Roush Enterprises, Inc.

Trademark Trial and Appeal Board

May 2, 2013

No. 85222321 (T.T.A.B. May. 2, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Roush Enterprises, Inc.
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Serial No. 85222321
Serial No. 85222337
Serial No. 85222349
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Jeffrey P. Thennisch of Dobrusin & Thennisch PC for Roush Enterprises, Inc.

Dorritt Carroll, Trademark Examining Attorney, Law Office 116 (Michael W. Baird,
Managing Attorney).
_____

Before Bergsman, Adlin, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Roush Enterprises, Inc. filed applications to register on the Principal Register
the marks RS1, RS2, and RS3,1 in standard character form, for:
Vehicles And Vehicle Parts, Namely, Specialty And High-
Performance Automobiles, Vehicle Seats, And Insignia
Badges For Vehicles, in International Class 12.

1 Application Serial Nos. 85222321 (for the mark RS1); 85222337 (RS2); and 85222349
(RS3). All were filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on January 20, 2011.
Serial Nos. 85222321; 85222337; 85222349

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In each case, the trademark examining attorney refused registration under
Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground that each mark, as used in
connection with applicant’s goods, so resembles the registered marks RS and RS 3,
as to be likely to cause confusion, or to cause mistake, or to deceive. The cited mark
RS is registered on the Principal Register for “automobiles and structural parts for
automobiles.”2 The cited mark RS 3 is registered on the Principal Register for
“Vehicles, namely, automobiles and structural parts therefor,” among other goods.3
When the refusal was made final, applicant appealed. Applicant and the examining
attorney have filed briefs and applicant has filed a reply brief.
By a Board order of December 5, 2012, on the examining attorney’s motion,
the three appeals were consolidated. The three appeals will be decided in a single
opinion. Citations to the briefs refer to the briefs filed with respect to application
Serial No. 85222321 unless otherwise noted. We have, of course, considered all
arguments and evidence filed in each case, including any arguments and evidence
not specifically discussed in this decision.
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 issue of
likelihood of confusion. 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

2 Reg. No. 2100723, issued on September 30, 1997; renewed. The owner of record is Dr. Ing.
H.C.F. Porsche Aktiengesellschaft.
3 Reg. No. 3966469, issued on May 24, 2011. The owner of record is Audi AG.
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the goods at issue. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). In this case, applicant and the examining
attorney have submitted evidence and arguments regarding conditions of sale,
careful selection of the goods, sophistication of customers, and the nature and
number of similar marks in use in the marketplace.
1. The goods.
For purposes of our analysis, the goods of applicant and registrants are
legally identical. “Automobiles” are identified in the application and both cited
registrations. In the context of an analysis under Section 2(d), it is sufficient if
likelihood of confusion is found with respect to use of the mark on any item that
comes within the description of goods in the application or registration. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB
2007). Applicant’s automobiles are limited to “specialty and high-performance”
automobiles. However, the registrants’ automobiles, as identified, are not subject to
any limitation; therefore we must assume that the registrations cover all kinds of
automobiles, including specialty and high-performance automobiles. In re Jump
Designs, 80 USPQ2d 1370, 1374 (TTAB 2006).
Applicant argues that it designs and manufactures “aftermarket vehicle
performance accessories and parts that serve to increase the performance and
racing capabilities of existing vehicles,” while the registrants “design and
manufacturer [sic] standard or ‘mass-market’ production vehicles to the general
Serial Nos. 85222321; 85222337; 85222349

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consumer and automotive market.”4 However, no such distinction appears on the
face of the application or the registrations. For purposes of determining the scope of
the goods at issue, we must consider the goods as they are identified in the
application and the cited registrations. Octocom Syst. Inc. v. Houston Computers
Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Accordingly, the
du Pont factor of the similarity or dissimilarity of the goods very strongly favors a
finding of likelihood of confusion.
2. Trade channels and relevant purchasers.
As applicant’s goods are legally identical to those of registrants, we must
presume that those goods move in all channels of trade normal for those goods and
are available to all classes of purchasers for those goods, including the trade
channels and customers of registrant. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB
2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Applicant argues, however, that buyers of high-performance automobiles are
sophisticated, stating:
The buyers of Applicant’s goods are likely to be
individuals that are highly involved in the racing and
performance vehicle community (i.e. a discerning
automotive enthusiast as opposed to a “mere” automotive
user). Such buyers are keenly aware of the function and
performance of the goods they are looking to purchase.
Such consumers rarely buy on impulse, instead buying

