Optonics, Inc.

Trademark Trial and Appeal Board

Nov 29, 2001

EX (T.T.A.B. Nov. 29, 2001)

9/27/01 Paper No. 14
RLS/AP

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Optonics, Inc.
________

Serial No. 75/586,933
_______

Thomas P. Storer of Goodwin, Procter LLP for Optonics, Inc.

Rebecca Gilbert, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______

Before Simms, Hairston and Rogers, Administrative Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

Optonics, Inc. (applicant), a California corporation,
by change of name from Silicon Metrics, Inc., has appealed
from the final refusal of the Trademark Examining Attorney
to register the mark OPTONICS for the following goods:
capital equipment for the semiconductor
manufacturing industry, namely,
inspection and test apparatus for
measuring the performance
characteristics of semiconductors, in
Class 9;
installation of capital equipment for
semiconductor manufacturing, namely,
inspection and test systems for
semiconductor manufacturing, in Class
37; and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/586,933
2
design, development, and evaluation for
the purpose of certification of capital
equipment for semiconductor
manufacturing for others, namely,
inspection and test systems for
semiconductor manufacturing, in Class
42.1

The Examining Attorney has refused registration under
Section 2(e)(1) of the Act, 15 USC §1052(e)(1), on the
basis that applicant’s asserted mark is merely descriptive
of a feature, function, use or purpose of applicant’s goods
and services. Applicant and the Examining Attorney have
submitted briefs but no oral hearing was requested.
We affirm.
Relying upon dictionary definitions as well as
materials gathered from electronic databases and the
Internet, the Examining Attorney argues that the term
“optonics” is a shortening of the term “optoelectronic,”
which is defined by The Illustrated Dictionary of
Electronics (1997) as “A branch of electronics that
involves the use of visible light for communications or
data-transfer purposes.” The Examining Attorney argues
that applicant’s goods, inspection and test apparatus for
measuring the performance of semiconductors, and

1 Application Serial No. 75/586,933, filed November 12, 1998,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
Ser. No. 75/586,933
3
applicant’s installation, design and development services,
may be used in the field of optoelectronics or “optonics.”
The Examining Attorney maintains that semiconductors2 are
used in a wide variety of devices and in many different
applications including optoelectronics or optonics.
Some of the evidence, including Web pages, upon which
the Examining Attorney relies is noted below:
The present invention relates to
ensuring an operational readiness state
of optical-optoelectronic (or just
optonic) instruments for use in
tracking, monitoring and guiding
systems. Optic-electronic sensor
systems are to an increasing extent
used for commercial, civilian and
military purposes…
U.S. Patent No. 4,774,402, issued
September 27, 1988).

Second-order nonlinear optical
polymeric films, including alternating
monomolecular layers of two head-to-
head, mainchain, amphophilic,
chromophoric polymers, one polymer
having the electron donating end of the
chromophore attached to hydrophilic
groups, and the other polymer having
the electron donating end of the
chromophore attached to hydrophobic

2 A semiconductor is “[a] solid crystalline material whose
electrical conductivity is intermediate between that of a metal
and an insulator. The optical properties of a semiconductor are
important for the understanding and application of the material.
Photodiodes, photoconduction detectors or radiation injection
lasers, light-emitting diodes, solar-energy conversion cells and
so forth are examples of the wide variety of optoelectronic
devices.” McGraw-Hill Concise Encyclopedia of Science &
Technology (2nd edition 1989).
Ser. No. 75/586,933
4
groups, and methods of fabricating the
films for use in optonics.
U.S. Patent No. 5,520,968, issued May
28, 1996

…The cost of the SDL facility has been
minimized by using an existing 210MeV
linac and the 10m long NISUS wiggler,
originally build by STI Optonics for
Boeing Aerospace.
FOCUS ON……Accelerator R & D Group

Francois Diederich has been full
Professor of Organic Chemistry in the
Department of Organic Chemistry at the
Swiss Federal Institute of Technology
(ETH) in Zurich since 1992. Research in
the group headed by Prof. Diederich is
structured around the central themes of
supramolecular chemistry, medicinal
chemistry, novel materials for
electronics and optonics based on
carbon-rich acetylenic structures, and
fullerene chemistry as well as carbon
allotropy…
(from biography of Francois Diederich)

