Matrix Operations Company, LLC

Trademark Trial and Appeal Board

Oct 11, 2007

No. 78533102 (T.T.A.B. Oct. 11, 2007)

Mailed:
October 11, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Matrix Operations Company, LLC
________

Serial No. 78533102
_______

Jennifer L. Cerce of Maiello Brungo & Maiello, LLP for
Matrix Operations Company, LLC.

Brian Neville, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Hohein, Bucher and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Matrix Operations Company, LLC filed a use based
application, on December 15, 2004, to register the mark
shown below for “computer software for use by the media
industry encompassing television, cable, print, online and
radio media sources for the development, execution and
monitoring of successful sales strategies which permit the
user to download historical and prospective sales data
directly from traffic systems thereby providing up-to-date
sales information,” as amended (Serial No. 78533102).
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78533102
2
Applicant disclaimed the exclusive right to use the word
“plus.”

Registration was refused because applicant’s mark, as
applied to the applicant’s computer software, so resembles
the mark MATRIX (typed drawing format) for “computer
program and software, all of which is used in the
marketing/marketing research environment to facilitate
understanding, analysis and implementation of sales and
marketing data,”1 as to be likely to cause confusion
pursuant to Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d).
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the

1 Registration No. 1725130, issued October 20, 1992; Sections 8
and 15 affidavits accepted and acknowledged; renewed.
Serial No. 78533102
3
similarities between the marks and the similarities between
the goods. See In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Federated Foods,
Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
A. The similarity or dissimilarity and nature of the
goods.

It is well settled that likelihood of confusion is
determined on the basis of the goods as they are identified
in the application and the cited registration. Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 UPSQ2d
1001, 1004 (Fed. Cir. 2002); In re Elbaum, 211 UPSQ 639,
640 (TTAB 1981); In re William Hodges & Co., Inc., 190 UPSQ
47, 48 (TTAB 1976).
Applicant’s products are identified as follows:

Computer software for use by the media
industry encompassing television,
cable, print, online and radio media
sources for the development, execution
and monitoring of successful sales
strategies which permit the user to
download historical and prospective
sales data directly from traffic
systems thereby providing up-to-date
sales information.

Registrant’s products are identified as follows:

Computer program and software, all of
which is used in the
marketing/marketing research
environment to facilitate
understanding, analysis and
Serial No. 78533102
4
implementation of sales and marketing
data.

Applicant’s software is identified as an application
program used in connection with analyzing sales
information, albeit restricted to the media industry.
Registrant’s software is also identified as an application
program used in connection with analyzing sales (and
marketing) information. Based on the descriptions of their
goods, the software of the applicant and that of registrant
are similar because both are used in connection with
analyzing sales information.
Despite the apparent similarity of the software,
applicant argues that the products “are not identical or
directly competitive and do not overlap or move in common
trade channels.”2 Relying on excerpts from registrant’s
website made of record during the prosecution of the
application at issue, applicant contends that registrant’s
software is specifically used for analyzing consumer
attitudes and behavior in connection with marketing
products. On the other hand, applicant asserts that its
software, as evidenced by applicant’s website made of
record during the prosecution of the application at issue,

2 Applicant’s Brief, p. 9.
Serial No. 78533102
5
is used in connection with account management, not
marketing:
Applicant’s services allows media
outlets to track and organize the
amount of television ad time for a
customer; the number of ads placed in a
magazine; billing ramifications,
grouping of advertisers. Applicant’s
services are not related to promoting
products.3

Although applicant points to registrant’s website for
the proposition that registrant’s software is specifically
used for analyzing consumer attitudes and behavior in
connection with marketing products, we cannot resort to
such extrinsic evidence in order to restrict registrant’s
goods. See, e.g., In re Bercut-Vandervoort & Co., 229 USPQ
763, 764 (TTAB 1986) (evidence that relevant goods are
expensive wines sold to discriminating purchasers must be
disregarded given the absence of any such restrictions in
the application or registration).
Furthermore, registrant’s website evidences that
registrant’s MATRIX software is also used to develop
marketing strategies for growth and profitability.
Although applicant contends that its software is an account
management tool, its website likewise evidences that

