RSI Systems, LLC

THIS OPINION IS A

PRECEDENT OF THE TTAB

Mailed:

29 September 2008

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re RSI Systems, LLC1

________

Serial No. 78848532

_______

Dexter Chin, Esq. for RSI Systems, LLC.

Katherine Stoides, Trademark Examining Attorney, Law Office

101 (Ronald R. Sussman, Managing Attorney).

_______

Before Hohein, Drost, and Cataldo, Administrative Trademark

Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 29, 2006, an application was filed to

register the mark RSI and design, as shown below,

for goods ultimately identified as:

Ink jet cartridges in Class 2;

Conveyors, table for sorting, handling and printing

mail and other substrates, infrared ink dryers, ink

delivery system consisting of ink storage unit, ink

1

On May 12, 2008, the USPTO recorded an assignment to RSI

Systems, LLC from Rheological Solutions, Inc. Reel/Frame No.

3776/0210.

Ser. No. 78848532

level monitoring unit, tubes for delivering ink and

parts therefor in Class 7; and

Ink jet printers, unfilled ink cartridges for computer

printers, software for processing images, graphics or

text, software to monitor ink delivery, ink delivery

system consisting of ink storage unit, ink level

monitoring unit, tubes for delivering ink and parts

therefor in Class 9.

Applicant, now identified as RSI Systems, LLC, has:

(1) disclaimed the term “RSI”;

(2) included a description of the mark as: “The

color(s) blue and black is/are claimed as a feature of the

mark. The mark consists of a sphere in blue and black with

four arcuate lines in white across the middle; ‘RSI’ in

black on the right of the sphere”; and

(3) indicated that the date of first use for all three

classes of goods is June 1, 1994, and the date of first use

in commerce for all three classes of goods is September 1,

1994.

The examining attorney has refused to register

applicant’s mark under Section 2(d) of the Trademark Act,

15 U.S.C. § 1052(d), because of two registrations. The

first registration (No. 1963981 issued March 26, 1996,

renewed) is for the mark RSI, in typed or standard

character form, for “printing machines” in Class 7. The

owner of the registration is currently identified as Stork

Prints B.V. (Reel/Frame Nos. 3263/0613 and 2252/0743). The

2

Ser. No. 78848532

second registration (No. 2161680 issued June 2, 1998) is

also for the mark RSI (typed). The services in that

registration are now limited to “document imaging services

in the nature of converting documents from one media to

another” in Class 40. The owner is listed as Reproduction

Systems, Inc. On June 20, 2008, the registration was

renewed in Class 40 only. The remaining three classes for

the following services were canceled:

copying documents for others and managing mail

handling facilities for others in Class 35;

electronic document repository services and storage of

documentary records and physical evidence for

litigation in Class 39; and

consultation in the field of computer networks, custom

software development in the fields of document

management and graphics presentation, records

investigation and research, and preparing graphic

presentations for courtroom use in Class 42.

Because those classes have been canceled, they do not

form a bar to registration, and we will only consider the

Class 40 services and the examining attorney’s arguments

based on those services.

The examining attorney argues that the marks are

similar because the “literal portions of the marks are

essentially identical” (Brief at unnumbered p. 4) and they

are the dominant portions of the marks. Regarding the

goods, the examining attorney argues that the application

and the ‘981 registration “both identify printing

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Ser. No. 78848532

machines.” Brief at 9. Furthermore, the examining

attorney requests that we take judicial notice of the

following definitions (Brief at 9):

Machine – a system or device … that performs or

assists in the performance of a human task;

Printing – the art, process, or business of producing

printed material by means of inked type and a printing

press or by similar means; and

Printer – a device that prints text or graphics on

paper.

The American Heritage Dictionary of the English Language

(4th ed. 2004). We grant the request to take judicial

notice. University of Notre Dame du Lac v. J.C. Gourmet

Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703

F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

The examining attorney argues that “combining the

definitions of the two terms ‘printing’ and ‘machine’

results in a meaning that is the same as that of the

definition of a ‘printer’ – a device that prints. In other

words, a ‘printing machine’ is simply a machine that

prints, or a ‘printer.’ Consequently, the registrant’s

clearly identified goods, albeit broadly identified goods,

‘printing machines,’ encompass the applicant’s specifically

identified printers.” Brief at 10. She concludes that the

marks are used on related goods, e.g., “printing machines,

including printers, and related accessories therefore

4

Ser. No. 78848532

[sic].” Brief at 3. The examining attorney also points

out that both applicant’s and the ‘981 registrant’s goods

include machines that print labels at high speed. In

addition, applicant’s goods and the ‘680 registrant’s

services both include “imaging and graphics.” Final Office

Action at 5. Applicant’s goods in Class 9 include

“software for processing images, graphics or text” and

registrant’s services include “document imaging services in

the nature of converting documents from one media form to

another.”