4 Applicant’s brief at 19.
Serial Nos. 85222321; 85222337; 85222349

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based on information or experience relating to the quality
of a particular source of vehicle goods….5
Applicant’s assertions, however, are not supported by evidence of record, and even if
they were, there is nothing in applicant’s identification of goods that limits the class
of customers to whom the goods are offered. Furthermore, we cannot entirely
accept applicant’s characterization of the relevant customers. In the United States,
customers for automobiles, including high-performance automobiles, include
consumers of all types and all degrees of sophistication, including customers who
may desire a prestige vehicle but lack the discernment of a car expert. Accordingly,
the two du Pont factors of trade channels and relevant customers also strongly favor
a finding of likelihood of confusion.
3. Conditions of sale; careful selection of goods.
Applicant argues that its goods are expensive and, accordingly, are purchased
with careful consideration.6 Although there is no evidence on this point, we agree
that automobiles are costly and that care goes into the selection and purchase of
them. On the other hand, it is a commonplace that for some less informed
automotive customers the care they use in selecting and purchasing a car ultimately
fails them. Overall, the du Pont factor relating to the conditions under which and
the buyers to whom sales are made weighs slightly against a finding of likelihood of
confusion.

5 Applicant’s brief at 20.
6 Id. at 17-20.
Serial Nos. 85222321; 85222337; 85222349

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4. The marks.
We next consider the similarity or dissimilarity of the marks at issue. In
comparing the marks, we are mindful that where, as here, the goods are identical,
the degree of similarity necessary to find likelihood of confusion need not be as great
as where there is a recognizable disparity between the goods. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
(a) The registered mark RS.
We first address the refusal based on the cited registered mark RS.
Applicant argues that its three marks, RS1, RS2, and RS3 are capable of
differentiation from the mark RS because they are not identical to it. The
examining attorney argues that the structure of the marks, namely the designation
RS with a single-digit numeral added to it, increases the likelihood that customers
will perceive applicant’s marks as related to the registered mark because “the order
of the numerals creates the impression that the owner of the RS mark is creating a
series of product lines….”7 The Board has previously acknowledged that such a
suggestion can arise from the addition of a numeral to a preexisting mark. In Solar
Turbines Incorporated v. Gemini Engine, 218 USPQ 854 (TTAB 1983), the marks
GEMINI and GEMINI II were at issue. The Board stated:

7 Examining attorney’s brief at 9-10.
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The numeral “II,” whether in Arabic or Roman characters,
is commonly used in association with products of all kinds
to indicate a new or companion product, but this could as
well be a new or companion product associated with
opposer’s engine; hence, this portion of the mark is
ineffective to distinguish between the two marks from the
standpoint of our determination of the likelihood of
confusion issue.
218 USPQ at 856. In view of this likely interpretation of each of the numerals 1, 2,
and 3, the suggestion that customers would perceive each of applicant’s marks as a
part of a series of marks (including the registered mark) designating different lines
of one company’s goods is highly plausible.
Applicant argues, however, that the marks would not be perceived in this
way because the designation RS is so commonly used in the automotive
marketplace that customers are able to distinguish between various RS marks on
the basis of minor differences, such as the numerals added by applicant. This
argument is addressed in the following section.
(i) The number and nature of similar marks in the marketplace.
Applicant has submitted third-party registrations of marks that include the
letters RS in order to demonstrate that the cited mark RS has weak source-
indicating power. Third-party registrations, alone, cannot prove that a designation
is weak, because they are not evidence that those marks have been used at all, let
alone used so extensively that consumers have become sufficiently conditioned by
their usage that they can distinguish between such marks on the bases of minute
differences. Rather, the probative value of third-party trademarks depends entirely
upon their actual use. Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167,
Serial Nos. 85222321; 85222337; 85222349