3 Applicant’s Brief, p. 9.
Serial No. 78533102
6
applicant’s software is used for developing sales
strategies, clearly a marketing function.
The description of goods in the application and
registration demonstrate that the products at issue are
commercially related. The websites of the applicant and
registrant provide support for the examining attorney’s
position that these goods are related.
B. The similarity or dissimilarity of likely-to-continue
trade channels and the buyers to whom sales are made.

While applicant has restricted its description of
goods to the media industry, there is no restriction or
limitation in the registrant’s description of goods.
Absent such restriction or limitation, we must assume that
registrant’s software travels in “the normal and usual
channels of trade and methods of distribution.” CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983). See also Venture Out Properties LLC v. Wynn Resorts
holding LLC, 81 USPQ2d 1887, 1894 (TTAB 2007); In re
Elbaum, supra. Accordingly, we must presume that
registrant’s software may move in all normal channels of
trade and be available to all classes of potential
consumers, including the media industry.
Applicant also argues that the customer base for both
the applicant and the registrant comprise careful and
Serial No. 78533102
7
sophisticated purchasers. However, applicant does not
explain how careful and sophisticated purchasers minimize
likelihood of confusion when the marks are similar and they
are used on commercially related products in the same
general field. Applicant does not provide any evidence
regarding the decision process used by these careful and
sophisticated consumers when software products are
licensed, what role trademarks play in that process, if
any, how they react to trademarks, or how observant and
discriminating they are in practice. Without such
evidence, it is well settled that even successful
executives who are sophisticated about the structure,
business methods and technology of their industries are not
necessarily observant or knowledgeable about other people's
trademarks to the extent necessary to distinguish between
similar trademarks. Medtronic, Inc. v. Medical Devices,
Inc., 204 USPQ 317, 326 (TTAB 1979); Refreshment Machinery
Incorporated v. Reed Industries, Inc., 196 USPQ 840, 843
(TTAB 1977); Educational Development Corporation v.
Dimensions Corporation 183 USPQ 492, 496 (TTAB 1974).
In view of the foregoing, we find that the same
consumers would license both applicant’s and registrant’s
software and that they would be licensed in the same
channels of trade.
Serial No. 78533102
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C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Baseball America Inc.
v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004).
In this case, we find that the marks are similar in
appearance. While marks must be compared in their
entireties, it is not improper to accord more or less
weight to a particular feature of a mark. In re National
Data Corp., 753 F.2d 1056, 24 USPQ2d 749, 751 (Fed. Cir.
1983). Here, the word “Matrix” is the dominant portion of
applicant’s mark because the word “Plus” is a descriptive
Serial No. 78533102
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term meaning “added to; along with,” “positive or on the
positive side of the scale,” “added or extra,” or “a
favorable condition or factor.”4 When used as part of a
trademark, “plus” is a laudatory word connoting a higher
quality product or indicating that the product adds an
additional value or quality. This has been recognized in
numerous likelihood of confusion cases. Plus Products v.
Natural Organics, Inc., 204 USPQ 773 (TTAB 1979); Plus
Products v. Redken Laboratories, 199 UPSQ 111 (TTAB 1978);
Plus Products v. Sterling Food Company, Inc., 188 USPQ 586
(TTAB 1975); Plus Products v. General Mills, Inc., 188 USPQ
520 (TTAB 1975).
Applicant acknowledges the descriptive nature of the
word “plus” by disclaiming the exclusive right to use it.
Case law recognizes that disclaimed, descriptive matter may
have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting,
In re National Data Corp., 24 USPQ2d at 752 (“Regarding
descriptive terms, this court has noted that the
descriptive component of a mark may be given little weight

