRIX” and “MATRIXX” are also
virtually identical as to appearance. Within the contest of
3 Opposer’s witness also noted that in providing integrated
services to its clients, it often signs “alliance agreements” with
other service vendors.
Opposition No. 101,042
6
these composite marks, it is unlikely that consumers would even
notice the minor differences in the respective terms, i.e.,
MATRIX (single terminal letter “X”) versus MATRIXX (double letter
“X”). Accordingly we find that the dominant portions of the
respective marks are phonetically identical and are virtually
identical in appearance.
Considered in their entireties as they must be, comparing
opposer’s marks MATRIXX MARKETING and MATRIXX MARKET WATCH with
applicant’s mark MATRIX ALLIANCES, we find the commercial
impressions engendered by the respective parties’ marks to be
sufficiently similar that, when the marks are used in connection
with legally identical services, confusion as to the origin or
affiliation of the services is likely to occur.
Our conclusion that confusion is likely is strengthened by
the fact that, on this record, there are no third parties
utilizing marks, which are either identical or substantially
similar to the marks at issue herein, in connection with
telemarketing services.
Moreover, the record shows that opposer’s revenue in 1997
was $467 million, as reported in the annual report of Cincinnati
Bell, Inc., then opposer’s parent corporation. Given this
significant level of revenue, and the recognition and strength
developed therein through opposer's appreciable advertising and
promotional expenditures between 1988 and 1998, the record
reflects that opposer’s MATRIXX marks have become relatively well
Opposition No. 101,042
7
known as source indicators for opposer's services, and thus
merits protection against imitation by applicant's MATRIX mark
for legally identical services. See Kenner Parker Toys Inc. v.
Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
Applicant, as the newcomer, had the obligation to select a
mark that would avoid confusion. See In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). The more so
in this case because it is well-established that one who adopts a
mark similar to a strong mark of another for the same services
does so at his own peril, and any doubt as to likelihood of
confusion must be resolved against the newcomer and in favor of
the senior user having a strong mark. W.R. Grace & Co. v.
Herbert J. Meyer Industries, Inc., 190 USPQ 308 (TTAB 1976).
Decision: The opposition is sustained and registration to
applicant is refused.