Applicant argues that the examining attorney “failed

to recognize the presence of a highly distinctive and

prominent logo” in its mark. Brief at 5. In addition,

applicant maintains that the term “printing machines” is

“so broad and all inclusive as to be meaningless.” Brief

at 7. As a result, applicant argues that the

identification should be limited “to only printers that

incorporate rotary screen integration technology” (Brief at

8) as shown in registrant’s literature.

After the examining attorney made the refusal to

register final, this appeal followed.

Inasmuch as the issue in this case is likelihood of

confusion, we look at the evidence in light of the factors

set out in In re E. I. du Pont de Nemours & Co., 476 F.2d

5

Ser. No. 78848532

1357, 177 USPQ 563, 567 (CCPA 1973). See also In re

Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,

1203 (Fed. Cir. 2003). We point out that “[t]he

fundamental inquiry mandated by § 2(d) goes to the

cumulative effect of differences in the essential

characteristics of the goods [or services] and differences

in the marks.” Federated Foods, Inc. v. Fort Howard Paper

Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

“The first DuPont factor requires examination of ‘the

similarity or dissimilarity of the marks in their

entireties as to appearance, sound, connotation and

commercial impression.’” Palm Bay Imports Inc. v. Veuve

Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73

USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177

USPQ at 567). In this case, applicant’s mark and

registrants’ marks contain the same letters RSI. Because

the registrants’ marks are displayed in typed form, the

marks are not limited to any special stylization and we

must assume that they could be displayed in the same style

as the letters in applicant’s mark. Therefore, the only

difference is the fact that applicant adds a design

element. However, “[w]ithout doubt the word portions of

the two marks are identical, have the same connotation, and

give the same commercial impression.” In re Shell Oil Co.,

6

Ser. No. 78848532

992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).

Indeed, “if one of the marks comprises both a word and a

design, then the word is normally accorded greater weight

because it would be used by purchasers to request the goods

or services.” In re Appetito Provisions Co., 3 USPQ2d

1553, 1554 (TTAB 1987). We see no reason why this would

not also be true in this case. Both applicant’s and

registrants’ marks contain the identical letters RSI and

that is likely how the purchasing public would refer to the

sources of the goods and services in this case. While

applicant decided to voluntarily disclaim the term RSI,2

“the filing of a disclaimer with the Patent and Trademark

Office does not remove the disclaimed matter from the

purview of determination of likelihood of confusion.”

Shell Oil, 26 USPQ2d at 1689. See also In re National Data

Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)

(“The technicality of a disclaimer in National's

application to register its mark has no legal effect on the

issue of likelihood of confusion”). Applicant has not

shown that the term RSI would not be the dominant term in

the mark. It is not a weak term that has little or no

2

In re MCI Communications Corp., 21 USPQ2d 1534, 1538 (Comm'r

Pat. 1991) (An “applicant may voluntarily disclaim registrable

matter”).

7

Ser. No. 78848532

source-indicating significance, as a descriptive or generic

term would be, as it is perhaps the entity’s initials that

could have derived from the initials for the term Rotary

Screen Integration.3 Finally, the addition of the sphere in

applicant’s mark does not significantly change the

pronunciation, meaning, or commercial impression of the

mark. Despite the presence of the sphere in the mark as

shown, , the letters RSI remain a prominent

feature of applicant’s mark. Therefore, we conclude that

the literal portions of the marks are legally identical and

the marks in their entirety are very similar in sound,

appearance, meaning, and commercial impression.

We now look at the next factor, which involves

consideration of the relationship between applicant’s and

registrants’ goods and services. We will start with the

‘981 registrant’s goods. This registrant’s goods are

identified simply as “printing machines” in Class 7.

