Ziptronix, Inc.

Trademark Trial and Appeal Board

Aug 10, 2004

No. 78134624 (T.T.A.B. Aug. 10, 2004)

Mailed: August 10, 2004
Paper No. 9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ziptronix, Inc.
________
Serial No. 78134624
_______
Laura M. Kelley of Myers Bigel Sibley & Sajovec, P.A. for
Ziptronix, Inc.
Jacqueline A. Lavine, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Hohein, Chapman and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Ziptronix, Inc. has filed an application to register
the term "ZIP CHIP" on the Principal Register for "integrated
circuits" in International Class 9; "custom manufacture of
integrated circuits for others" in International Class 40; and
"custom design of integrated circuits for others" in
International Class 42.1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
1 Ser. No. 78134624, filed on June 11, 2002, which is based on an
allegation of a bona fide intention to use the such term in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78134624
2
ground that, when used in connection with applicant's goods and
services, the term "ZIP CHIP" is merely descriptive thereof.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not
necessary that a term describe all of the properties or functions
of the goods 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 idea about them. Moreover,
whether a term is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the term would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
Ser. No. 78134624
3
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Applicant, while conceding in its brief that "'zip' can
refer to compression formats, and 'chip' can refer to a type of
computer chip," asserts that because "these terms have other
meanings as well," the combination thereof into the term "ZIP
CHIP" is not merely descriptive of its goods and services. In
particular, applicant notes that it has made of record the
following definitions which it "found in a search on Mirriam-
Webster.com" [sic]:
ZIP: to close or open with or as if
with a zipper; to enclose or wrap by
fastening a zipper; to cause (a zipper) to
open or shut; to move, act, or function with
speed and vigor; to travel with a sharp
hissing or humming sound; to impart speed or
force to; to add zest, interest or life to;
to transport or propel with speed.
While acknowledging "the fact that a term may have different
meanings is not controlling," applicant contends in view thereof
that its "ZIP CHIP mark is not limited to 'compression formats'
and 'a type of material on which an integrated circuit is
embedded'," as argued by the Examining Attorney in her final
refusal. Applicant maintains, therefore, that "it is not readily
apparent from the term ZIP CHIP exactly what the goods or
services offered are," especially since, applicant admits,
"[i]ntegrated circuits have many functions other than providing
compression formats." Applicant accordingly concludes that:
Based on the numerous definitions shown
above and the fact that the proposed uses of
the mark are much broader than "compression
formats" and "a type of material on which an
integrated circuit is embedded", the mark ZIP
Ser. No. 78134624
4
CHIP is at most merely suggestive of a
portion of Appellant's goods and services.
The Examining Attorney, on the other hand, although
conceding in her brief that a "mark that combines descriptive
terms may be registrable if the composite creates a unitary mark
with a separate, nondescriptive meaning," argues that in this
case, however, "each component retains its descriptive
significance in relation to the goods or services, [such that]
the combination results in a composite that is itself
descriptive." In particular, the Examining Attorney, while also
conceding in her brief that "ZIP has many meanings," cites an
"attached definition from PCWebopaedia.com where ZIP is defined
as a [popular data] compression format"2 and urges that "the
relevant meaning here is a 'compression format' as relating to
computers." Noting further that "CHIP is defined as an
'integrated circuit'" by both "Dictionary.com and
MirriamWebsters.com" [sic], the Examining Attorney asserts that
the "relevant meaning of CHIP is an integrated circuit, a synonym
for applicant's goods and the subject of applicant's
manufacturing and design services." In view thereof, the
2 Although indicating that several "definitions were attached in the
Final Office Action," the Examining Attorney states in her brief that
"apparently the definition regarding ZIP was not properly reproduced
on the paper" and thus, since such may not be of record, requests that
the Board "take judicial notice of this definition because it comes
from a standard reference work." Inasmuch as it is settled that the
Board may properly take judicial notice of definitions from
dictionaries and other standard reference works, the Examining
Attorney's request is granted. See, e.g., In re Hartop & Brandes, 311
F.2d 249, 135 USPQ 419, 423 n. 6 (CCPA 1962); Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American
Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).
Ser. No. 78134624
5
Examining Attorney maintains that, when the terms "ZIP" and
"CHIP" are combined:
Clearly ZIP CHIP refers to an integrated
circuit that contains a compressed format.
.... In fact, the examining attorney
attached to the Final Refusal a random
sampling of excerpts of websites and articles
from the Google Research Database showing the
common meaning and usage of the term ZIP
CHIP. These articles show that others use
the term ZIP CHIP descriptively in
relationship [sic] to goods and services
similar to those identified by the applicant
in its [application].
Among the articles referred to above, as well as
similar articles made of record with the first office action, are
the following (emphasis added):
"If your computer has 1MB of video
memory, you can upgrade to 2MB of video
memory by inserting two 256Kb x 16 DRAM ZIP
chips.
....
To install a ZIP chip, align its notched
corner with the end of the socket near the
riser card connector." -- http://support.-
tandy.com/doc2/2680.htm;
"The ZIP ADAPTER enables SIMCHECK to
test individual DRAM chips which are packaged
in the ZIP (Zigzag Inline Package) standard.
....
....
If the ZIP chip is 256Kx1 it will have
16 pins, while ZIP chips of other sizes have
20 pins." -- http://testequipmentdepot.com/-
innoventions/simcheckii/adapters/zipdrama-
