Tuesday, October 28, 2008

Precedential No. 46: TTAB Affirms 2(d) Refusals of "RSI" Design Mark for Ink Jet Printers

In a less than scintillating decision, the Board affirmed two Section 2(d) refusals of the mark RSI & Design (shown below) for ink jet printers and related paraphernalia, finding the mark likely to cause confusion with the mark RSI in standard character form, owned by different registrants, one for "printing machines" and the other for document imaging services. In re RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008) [precedential].

RSI for "printing machines": As to the marks, the Board not surprisingly found the letters RSI to be a prominent feature of Applicant's mark, and it concluded 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."

As to the goods, Applicant argued that the term "printing machines" is "so broad and all inclusive as to be meaningless" and that the Board should consider "extrinsic evidence showing that the description of the goods has a specific meaning." The Board, however, disagreed, deeming the term "printing machines" to be neither so vague as to require extrinsic evidence nor virtually meaningless.

The Board then found that Applicant's goods not only are theoretically related to printing machines, but the "actual goods that are involved here underscore the relatedness of the goods." It observed that the goods "are in different international classes and therefore they are unlikely to be identical," but agreed with Examining Attorney Katherine Stoides that "printing machines are closely related to applicant's ink jet printers." For example, Registrant's promotional materials state that its printers allow for high speed printing, including labels, and Applicant's printers are also intended for printing labels.

"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."

RSI for "document imaging services": Turning to the second registration, "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 registrant's ... services are likely to assume that registrant is now the source of software that performs some of the same functions."

Purchaser of these goods and services are also likely to be "similar, if not overlapping." The channels of trade are likely to be similar because the goods and services "are likely to be advertised in similar publications where purchasers with multiple printing and document imaging needs would look for products and services."

Applicant's "sophisticated purchasers" argument was rejected by the Board, since "even careful purchasers are likely not immune from source confusion" when the marks are substantially identical. Likewise, as to Applicant's argument regarding the lack of any evidence of actual confusion, the Board pointed out that lack of actual confusion "carries little weight."

The Board therefore affirmed both refusals to register.

Text Copyright John L. Welch 2008.


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