…Professor Francois Diederich disclosed
his prepartion of functional conjugated
materials for optonics and electronics…
Chemistry International, January 1999

…As Arthur C. Clarke reminds us, “As
the century that saw the birth of both
electronics and optonics draws to a
close, it would seem that virtually
everything we would wish to do in the
field of telecommunications is now
technically possible. The only
limitations are financial, legal, and
political.”
Ser. No. 75/586,933
5
Thomas H. Lipscomb, “Great Library” or
Great White Elephant?---The Alexandria
Library stands at the digital
crossroads.

Product Nomenclature
List of different products and optical
systems-—ophthalmic, precision,
optonics-—with details of manufacturers
1997-98 GIFO

We are carrying out original campaigns
to prolong the prosperity of our
industrial park in these days of rapid
advances in newly developed industry,
such as, mechatronics, optonics and the
advanced information industries, into
the conventional industrial structure.
Daiichi Precision Industry Association

There are many types of “Optonic”
Indicators available, however the
better ones have a volume control and a
tone control…
“Carp-1 FAQ – Tackle,” from Catfish
Fishing Network, 1998

..asynchronous transfer mode (ATM)
switches by first quarter next year to
complete construction of its Optonics
network alternative to synchronous
optical network rivals, it said Thurs.
Communications Daily, July 31, 1998

…Sir Leon Brittan wrote to U.S. Trade
Representative Charlene Barshefsky
yesterday seeking inclusion by the U.S.
of photo-optonic chips, optical
amplifiers and optical connectors, he
said.
AFX News, July 17, 1998

Ser. No. 75/586,933
6

… full-color display. The Boulder-
based company’s technology won the 1995
Photonics Circle of Excellence Award
and the 1994 “Lasers & Optonics”
Technology Award. FASTfilter will
enable a new generation of full-color
display systems to be mounted in
lightweight…
The Denver Post, August 7, 19953

- - - - - - - - - - - - - - - - - - - -

…During that time Samsung will pocket
$150 billion in profits with which to
buy dominance into optonics, multimedia
and its big new crusade-—autos.
Transpacific, April 1995

…ceramics, Si, InP, GaAs and other
compound semiconductors are discussed
as well as thin films for applications
in electronic, optonic, and
optoelectronic devices.
Electronic Materials Technology News,
February 1995

…A desktop model called the Mediaplexer
that contains an optonic modem,
termination for fiber optic signals,
tonal controls and a multiplexer to
demux and route analog and digital
signals is …
InternetWeek, November 25, 1991

Other listings include biotechnology
firms, telecommunications specialists,
photonics and optonics firms, medical

3 Applicant has pointed out that there is a magazine entitled
“Lasers & Optronics” and that this reference appears to be a
misspelling of that name.
Ser. No. 75/586,933
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and pharmaceutical companies, and test
and measurement developers.
InfoWorld, April 2, 1990

In addition, the Examining Attorney has made
of record the following page from the Internet.

Ser. No. 75/586,933
8
Applicant, on the other hand, argues that its mark is
suggestive. Applicant’s attorney has stated throughout the
prosecution of this case that the term OPTONICS was coined
by applicant’s founder to suggest the nature and
characteristics of applicant’s goods and services.
According to applicant’s attorney, the term is a “blend” of
the words “optics” and “electronics,” designed to suggest
that applicant’s goods relate to both light and
electricity.4 Applicant argues that the mark OPTONICS does
not convey any commonly or readily understood meaning and
does not identify any type of product without the use of
imagination. Applicant points out that this term is not an
established English word, and that it does not appear in

4 With applicant’s brief, applicant submitted an affidavit of its
president stating, among other things, that he chose this term
because applicant’s products and services were related to the
optical electronics field.

I created the term because I was aware from
my experience and work in this field that
the terms “photonics” and “opto-
electronics” were commonly used to describe
this field, and I wanted a unique word that
was not associated with any web sites and
would be associated with my company only.

