MEMCElectronic Materials, Inc.

Trademark Trial and Appeal Board

Jun 23, 2006

No. 78228569 (T.T.A.B. Jun. 23, 2006)

Mailed: June 23, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MEMC Electronic Materials, Inc.
________

Serial No. 78228569
_______

William D. O’Neill of Senniger Powers for MEMC Electronic
Materials, Inc.

Darryl M. Spruill, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Quinn, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Cataldo, Administrative Trademark Judge:

MEMC Electronic Materials, Inc., a Delaware
corporation, has applied to register the mark PERFECT
SILICON in standard character form on the Principal
Register for “silicon wafers.”1

1 Application Serial No. 78228569, filed March 21, 2003, based on
applicant’s assertion of a bona fide intent to use the mark in
commerce on the goods. Applicant has disclaimed the exclusive
right to use “SILICON” apart from the mark as shown.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 78228569
2
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of a feature or
quality of applicant’s goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed main briefs and
applicant filed a reply brief. An oral hearing was not
requested.
Applicant contends its proposed mark is just
suggestive and does not immediately convey to consumers the
nature of the goods. More specifically, applicant claims
that “[t]he word ‘perfect’ is vague and general enough, and
has enough different meanings, that it can mean different
things to different people who are representative of the
average prospective consumer of Appellant’s goods.”
Applicant has relied upon dictionary definitions of the
word “perfect,” and printouts from the United States Patent
and Trademark Office’s Trademark Electronic Search System
(TESS) of third-party registrations for marks consisting of
the word “PERFECT” followed by a disclaimed term.
According to applicant, the third-party registrations
“demonstrate the Trademark Office’s consistency in applying
the standards for determining mere descriptiveness” with
regard to “PERFECT” formative marks.
Ser. No. 78228569
3
The Examining Attorney maintains that the mark merely
describes a feature or quality of the goods. In
particular, the examining attorney argues that the mark
consists of the laudatorily descriptive term “PERFECT” and
the disclaimed, generic, term “SILICON;” and that, in
combination, the terms comprising the mark merely describe
silicon wafers that are free of defects, of high quality,
and superior to other similar goods. In support of the
refusal, the examining attorney has relied upon dictionary
definitions of the word “perfect,” and made of record
articles retrieved from the Nexis database and Internet web
pages. Excerpts from these articles and web pages follow
(emphasis added):
Two years ago, the Arlington plant produced a
perfect silicon wafer on which every chip worked.
(Fort Worth Star-Telegram, November 21, 2002)

…merchant manufacture of silicon wafers in the
world. We pioneered key processes such as the
SECROWSKY method of crystal growing and the
development of [indiscernible], wafer-polishing
processes, our MDZ product feature, and perfect
silicon in the form of our OPTIA product family.
(FD Fair Disclosure Wire, October 28, 2002)

MEMC Electronics Inc., a company that makes near-
perfect silicon wafers for computer chips, was
sloppy with a common industrial degreaser in the
1960s. (St. Louis Post-Dispatch, December 19,
1994)

Ser. No. 78228569
4

Some suppliers have started promoting so-called
“perfect” silicon wafers that are made from high-
purity ingots. But they cost more than today’s
prime production wafers because the crystals are
grown at much slower rates to eliminate defects.
(www.siliconstrategies.com)

Semiconductor manufacturers will need high-
quality wafers in order to manufacture next-
generation chips, the Korean researchers point
out. However, they emphasize that growing the
defect-free crystals that would be required for a
“perfect” silicon wafer is an expensive, time-
consuming proposition…. (www.micromagazine.com)

…Such a defect free layer can be obtained by
several different means, examples are epi-wafers,
perfect silicon wafers and annealed
wafers…Perfect silicon wafers are made from
crystal that is pulled so slowly that the crystal
does not contain defects…. (www.asm.com)

The researchers’ first step was to remove the
heavy oxidation that’s ordinarily applied to a
silicon wafer, thus exposing a perfect silicon
surface. (www.componentbazaar.com)

There are simply no truly effective techniques
which can offer a result or a specification from
which one can decide whether this or the other
material will be suitable for this or the other
application. Advances in “Perfect Silicon”
(silicon that is completely micro-defect free)
offers this certainty. (www.futurefab.com)

In addition, applicant and the examining attorney recite
several definitions of the term “perfect.” Both agree that
“perfect” may be defined, inter alia, as “being entirely
without fault or defect” or “completely suited for a
Ser. No. 78228569
5
particular purpose or situation.”2
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/or services in
order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the term describes a
significant attribute or feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, "[w]hether consumers

2 Applicant cites to Merriam Webster’s Collegiate Dictionary,
Tenth Edition, 2000 as the source of its definitions. The
examining attorney cites to Merriam Webster Dictionary Online
(www.m-w.com) and Bartleby.com (www.bartleby.com) for his
definitions. We note that copies of the proffered definitions
were not submitted. Nonetheless, inasmuch as neither applicant
nor the examining attorney has objected to the definitions set
forth by the other, we will consider them in our determination
herein.
Ser. No. 78228569
6
could guess what the product is from consideration of the
mark alone is not the test." In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).
In the instant case, the evidence made of record by
the examining attorney supports a finding that, as applied
to applicant's goods, the term PERFECT SILICON would
immediately describe, without conjecture or speculation, a
significant characteristic or feature of the goods, namely,
that they are made of silicon that is without fault or
defect, or otherwise completely suited for a particular
purpose. It is settled that excerpts from articles taken
from the Nexis database are competent evidence of how a
mark may be perceived. See In re Shiva Corp., 48 USPQ2d
1957 (TTAB 1998). It is further settled that material
obtained from the Internet is acceptable in ex parte
proceedings as evidence of potential public exposure to a
term. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB
2002). Prospective purchasers, upon confronting the term
PERFECT SILICON for applicant's goods, would immediately
perceive that the goods are silicon wafers that are free
from defects, and completely suitable for purposes
requiring silicon wafers produced to such standards of
quality.
The third-party registrations submitted by applicant
Ser. No. 78228569
7
are of little help in determining the registrability of the
mark at issue in this case. As often noted by the Board,
each case must be decided on its own set of facts, and we
are not privy to the facts involved with these
registrations. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”] See also In re Best Software Inc., 58 USPQ2d 1314
(TTAB 2001). While uniform treatment under the Trademark
Act is highly desirable, our task here is to determine,
based upon the record before us, whether applicant's mark
is registrable.
We note applicant’s argument that the examining
attorney’s evidence “demonstrates the vagueness of
‘perfect’ as it applies to PERFECT SILICON, and provides
even further evidence that PERFECT SILICON is suggestive,
rather than merely descriptive, of its goods.” Applicant’s
Brief, p. 8. However, in setting forth its argument,
applicant appears to ignore many of the above-referenced
excerpts demonstrating that PERFECT SILICON immediately
conveys a significant quality or feature of applicant’s
silicon wafers. Applicant’s conjecture regarding the
Ser. No. 78228569
8
possible meanings of its mark is simply unpersuasive in
light of the examining attorney’s above-referenced evidence
that applicant’s mark is merely descriptive as applied to
its goods.
Accordingly, we find that applicant's mark is merely
descriptive as contemplated by Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.