4 The American Heritage Dictionary of the English Language (4th
ed. 2006). The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed Cir. 1983).
Serial No. 78533102
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in reaching a conclusion on the likelihood of confusion”).
See also In re Code Consultants, Inc., 60 USPQ2d 1699, 1702
(TTAB 2001) (disclaimed matter is often “less significant
in creating the mark’s commercial impression”). In this
case, the descriptive word “plus” is unlikely to be used to
distinguish the marks.
The significance of the word “matrix” is further
reinforced by its location as the first word in applicant’s
mark. Because it is the first word consumers will see when
encountering applicant’s mark (and software), it is more
likely to have a greater impact on purchasers and be
remembered by them. Presto Products Inc. v. Nice-Pak Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed ion the
mind of a purchaser and remembered). See also Palm Bay
Imports Inc. v. Vueve Clicquot Ponsardin, supra at 1692
(“Vueve” is the most prominent part of the mark VUEVE
CLICQUOT because “vueve” is the first word in the mark and
the first word to appear on the label); Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the
marks, consumers must first notice the identical lead
word).
Serial No. 78533102
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Finally, we find that the design element of
applicant’s mark is not so distinctive as to form a viable
basis for distinguishing the marks. Because the design
element is not so distinctive, the dominant portion of
applicant’s mark is the literal portion of the mark. It is
the words “Matrix Plus,” not the design, which consumers
will recognize and use to refer to applicant’s software.
See In re Appetito Provisions Co., 3 UPSQ2d 1553, 1554
(TTAB 1987). As discussed above, because the word “matrix”
is the dominant feature of applicant’s mark, it is accorded
more weight in our comparison of the marks.
In comparing the registered mark and applicant’s mark,
we note that applicant’s mark contains the entire literal
portion of the registered mark. Likelihood of confusion is
often found where the entirety of one mark is incorporated
within another. Johnson Publishing Co. v. International
Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for
cosmetics and EBONY DRUM for hairdressing and conditioner).
In its application, applicant’s additions of the
descriptive word “plus” and the design element do not
suffice to distinguish applicant’s mark from the registered
mark. In re Xerox Corp., 194 USPQ 449 (TTAB 1977) (“6500”
and “6500 LINE” are basically the same because the addition
of the descriptive word “line” does not distinguish the
Serial No. 78533102
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marks). See also, The Wella Corp, v. California Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (the
inclusion of a suggestive or descriptive word to an
otherwise arbitrary term will not preclude a finding of
likelihood of confusion).
We also find that the marks are aurally similar
because applicant’s mark is dominated by the word “matrix,”
which is the first word in the marks.
The word “matrix” means “something within or from
which something else originates, develops, or takes form.”5
Accordingly, applicant contends that “the connotation and
commercial impression arrived at by Applicant’s mark is
that the goods identified by the mark provide an additional
layer of elements to an already existing framework which
enhances the overall system.”6 However, applicant’s
proposed connotation and commercial impression applies
equally to the registered mark. In fact, consumers
familiar with the registrant’s MATRIX software may believe,
upon encountering applicant’s MATRIX PLUS software, that
because of the similarity of the marks that applicant’s

5 Merriam-Webster Online Dictionary (www.m-w.com), attached to
applicant’s January 23, 2006 Response.
6 Applicant’s Brief, pp. 5-6. While applicant set forth the
meaning and commercial impression for its mark, it did not
propose an alternative meaning and/or commercial impression for
the registrant’s mark in order to distinguish the two marks.
Serial No. 78533102
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software is an updated version of registrant’s MATRIX
software.
Based on our review of the marks, we find that
applicant’s mark and registrant’s mark
MATRIX are more similar than dissimilar when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression.
D. The number and nature of similar marks in use on
similar goods.