Applicant argues that the “identification of goods in the

3

The evidence does not indicate that RSI is a generally

recognized abbreviation for registrant’s goods. See Modern

Optics, Inc. v. The Univis Lens Co., 234 F.2d 504, 110 USPQ 293,

295 (CCPA 1956). Inasmuch as registrant’s mark is in typed form,

its only component is the term RSI. As a registration on the

Principal Register, the cited registration is treated as valid

and entitled to the statutory presumptions under Section 7(b) of

the Trademark Act. In re Dixie Restaurants, Inc., 105 F.3d 1405,

41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997).

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Ser. No. 78848532

cited registration as ‘printing machines’ is so broad and

all inclusive as to be meaningless” and that we should

consider “extrinsic evidence showing that the description

of the goods has a specific meaning.” Brief at 7.

Applicant relies on In re Trackmobile, Inc., 15 USPQ2d

1152 (TTAB 1990) and Acomb v. Polywood Plastics Corp., 187

USPQ 188 (TTAB 1975). However, those cases do not provide

much support for applicant’s position. Normally, when we

address the question of whether goods are related, we must

compare the goods as they are described in the application

and registration. Octocom Systems, Inc. v. Houston

Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787

(Fed. Cir. 1990) (“The authority is legion that the

question of registrability of an applicant’s mark must be

decided on the basis of the identification of goods set

forth in the application regardless of what the record may

reveal as to the particular nature of an applicant’s goods,

the particular channels of trade or the class of purchasers

to which the sales of goods are directed”). See also Paula

Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177

USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the

issue of likelihood of confusion must be decided on the

basis of the respective descriptions of goods”) and Dixie

Restaurants, 41 USPQ2d at 1534 (punctuation in original),

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Ser. No. 78848532

quoting, Canadian Imperial Bank of Commerce v. Wells Fargo

Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987)

(“‘Likelihood of confusion must be determined based on an

analysis of the mark as applied to the … services recited

in applicant’s application vis-à-vis the … services recited

in [a] … registration, rather than what the evidence shows

the … services to be’”).

This is not a case where the term in the registrant’s

identification of goods is so vague that we need extrinsic

evidence to determine if the term has a specific meaning in

the trade. Applicant’s term “printing machines” is not a

term like “light railway motor tractors.” Trackmobile, 15

USPQ2d at 1154 (“In the present case, [given] the somewhat

vague nature of registrant's description of goods (light

railway motor tractors), and given the fact that applicant

has presented extrinsic evidence showing that the term

‘light railway motor tractors’ is used to refer to

relatively small, unmanned devices utilized to move loads

from point to point within a factory, it is not proper to

rely simply upon abstract reasoning to give this somewhat

vague term a broad meaning absent countervailing extrinsic

evidence showing that it is entitled to such a broad

meaning”). Nor is the term “printing machines” so broad as

to be virtually meaningless. Acomb, 187 USPQ at 190 (“In

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Ser. No. 78848532

the instant case, ‘molded wood products consisting of

particulate wood and resin’ is so broad and comprehensive

as to be devoid of any information as to just what molded

wood products are marketed by opposer. It defies one's

imagination because molded wood products could be most

anything from toys to furniture to building materials to

containers and so on”). Applicant here is apparently

attempting to do what the Trackmobile applicant

specifically disavowed, i.e., limiting registrant’s goods

to the specific product applicant found on the internet.

Trackmobile, 15 USPQ2d at 1153 (“Applicant acknowledges the

foregoing rule of law by noting, by way of example, that if

a prior registration utilizes the unambiguous term

‘vegetables’ as its description of goods, it would be

improper for an applicant to argue that in point of fact

registrant makes use of its mark only on ‘peas’”).

At this point, we must compare registrant’s “printing

machines” as they are identified without reading in any

limitations to registrant’s goods. In addition to being

theoretically related, the actual goods that are involved

here underscore the relatedness of the goods. Bose Corp.

v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,

1310 (Fed. Cir. 2002) (“[T]here is ample evidence of

relatedness from the text of the registrations alone. When

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Ser. No. 78848532

the text of the advertising for the ACOUSTIC WAVE product

is considered, the conclusion of relatedness is

inescapable. The consumers who purchase the Bose product

cannot ignore the fact that it, like the QSC product,

amplifies via an amplifier”). See also Specialty Brands,

Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223

USPQ 1281, 1282 (Fed. Cir. 1984) (“Applicant's proposed

[registration] is not limited to spiced teas, and opposer's

mark [for teas] is used for both spiced and unspiced teas”)

(emphasis added).

