Altera Corp.

Trademark Trial and Appeal Board

Sep 29, 2000

No. 75349539 (T.T.A.B. Sep. 29, 2000)

Paper No. 15
CEW
9/29/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Altera Corporation
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Serial No. 75/349,539
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Rochelle D. Alpert of Brobeck, Phleger & Harrison for
applicant.
Cora Moorhead, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
____________
Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Altera Corporation has filed an application on the
Principal Register to register the mark CLOCKLOCK for goods
identified, as amended, as “a feature of configurable logic
integrated circuits and programmable logic integrated
circuits, namely, timing circuitry.”1

1 Application No. 75/349,539, filed August 29, 1997, based on use in
commerce, alleging first use and first use in commerce as of June 1996.
Applicant sought to further amend its identification of goods in its
brief. However, as that request was untimely and should have been the
subject of a request for remand, we do not consider that proposal to be
the identification of goods of record.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/349,539
2
The Examining Attorney has issued a final refusal
requiring the submission of substitute specimens showing
use of the mark in connection with the goods identified in
the application; and requiring the submission of an
acceptable identification of goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register on
both grounds.
Specimens Requirement
During examination of the application and in her final
refusal the Examining Attorney contended that the specimens
are unacceptable because they consist of promotional
materials and do not show use of CLOCKLOCK as a source
indicator, and suggested that appropriate specimens would
include, inter alia, instruction manuals.
The specimens submitted with the application are
described by applicant, in its October 21, 1998, response,
as “the user’s instruction manual that provides the
necessary information for the purchaser to use the
CLOCKLOCK circuitry.” Applicant states in that response
that “[b]ecause the goods offered under the mark CLOCKLOCK
consist of circuitry on a semiconductor, placement of the
mark on the goods is not commercially feasible.”
Ser No. 75/349,539
3
With its request for reconsideration of July 15, 1999,
applicant submitted an additional excerpt from its
instruction manual, verified to have been in use prior to
the application filing date, and a declaration from a
customer verifying that the specimen is a technical manual,
available from applicant in hard copy or online, that he
must use in connection with the CLOCKLOCK product in order
to make proper use of the product.
For the first time, in her brief, the Examining
Attorney posits an entirely new basis for the requirement
for substitute specimens, contending that the specimens
fail to support the use of CLOCKLOCK as a trademark. She
states in her brief that “the term is used in merely an
informational sense and does not function as a trademark
because it neither identifies nor distinguishes the goods
of the applicant from those of others nor does it indicate
the source of the goods." We will not consider this issue
raised at this point in the appeal, since it is essentially
a new ground for refusal. The proper procedure would have
been for the Examining Attorney to file a request for
remand in order to refuse registration on the ground that
the specimens do not show use of CLOCKLOCK as a trademark.
Trademark Rule 2.142(f)(6). See also Trademark Trial and
Appeal Board Manual of Procedure (TBMP), Section 1209.02.
Ser No. 75/349,539
4
Further, we find no need to consider a remand sua
sponte because, based on the record before us, the new
basis for refusal asserted by the Examining Attorney in her
brief does not render the applicant’s mark unregistrable.
See Trademark Rule 2.142(f)(1) and TMBP Section 1209.01.
Considering the Examining Attorney’s contention in the
final refusal that the specimens are unacceptable because
they consist of promotional materials and do not show use
of CLOCKLOCK as a source indicator, as applicant correctly
notes, the Board, in In re Ultraflight Inc., 221 USPQ 903
(1984), made it clear that if printed matter included with
goods functions as an integral part of the goods, such as a
manual for assembling a kit for the product, placement of
the mark on that printed matter constitutes use on the
goods. Moreover, the Board concluded, in In re Brown
Jordan Co., 219 USPQ 375 (1983), that it is not necessary
that purchasers see the mark for the goods before they
purchase the goods.
The evidence, including the declaration of a customer,
clearly establishes that it is not feasible to place the
trademark on the goods and that the specimens of record are
instruction manuals. As such, the specimens are proper and
the refusal based on the requirement for substitute
specimens is reversed.
Ser No. 75/349,539
5
Identification of Goods
The Examining Attorney has required applicant to amend
its identification of goods, apparently on the ground that
the goods, as presently identified, are indefinite.
Applicant has explained that its timing circuitry is
imbedded on a semiconductor. The declaration submitted by
applicant is from a design engineer for a manufacturer of
circuit boards. He explains that he uses applicant’s
circuitry in embedded processor modules that his company
builds for networking equipment manufacturers.
The Examining Attorney suggested the following
identification of goods: “consumer products incorporating
electronic components in the nature if (sic) timing
circuitry, namely, (please specify the common commercial
name[s] of the consumer products).” The Examining Attorney
appears to misunderstand the nature of the goods identified
by the mark CLOCKLOCK. We conclude that, as explained by
applicant in the record, the identification of goods is
sufficiently definite and accurately reflects applicant’s
use of its mark. Thus, the refusal based on the
requirement for an amendment to the identification of goods
is reversed.
Ser No. 75/349,539
6
Decision: The refusals on the ground that the
specimens are unacceptable evidence of trademark use, and
on the ground that the identification of goods is
indefinite, are reversed.
E. J. Seeherman
C. E. Walters
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board