Though the Examining Attorney did not object to
this affidavit submitted with applicant’s appeal
brief, neither did she discuss it or otherwise treat
it as part of the record.
Evidence submitted with an appeal brief is
considered untimely. See Trademark Rule 2.142(d) and
TBMP § 1207.01. The result we reach herein, however,
would not change even if we had considered this
affidavit.
Ser. No. 75/586,933
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eighteen general and technical dictionaries which
applicant’s counsel has searched. According to applicant,
this is evidence that the term is not an established
contraction of “optoelectronics.”
Concerning the evidence offered by the Examining
Attorney, applicant maintains that some of it appears to be
from foreign sources and that it shows such varied uses
that it is virtually impossible that the term is
descriptive of applicant’s goods and services. The
appearance of this term in these materials, applicant
argues, merely shows that others have coined the same term
in a variety of contexts. These uses reflect “sporadic”
choices by others to combine syllables into a coined word
for limited purposes, according to applicant. Applicant
argues that the Examining Attorney has not articulated any
consistent, coherent definition of the term “optonics,” and
thus has not proven that applicant’s mark would permit a
customer unfamiliar with applicant’s goods and services to
immediately gain an understanding of the function,
characteristics or qualities of those goods or services.
Applicant maintains that its mark has a meaning only when
purchasers can make the association between the term and
applicant’s goods and services. In sum, applicant
maintains that its mark consists of an inventive
Ser. No. 75/586,933
10
combination of descriptive elements which are suggestive of
its goods and that applicant’s competitors do not use or
need to use this term to describe their products or
services. Any doubt should be resolved in favor of
applicant, applicant urges.
In response to these arguments, the Examining Attorney
maintains that the fact that a term is not in the
dictionary is not controlling. Also, the fact that many of
the products listed in the materials of record are of a
widely varied nature merely reflects, according to the
Examining Attorney, that electronics are used in
conjunction with many products.
A term is merely descriptive under Section 2(e)(1) of
the Act if it directly or immediately conveys information
about an ingredient, quality, characteristic, feature,
nature, function, purpose or use of the relevant goods or
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987), In re Bed & Breakfast Registry, 791 F.2d 157,
229 USPQ 818, 819 (Fed. Cir. 1986), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
On the other hand, a term is suggestive if some
imagination, thought or perception is required to determine
the nature of the goods or services from the term. The
determination of whether a mark is merely descriptive must
Ser. No. 75/586,933
11
be made, not in the abstract, but rather in relation to the
goods or services for which registration is sought, the
context in which the mark is used or intended to be used,
in connection with the goods or services, and the possible
significance which the mark may have to the average
purchaser of the goods or services in the marketplace. In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987) and In re Abcor Development Corp., supra.
Evidence of what the relevant purchasing public understands
a term to mean may come from any competent evidence,
including direct consumer testimony, dictionary listings,
newspapers, trade journals and other publications. See In
re Bed & Breakfast Registry, supra, and In re Consolidated
Cigar Corp., 13 USPQ2d 1481 (TTAB 1989).
Upon careful consideration of this record and the
arguments of the attorneys, we conclude that this record is
sufficient to establish the mere descriptiveness of the
term “OPTONICS.”
The record does contain some evidence that the term
“optonics” is a shortened form of the word
“optoelectronics.” The term has been used in a variety of
contexts, including in connection with computer chips.
Although in this record use of the term may not be entirely
uniform, the term is often used to identify a field closely
Ser. No. 75/586,933
12
associated with electronics. Applicant has acknowledged
that the record reflects use by other individuals who may
also have coined this term, obviously from the words
“optical” and “electronics.” We believe that the
sophisticated purchasers of applicant’s inspection and test
equipment for measuring the performance of semiconductors,
and its related services, offered and sold under the
asserted mark “OPTONICS,” are likely to understand the
merely descriptive significance of the term in relation to
applicant’s goods and services. Those purchasers are
likely to know that this term describes a feature,
characteristic, quality, purpose or use of those goods and
services.
Decision: The refusal of registration is affirmed.