Finally, applicant argues that MATRIX is a weak mark
entitled to only a narrow scope of protection.7 In support
of this argument, applicant has submitted the following
five registrations:
Mark Reg. No. Goods
MATRIX 3039818 Computer hardware including parts
associated with housing the
processor, motherboard/main board and
associated processing hardware
MATRIX
MANAGER
3016307 Computer programs to negotiate and
manage employee tasks, projects, and
performance appraisals for small,
medium, and large corporations
TARASOFT
MATRIX
2869688 Computer software, namely custom
application and web browser based
software for use in updating and
accessing real estate listing
information

7 Applicant’s Brief, p. 4.
Serial No. 78533102
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Mark Reg. No. Goods
MATRIX
EXPLORER
291814 Computer software used in conjunction
with other database software programs
to allow a user to gain simultaneous
access to multiple databases,
database objects and data while
maintaining concurrent connections;
compute software in the nature of
graphic user interface for database
access, database management, database
administration, data manipulation and
for testing and debugging procedures
SCT
MATRIX
2826040 Computer software for use in the
field of education to manage
financial, academic and
administrative records

We note that the factor to be considered in connection
with third-party use is the “number and nature of similar
marks in use on similar goods.” (Emphasis added). In re
E. I. du Pont de Nemours & Co., supra. In this regard, the
third-party registrations submitted by applicant are not
evidence of use of the marks shown therein or that the
public is aware of them. See AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 UPSQ 268, 269 (CCPA
1973); Charette Corp. v. Bowater Communication Papers Inc.,
13 UPSQ2d 2040, 2043 (TTAB 1989). As far as this record is
concerned, there is no evidence of third-party use of any
“MATRIX” trademarks. Moreover, third-party registrations,
without more, cannot aid an applicant in registering
another confusingly similar mark. AMF Inc. v. American
Serial No. 78533102
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Leisure Products, Inc., supra; Medtronic, Inc. v. Medical
Devices, Inc., supra at 327.
In the absence of any evidence that any of the third-
party marks is in commercial use, the third-party
registrations show only that the word “matrix” and
variations thereof have been adopted by five other entities
for use as, or inclusion in, trademarks for various
computer hardware and software products (none of which is
for application programs for analyzing sales and marketing
data), presumably to exploit a favorable or attractive
connotation of the word. In other words, the third-party
registrations may be used like a dictionary to show the
meaning of the word “matrix” and that the inclusion of that
word as a common feature of the marks does not support a
holding of likelihood of confusion. Medtronic, Inc. v.
Medical Devices, Inc., supra at 327; Chicken Delight, Inc.
v. Delight Wholesale Co., 196 USPQ 136, 139 (TTAB 1977).
However, it is not clear from the third-party
registrations, the application, or the cited registration
what the meaning of “matrix” is or what commercial
impression is being sought. Based on the third-party
registrations, we can infer only that the Trademark Office
will register “MATRIX” marks to different entities so long
as there is some difference between the marks and/or the
Serial No. 78533102
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goods. However, five third-party registrations do not
persuade us that registrant’s MATRIX mark is a weak mark
entitled to only a narrow scope of protection or
exclusivity of use. In any event, even if the registered
mark is a weak mark, it is still entitled to protection
against the registration of the same or similar mark for
closely related goods or services. See Matsushita Electric
Co. v. National Steel Co., 442 F.2d 1383, 170 USPQ 98, 99
(CCPA 1971) (“Even though a mark may be ‘weak’ in the sense
of being a common word in common use as a trademark, it is
entitled to be protected sufficiently to prevent confusion
from source from arising”); King-Kup Candies, Inc. v. King
Candy Co., 288 F.2d 944, 129 USPQ 272, 272 (CCPA 1961)
(although opposer’s mark is as weak as can be found, it is
still entitled to protection).
E. Balancing the factors.
The du Pont factors require to us to consider the
thirteen factors made of record in likelihood of confusion
cases. The CCPA has also observed that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., supra 192 USPQ at 29. When we
Serial No. 78533102
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compare the marks MATRIX and , the
similarity of the goods identified by each mark, and the
identity of trade channels, we conclude that there is a
likelihood of confusion.
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.