We agree with the examining attorney’s argument to the

extent that we conclude that printing machines are closely

related to applicant’s ink jet printers. However, the

goods are in different international classes4 and therefore

they are unlikely to be identical.5 However, applicant

4

While classification is for the administrative convenience of

the USPTO, we would not assume that a properly identified term

would include goods outside the international class. Otherwise,

we would have to assume that goods identified as “mufflers” may

be related to items of clothing and automobile parts. TMEP

§ 1402.03 (5th ed. rev. September 2007) (“If the meaning of such a

term can be understood when read in association with the title of

the class in which it is placed, and if the term is otherwise

satisfactory, the examining attorney need not require amendment

to further qualify the term. For example, ‘mufflers’ in the

clothing class would not require further modification to indicate

that articles of clothing are intended, rather than automotive

mufflers”).

5

If a proposed identification can be classified in more than one

class, it is not an acceptable identification of goods or

services. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544

(Fed. Cir. 2007) (The “scope of the term ‘chronographs’ is

ambiguous for registration purposes, for it includes both watches

12

Ser. No. 78848532

agrees that “both Applicant and Stork Prints [‘981

registrant] sell ‘printing machines.’” Response dated

March 14, 2007 at 3. The examining attorney points out

that:

[R]egistrant’s promotional material (applicant’s

Exhibit A) states that its printers allow for printing

at high speeds. The promotional material also

specifies that one of the functions the registrant’s

printers serve is that of printing labels. Similarly,

the applicant states that its printers are for high

speed printing and that they are also intended for use

in printing labels.

Brief at 10-11. See also Response dated March 14, 2007 at

3 (Applicant’s printing machines utilize thermal ink-jet

coding technology that is suitable for highly customized

output such as labels … at high speed”) and Exhibits A, p.4

(“Solution for Success in Label Printing”) and B.

Furthermore, a review of the literature of applicant

and registrant indicates that both are the source of large

printing machines that are used in a variety of commercial

printing operations. The evidence convinces us that

registrant’s printing machines and applicant’s identified

ink jet printers, which would include large ink jet

printers that would be used in printing commercial labels,

and time recording devices”). “However, the conclusion that a

term would clearly include items classified in more than one

class should not be drawn unless reasonable, in light of the

commercial relationships between all the goods or services

identified in the application.” TMEP § 1402.03.

13

Ser. No. 78848532

are related. Therefore, we find that applicant’s goods in

Class 9, including ink jet printers, are related to the

‘981 registrant’s printing machines.

We add that applicant’s Class 7 goods include “ink

delivery system consisting of ink storage unit, ink level

monitoring unit, tubes for delivering ink and parts”

therefor and its Class 2 goods are “ink jet cartridges.”

These goods are also related to the ‘981 registrant’s

printing machines. The registrant’s literature identifies

among its “Performance Options”:

- an automatic level control regulates the ink

delivery pump maintaining a constant level inside the

screen and thereby ensuring optimal consistency in the

printed result.

Response dated March 14, 2007, Ex. A at 1. Furthermore,

the ‘981 registrant indicates that its goods are designed

to be used with a variety of inks (“Standard colours,

fluorescent colours, metallic colours…”). Id. at 6.

Prospective purchasers familiar with registrant’s printing

machines and its options and variations in printing

capability are likely to assume that applicant’s ink

delivery system and ink jet cartridges likewise originate

from the same source.

Regarding the ‘680 registration, most of the classes

have been cancelled. However, the remaining class contains

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Ser. No. 78848532

the following services: “document imaging services in the

nature of converting documents from one media to another.”