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192 USPQ 289, 294 (2d Cir. 1976); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d
324, 153 USPQ 406, 407 (C.C.P.A. 1967); Smith Bros. Mfg. Co. v. Stone Mfg. Co.,
476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). We note, moreover, that
most of the registered marks adduced by applicant do not show the designation RS,
but substantially modified designations, i.e., RSM, RSI, RSX and RSR. Marks such
as these are of limited relevance as to the public perception of the two-letter
designation RS, and are more easily distinguishable from RS than are applicant’s
marks, which contain numbers rather than letters, for the reasons set forth above.
More to the point, applicant has submitted evidence from the internet that
appears to demonstrate actual use of the designation RS in connection with
automotive goods, including the following references:
Acura RS-X Concept: a concept car “built to compete in Germany’s grueling
DTM touring car series….”

2010 Ford Focus RS: A Ford Focus automobile offered in Europe.

Subaru Impreza 2.5RS: automobile compared to the VW Jetta.

2011 Nissan Widebody
GT-Rs By Axell: a “tuning program for the sporty Nissan GT-R.”

VWvortex Beetle
RS Project: “one of only a handful of preproduction autoshow cars,”
apparently a 2012 Volkswagen Beetle automobile
modified with high-performance parts; a “blatant homage”
to the Porsche GT3RS.8

8 Applicant’s response of July 13, 2011, Exhibit D.
Serial Nos. 85222321; 85222337; 85222349

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The above evidence is of interest, as it does suggest that the designation RS may
have suggestive meaning in the automotive trades. Applicant amplifies its
argument with an advertisement from that explains the term as
follows:
RS for Rennsport – Motorsport in German – is one of the
most evocative designations in the history of Porsche.
Among its many connotations are precision and
performance, each refined to their purest form.9
In addition, applicant has submitted the entry entitled “Audi S and RS models”
from , which states:
Audi S and RS models are a range of high performance
cars of certain model ranges from the German automotive
company AUDI AG.”10
Applicant has also submitted a list, from , of numerous meanings
attributed to the designation RS, among which, under the rubric “Vehicles,” are:
- Rally Sport, a designation used on cars that are
rally class11
- Renn Sport (German Language, literally translated
as “racing sport”) a designation used for many high-
performance road-legal sports cars, such as the
Audi RS models, 1970s and 1990s Porsche 911
Carrera RS and the 2003 Porsche 911 GT3 RS

9 Id., Exhibit B.
10 Id., Exhibit D.
11 “Rally” or “rallye” means “a competitive long-distance automobile run esp. of sport cars
over public roads and under ordinary traffic rules with the object of maintaining a specified
exact average speed between checkpoints over a route unknown to the participants until
the start of the run.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) p. 1878.
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Serial Nos. 85222321; 85222337; 85222349

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- Rallye Sport, used by the Ford Motor Company for
its Ford TeamRS series of cars.12
The above evidence indicates that RS may be understood in the automotive industry
to suggest high performance racing capacity. However, the evidence is not entirely
unambiguous. The Ford Focus and the Subaru Impreza do not appear to be typical
racing cars. Applicant does not clearly explain what it believes to be the true
meaning of the term. However, we note that during examination of the application
applicant contended that RS__, as used by applicant, means “Roush Stage __.”13 In
any event, the apparent suggestiveness of the designation RS does have a
weakening effect on the ability of the mark to indicate a single source of goods.
However, the evidence is too sparse for us to ascribe a high degree of weakness to
the registered mark.14
Finally, we note applicant’s observation that the mark RS 3 (also cited against applicant
and discussed in part 4(c) below) was allowed to register without objection by the examining
attorney assigned to that mark, despite the existence of the earlier-registered mark RS. Applicant
has made of record the first Office action issued with respect to the RS 3 application.15 Neither
that Office action nor any other evidence of record is sufficient to make the allowance of the RS
3 mark relevant to the inquiry before us. The evidence does not tell us the examining attorney’s
rationale for allowing the mark to proceed to registration or whether he allowed the mark by an