dapter.htm;
"Want to turn your Angel into an
Archangel? Consider the new Gabriel chip
from Kennesaw Mountain Markers. Gabriel is a
replacement chip for the WDP Angel that comes
mounted on a standard WDP board .... ....
So what does Gabriel offer? Like the
Zip chip from WDP, Gabriel offers semi-auto,
burst mode, and full-auto firing modes." --
Ser. No. 78134624
6
http://www.paintballravi.com/Articles/PGI%20-
stuff/PGI_Dope_September.html; and
"ZIP chips are fairly fragile, and their
vertical design makes them an incredible pig
to remove from their homes." -- http://www.-
pwr.wroc.pl/AMIGA/AR//ar501/Sections/re-
view/1/html.
Moreover, in addition to the definition of "ZIP" from
"PCWebopaedia.com" which, as indicated above, is relied on by the
Examining Attorney, the record contains the following definition
of "chip" retrieved from the same source:
A small piece of semiconducting material
(usually silicon) on which an integrated
circuit is embedded. A typical chip is less
than ¼-square inches and can contain millions
of electronic components (transistors).
Computers consist of many chips placed on
electronic boards called printed circuit
boards.
There are different types of chips. For
example, CPU chips (also called
microprocessors) contain an entire processing
unit, whereas memory chips contain blank
memory.
Chips come in a variety of packages.
The three most common are:
• DIPs" : Dual in-line packages are the
traditional buglike chips that have
anywhere from 8 to 40 legs, evenly
divided in two rows.
• PGAs : Pin-grid arrays are square
chips in which the pins are arranged
in concentric squares.
• SIPs : Single in-line packages are
chips that have just one row of legs
in a straight line like a comb.
In addition to these types of chips,
there are also single in-line memory modules
(SIMMs), which consist of up to nine chips
packaged as a single unit.
Furthermore, we judicially notice the following pertinent
definitions from The Computer Glossary (9th ed. 2001), which
defines "chip" at 56 as:
Ser. No. 78134624
7
A set of microminiaturized, electronic
circuits that are designed for use as
processors and memory in computers and
countless consumer and industrial products.
.... The terms chip, integrated circuit and
microchip are synonymous. ....
The same dictionary also defines "chip carrier" at 56 as "[t]he
package that a chip is mounted in" and sets forth "zip" at 453 as
"(ZIP) (Zig-Zag Inline Package) Similar to a DIP, but smaller and
tilted on its side for mounting on boards with limited space."
Likewise, judicial notice is taken that the Computer Desktop
Encyclopedia (9th ed. 2001) contains the identical definition of
"chip" at 133; lists basically the same definition of "chip
carrier" at 138 while adding "[s]ee chip package," which in turn
is defined at 138 as "[t]he housing that chips come in for
plugging into (socket mount) or soldering onto (surface mount)
the printed circuit board. See CDIP, ... DIP, flatpack, ... and
ZIP"; and in more detail sets forth "zip" at 1103 as "(ZIP) (Zig-
Zag Inline Package) A chip package similar to a DIP, but both
rows of pins come out of one side in an alternating pattern."
In view thereof, the Examining Attorney maintains in
her brief that:
[W]hile ZIP could also refer to a zipper and
CHIP could refer to a food snack, considering
applicant's computer related goods and
services, clearly ZIP CHIP is more likely to
be understood to refer to integrated circuits
embedded with compressed formats.
Descriptiveness is considered in relation to
the relevant goods and services. The fact
that a term may have different meanings in
other contexts is not controlling on the
question of descriptiveness. In re Chopper
Industries, 222 USPQ 258 (TTAB 1974); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 591
(TTAB 1979); In re Champion International
Ser. No. 78134624
8
Corp., 183 USPQ 318 (TTAB 1974); TMEP
§1209.03(e).
She also contends, as to applicant's argument that its goods and
services include more than just integrated circuits with
compressed formats, that "a term need not describe all of the
purposes, functions, characteristics or features of the goods
and/or services to be merely descriptive. Instead, she properly
notes that "it is sufficient that the term describe only one
attribute of the goods and/or services to be found merely
descriptive," citing "In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); and TMEP
§1209.01(b)."
Upon consideration of the evidence and arguments
presented, we agree with the Examining Attorney that, when
considered in its entirety, the term "ZIP CHIP" is merely
descriptive of applicant's goods and services. Such term, as
shown by the evidence noted above, immediately conveys, without
speculation or conjecture, both that its integrated circuits
include those which, as applicant admits, provide compression
formats and that its chips include those available in an industry
standard zig-zag in-line package. The term also merely describes
a significant attribute of applicant's services, which involve
both the custom manufacture and the custom design of integrated
circuits or chips, as applicant's goods are also known, with such
zip features as either a compression format or a zig-zag in-line
package. See, e.g., In re Wickerware, Inc., 227 USPQ 970, 971
(TTAB 1985) ["WICKERWARE" for "mail order and distributorship
services in the field of wicker furniture and accessories"
Ser. No. 78134624
9
designates "a central characteristic of appellant's services" and
thus is not registrable]. Plainly, when viewed in the context of
applicant's goods and services, rather than in the abstract as
applicant essentially urges, there is nothing in the term "ZIP
CHIP" which, to those who would purchase and/or utilize
integrated circuits, would be ambiguous, incongruous or otherwise
require the exercise of any imagination, cogitation or mental
processing or would necessitate the gathering of further
information in order for the merely descriptive significance of
such term to be readily apparent. In short, because the term
"ZIP CHIP" designates a type or category of integrated circuits
and, hence, also conveys forthwith the nature of the products
which are custom manufactured and/or designed for others, such
term accordingly is merely descriptive of applicant's goods and
services within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed as to all three classes of goods and services.