Applicant’s Class 9 goods include “software for processing

images, graphics, and text.” Applicant’s software for

processing images and the ‘680 registrant’s imaging

services that convert documents from one medium to another

are very similar. Consumers familiar with the ‘680

registrant’s document imaging services are likely to assume

that registrant is now the source of software that performs

some of the same functions.6 In re Association of the

United States Army, 85 USPQ2d 1264, 1271 (TTAB 2007):

Next, we find that applicant's recited services are

related to the goods identified in cited Registration

No. 2910619 as “downloadable educational software for

teaching users about the armed forces, career

education, and military tactics and strategies, and

instruction manuals sold as a unit therewith.” For

the same reasons as those discussed above in

connection with our finding that applicant's

association services are related to registrant's

employment and career related services, we likewise

find that applicant's services are related to

registrant's downloadable software to the extent that

such software includes “career education” as part of

its subject matter.

6

We point out that the class 40 services in the ‘680

registration are not limited to “for courtroom use,” as applicant

argues. We do not read limitations into identifications of goods

and services. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ

937, 940 (Fed. Cir. 1983). Therefore, registrant’s services are

not limited to purchasers in the “legal community.” Applicant’s

Brief at 9.

15

Ser. No. 78848532

Therefore, the ‘680 registration services are related

to applicant’s software in Class 9.

The test for whether goods and services are related is

not whether the goods and services are the same or

interoperable. It “has often been said that goods or

services need not be identical or even competitive in order

to support a finding of likelihood of confusion. Rather,

it is enough that goods or services are related in some

manner or that circumstances surrounding their marketing

are such that they would be likely to be seen by the same

persons under circumstances which could give rise, because

of the marks used thereon, to a mistaken belief that they

originate from or are in some way associated with the same

producer or that there is an association between the

producers of each parties' goods or services.” In re

Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also

Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,

1661 (TTAB 2002). Therefore, we conclude that applicant’s

and the registrants’ goods and services are related.

Purchasers of the respective goods of applicant and

the ‘981 registrant are also likely to be similar, if not

overlapping. The registrant’s literature indicates that

its goods are “[t]ypically used in combination with

conventional processes such as flexo, letterpress, offset

16

Ser. No. 78848532

and rotogravure.” Response dated March 14, 2007, Ex. A at

4. A facility that had multiple printing needs would

likely be a potential purchaser of both applicant’s and the

‘981 registrant’s goods. Similarly, a potential purchaser

of the ‘680 registrant’s imaging services is also a

potential customer of applicant’s broadly identified

software for processing images if they would seek the

alternative of doing the tasks in-house. Also, the

channels of trade for applicant’s printers and related

equipment and the registrants’ printing machines and

imaging services are likely to be similar to the extent

that they are likely to be advertised in similar

publications where purchasers with multiple printing and

document imaging needs would look for products and

services.

While ink jet printers are not necessarily only

purchased by sophisticated purchasers, it nonetheless

appears to be the case that purchasers of printing machines

and applicant’s commercial ink jet printers are likely to

be sophisticated. However, “even careful purchasers are

not immune from source confusion.” In re Total Quality

Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). See also In

re Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986)

(“While we do not doubt that these institutional purchasing

17

Ser. No. 78848532

agents are for the most part sophisticated buyers, even

sophisticated purchasers are not immune from confusion as

to source where, as here, substantially identical marks are

applied to related products”). Even sophisticated

purchasers of printing equipment and software and related

services would have little basis to distinguish the marks

of applicant and registrants when used on the identified

goods and services inasmuch as the marks contain the same

dominant term “RSI” and the cited registrations contain no

other element.

Applicant also refers to the fact that there has been

“no actual confusion.” Brief at 12. Even if there were

some evidence to support this statement, it does not

demonstrate that there has been a significant opportunity

for confusion to occur. Furthermore, the “lack of evidence

of actual confusion carries little weight.” Majestic

Distilling, 65 USPQ2d at 1205.

We conclude that applicant’s and registrants’ marks

are for the identical term RSI and that the addition of

applicant’s sphere does not significantly change the

appearance, pronunciation, meaning or commercial impression

of its mark from the registrants’ marks. Applicant’s goods

are related to the ‘981 registrant’s “printing machines.”

Applicant’s Class 9 goods are also related to the ‘680

18

Ser. No. 78848532

registrant’s Class 40 services.7 Under these circumstances,

we hold that confusion is likely.

Decision: The examining attorney’s refusal to

register applicant’s mark under Section 2(d) of the

Trademark Act is affirmed.

7

The issue of the co-existence of these registrations is not

before us, and we add that, even if there were an issue, this

fact would not justify the registration of a confusingly similar

mark. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB

1987).

19