12 Applicant’s response of July 13, 2011, Exhibit C.
13 Id., p. 3.
14 We have not interpreted references to Porsche products (including the VWvortex
“homage”) as detracting from the strength of the RS mark, as these appear to be products of
the cited registrants. We also find that the Porsche advertisement’s description of the
“connotations” of the mark is not in any way an admission of weakness.
15 Applicant’s response of February 8, 2012, Exhibit D.
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oversight. We certainly cannot interpret the allowance of the RS 3 mark to mean that the
examining attorney regarded the RS mark as so weak that the addition of a single-digit numeral
would result in a new, readily distinguishable mark that would not be likely to cause confusion.
In any event, we decide each case on its own merits and “[e]ven 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.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001).
(b) Conclusion regarding the cited mark RS.
The record shows that the goods, the relevant customers and the trade
channels are identical; that some of applicant’s goods are costly and would be
selected with some degree of care; that there is a degree of weakness in the cited
mark RS; but that nonetheless there is a strong similarity between applicant’s three
marks and the cited mark. Considering all of these factors, we find that applicant’s
marks, as applied to applicant’s goods in the commercial circumstances in which
such goods are expected to be marketed, so closely resemble the cited registered
mark as to be likely to cause confusion, mistake or deception as to the source of
applicant’s goods. Accordingly, the refusal based upon the cited mark RS must be
affirmed.
(c) The registered mark RS 3.
We next consider the refusal based upon the cited mark RS 3. The factors
relating to the goods, the relevant customers and channels of trade, and the
conditions of sale and care in selection of the goods addressed above in Sections 1, 2,
and 3 are equally applicable to this likelihood of confusion analysis. The discussion
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of similar marks in use in the marketplace set forth in Section 4(a)(i) above is also
applicable, with a number of exceptions. First, there is no evidence of third-party
use of the mark RS 3 in its entirety; if there is weakness in the mark, it inheres only
in the designation RS and not in the mark as a whole. Further, our exclusion of
references to Porsche products from our consideration of diluting uses does not
apply to the mark RS 3; however, we do not view the references to Audi products as
detracting from the strength of the RS 3 mark, as these appear to be products of the
cited registrant.
We will consider applicant’s mark RS3 separately, because it is essentially
identical to the cited mark RS 3. The absence of a space between RS and 3 in
applicant’s mark does not meaningfully distinguish it from the registered mark.
See In re Iolo Technologies LLC, 95 USPQ2d 1498 (TTAB 2010) (no trademark
significance in difference between ACTIVECARE and ACTIVE CARE). There is no
evidence to suggest that the presence or absence of a space causes the two marks to
differ in any way in significance or suggestiveness. The two marks would also be
pronounced the same. The evidence of weakness of the RS designation does not
reduce the likelihood of confusion between these two marks. If anything, one may
validly point out that the two marks are identical in their strength or weakness.
Considering all relevant du Pont factors, we find that applicant’s mark RS3, as
applied to applicant’s goods, so closely resembles the cited registered mark as to be
likely to cause confusion, mistake or deception.
Serial Nos. 85222321; 85222337; 85222349

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Turning to applicant’s marks RS1 and RS2, we note that they are powerfully
similar in form to the cited mark RS 3, and each could well be perceived as part of a
series that includes the cited mark. The fact that each of the distinctive elements (1
and 2) is very close in numerical sequence to the number 3 renders these elements
substantially less distinctive than would be more distant numbers. Applicant, as
the newcomer, is charged with the obligation to select marks that would not be
likely to give rise to confusion with existing marks. In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1691 (Fed. Cir. 1993). In the face of the existing mark RS 3, the
marks RS1 and RS2 do not meet this obligation. We find that the marks RS1 and
RS2 so closely resemble RS 3 as to be likely to cause confusion, mistake or
deception.
5. Conclusion
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s three
marks, as applied to applicant’s goods, so closely resemble both of the cited
registered marks as to be likely to cause confusion, mistake or deception as to the
source of applicant’s goods.
Decision: The refusal to register is affirmed as to all grounds of refusal.